from the United States District Court for the District of
Massachusetts in No. 1:11-cv-10484-PBS, Judge Patti B. Saris.
Carlson, Hagens, Berman, Sobol, Shapiro LLP, Seattle, WA,
argued for plaintiff-appellee. Also represented by Steve
Chu, Irell & Manella LLP, Los Angeles, CA, argued for
defendants-appellants. Also represented by David Isaac
Gindler, Alan J. Heinrich; Sandra Haberny, Newport Beach, CA.
O'MALLEY, Reyna, and WALLACH, Circuit Judges.
("Max Planck") appeal a decision of the United
States District Court for the District of Massachusetts,
which found that this case was not "exceptional"
within the meaning of 35 U.S.C. § 285 and thus denied
Max Planck's motion for attorney fees. The district court
did not abuse its discretion. We therefore affirm.
Discovery of the Patented Invention
underlying dispute concerns inventorship of the Tuschl II
patents,  which relate to the field of RNA
interference ("RNAi"). RNAi is a process for
"silencing" certain genes from expressing the
proteins they encode, which may be useful in treating a
variety of diseases, particularly those associated with
overactive or mutated genes.
March 2000, well before the Tuschl II invention was reduced
to practice, Dr. Thomas Tuschl and his colleagues published
an article describing their various discoveries in the field
of RNAi. Less than a month later, Dr. Brenda Bass, of the
University of Utah ("UUtah"), published a
mini-review in Cell magazine that summarized the
state of RNAi research, focusing on Dr. Tuschl's article.
In addition to summarizing current research, Dr. Bass'
mini-review included several of her own hypotheses about
enzymatic processes that may be responsible for the RNAi
activity reported in Dr. Tuschl's article. One of those
hypotheses involved molecules that have a feature called
"3' overhangs, " which are certain
double-stranded RNA ("dsRNA") molecules with a
nucleotide overhang on the 3' ends of dsRNA.
publishing his article, Dr. Tuschl transitioned to a new line
of research that would result in the patented Tuschl II
invention. Dr. Tuschl and his colleagues focused on design
and testing of candidate molecules to advance their goal of
developing synthetic drugs that could trigger RNAi in mammals
and be used for therapeutic purposes. It is undisputed that
Dr. Tuschl read Dr. Bass' mini-review, recognized her
hypothesis that 3' overhangs may be relevant to RNAi, and
tested that hypothesis. Those tests were successful; data
from cloning and sequencing revealed that species with 3'
overhangs were prevalent in active RNAi systems. See,
e.g., '704 patent col. 18 1. 14-col. 19 1. 25. Based
on these data, the Tuschl II inventors chemically synthesized
candidate molecules with and without 3' overhangs and
tested for RNAi activity. See id. They determined
that small synthetic dsRNA with 3' overhangs (dubbed
"siRNA") can be more effective at inducing RNAi
than dsRNAs without 3' overhangs. See id. The
Tuschl II inventors demonstrated that their synthetic siRNAs
could trigger RNAi for therapeutic purposes in mammals,
including humans. See id. at col. 211. 27-col. 231.
Planck filed a patent application for the discovery. Dr.
Bass' mini-review was cited as prior art during
prosecution of all ten of the Tuschl II patents, each of
which issued. After the patent applications were filed, the
Tuschl II inventors published two articles reporting their
findings. Dr. Bass was a journal referee for both articles,
and she recommended publication.
on behalf of Dr. Bass, sued Max Planck for correction of
ownership, claiming that Dr. Bass should be named as either a
sole or joint inventor of the Tuschl II patents. UUtah's
claim of sole inventorship turned on allegations that Dr.
Bass reduced to practice the concept that molecules with
3' overhangs would be integral to RNAi, focusing
primarily on Dr. Bass' mini-review in Cell
magazine. Its claim of joint inventorship turned on alleged