Having Won Appeal, Pitt Appeals Again
Posted on | March 8, 2010 | 29 Comments
2010-1155 Univ. of Pittsburgh v. Varian
WD/PA 07-cv-0491
Judge Arthur Schwab
Pitt appeals from the order of Judge Schwab dismissing its complaint without prejudice instead of allowing it to file an amended complaint alleging its standing to sue. The case was just back to the district court after the Federal Circuit ruled for Pitt in 2008-1441 that the district court erred in dismissing with prejudice. You can read our coverage of Judge Schwab’s earlier decision, and Dennis Crouch at Patently-O covered the first CAFC decision here.
Underlying both dismissals is the fact that Pitt was not the sole owner of the patent when it first filed the complaint, but a co-owner with Carnegie-Mellon. Because Carnegie-Mellon was not a party, the action violated the rule that all co-owners of the patent must join in the suit. Isr. Bio-Eng’g Project v. Amgen Inc., 475 F.3d 1256, 1264–65 (Fed. Cir. 2007). Since then, however, Pitt acquired Carnegie-Mellon’s interest and is now the sole owner.
The Federal Circuit wrote in the first appeal:
Pitt also asserts that the district court further erred when it designated its dismissal as a dismissal “with prejudice.” We find that argument persuasive. Namely, we hold that even if Carnegie Mellon is a necessary party, and even if dismissal is a proper consequence for Pitt’s failure to join Carnegie Mellon, the dismissal should have been without prejudice.
Following the CAFC’s mandate, Judge Schwab amended the judgment to dismiss Pitt’s case without prejudice.
But because Pitt is now the sole owner and can sue by itself, it moved the court for leave to amend its complaint to add the allegations that it is the sole owner. The court declined, finding that the Federal Circuit’s mandate did not allow for it:
After careful consideration of plaintiff’s motion and brief in support, defendant Varian Medical Systems Inc.’s response and brief in opposition, and the Opinion and Mandate of the Court of Appeals for the Federal Circuit, the Court agrees with defendant that plaintiff’s motion must be dismissed. Although plaintiff’s legal position with respect to the effect of a dismissal without prejudice is not without appeal, in the abstract, the Court deems the Opinion and Mandate of the Court of Appeals to foreclose the relief plaintiff requests in this case.
Opinion, p. 2.
PATracer Note: It appears to me that the court could have allowed Pitt to amend. While standing to sue is normally based on the facts that existed at the time of filing and cannot be retroactively cured or fixed, Paradise Creations v. UV Sales, 315 F.3d 1304, 1309 (Fed. Cir. 2003), requiring all patentees to join in the suit is not a constitutional requirement, but a prudential one. Unlike constitutional standing issues, problems with prudential standing can be cured post-filing.
Also, it is not clear from these materials why Pitt didn’t just file a new complaint? Perhaps the 6 year limitation on damages comes into play. If so, maybe they should have filed a new action when it first became the sole owner.
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