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Ali v. Carnegie Institution of Washington

United States District Court, District of Columbia

June 26, 2015

MUSSA ALI, Plaintiff,
v.
CARNEGIE INSTITUTION OF WASHINGTON, Defendant.

MEMORANDUM OPINION Re Document Nos.: 85, 88.

RUDOLPH CONTRERAS, District Judge.

GRANTING PLAINTIFF'S MOTION FOR LEAVE TO FILE SUPPLEMENTAL STATEMENT REGARDING FILING DATE, DENYING PLAINTIFF'S ALTERNATIVE REQUEST TO FILE NUNC PRO TUNC, & DENYING PLAINTIFF'S MOTION FOR RECONSIDERATION OR LEAVE TO AMEND

I. INTRODUCTION

Pro se Plaintiff Mussa Ali initiated this matter in September 2012 by filing suit against the Carnegie Institution of Washington ("Carnegie") in the U.S. District Court for the District of Oregon. Mr. Ali alleged that he was erroneously omitted as an inventor on multiple U.S. patents co-owned by Carnegie and the University of Massachusetts ("UMass"), and he sought to correct inventorship and to recover more than $100, 000 in related damages. After retaining counsel, Mr. Ali filed an amended complaint that added UMass as a defendant and that requested a portion of the proceeds that Defendants had received from the patents in question. The Oregon court dismissed UMass from the case on the basis of sovereign immunity, ruled that the court lacked personal jurisdiction over Carnegie, and transferred the case to this Court. This Court subsequently granted Carnegie's motion to dismiss the amended complaint for failure to join a necessary party: UMass. Mr. Ali now seeks reconsideration of that dismissal, arguing that UMass is not a necessary party and that the Court's finding to the contrary relies on the clearly erroneous assumption that UMass's financial interests would be prejudiced if the case proceeded in its absence. Alternatively, Mr. Ali seeks leave to amend his complaint in an unspecified manner, perhaps by reinstating the first complaint he filed, which named only Carnegie as a defendant. For the reasons set forth below, the Court denies Mr. Ali's motion for reconsideration and his request for leave to amend his complaint.

II. FACTUAL BACKGROUND

As explained in detail in this Court's prior Memorandum Opinion, [1] Carnegie and UMass co-own five patents relating to methods of inhibiting the expression of a particular gene in a cell through a process called ribonucleic acid interference ("RNAi"). The patents were allegedly issued as a result of the collaboration between Dr. Andrew Fire and Dr. Craig C. Mello, the two lead inventors of the laboratories of Carnegie and UMass, respectively. See Def.'s Mot. Dismiss 4, ECF No. 73-1; Am. Compl. ¶ 19, ECF No. 4. Mr. Ali alleges that he made a critical contribution to the discovery of RNAi while employed at UMass in Dr. Mello's laboratory, and that he should be named as a co-inventor on the five patents. See Am. Compl. ¶¶ 8-20.

Mr. Ali filed his original complaint in the U.S. District Court for the District of Oregon in September 2012. See Compl., ECF No. 1. He named only Carnegie as a defendant, sought to correct inventorship pursuant to 35 U.S.C. § 256, and demanded "more than $100, 000" in damages for related claims of conversion, unfair competition, unjust enrichment, and fraud under Oregon state law. After retaining counsel, Mr. Ali filed an amended complaint against both Carnegie and UMass in December 2012. See generally Am. Compl.

In his Amended Complaint, Mr. Ali again asserted a claim under § 256 to be named a co-inventor of the patents at issue, and he also asserted two alternative claims for "Legal Damages." In his first claim for legal damages, Mr. Ali states that if he was contractually obligated to assign his rights in the patents to UMass, then he seeks his share of the patent-related proceeds that have been received by UMass and divided between the named UMass inventors. See Am. Compl. ¶¶ 28-32. Alternatively, if Mr. Ali was not obligated to assign his rights, then his second claim for legal damages seeks a portion of the proceeds received by both UMass and Carnegie from the sale, license, or transfer of their patent rights. See Am. Compl. ¶¶ 33-36.

In May 2013, the District Court of Oregon dismissed UMass from the case for lack of subject-matter jurisdiction, finding that the university was an arm of the state and entitled to sovereign immunity. See Op. & Order at 10, ECF No. 41. In the same decision, the court also provided Mr. Ali with leave to amend his complaint to include claims against UMass officials pursuant to Ex Parte Young, 209 U.S. 123 (1908), which Mr. Ali had invoked in his motion for jurisdictional discovery. Id. at 10 n.3. Mr. Ali chose instead to seek reconsideration of the dismissal and denial of discovery, which the court denied. See Op. & Order at 7-12, ECF No. 66. The court also ruled that it lacked personal jurisdiction over Carnegie and sua sponte transferred the case to this Court pursuant to 28 U.S.C. § 1406(a). See id. at 13-26.

On August 29, 2014, this Court granted Carnegie's motion to dismiss the case pursuant to Federal Rule of Civil Procedure 12(b)(7) for failure to join UMass, a necessary party. See generally Ali, 2014 WL 4260995. The Court explained that UMass was a required party due to its ownership interest in the patents, that it was entitled to sovereign immunity and could not be joined, and that the action could not proceed in equity and good conscience without UMass. Id. In response to Mr. Ali's request for leave to file a second amended complaint naming UMass officials as defendants, the Court observed that such an amendment would not be permitted as to the claims for financial damages, and that it was unclear whether Ex Parte Young would permit a plaintiff to sue state officials in their official capacities for correction of inventorship. Id. at *7. Nevertheless, the Court gave Mr. Ali until October 1, 2014, to seek leave to amend his complaint to include correction of inventorship claims against UMass officials in their official capacities. Order, Aug. 29, 2014, ECF No. 77. The Court subsequently extended the time for filing such an amendment to November 14, 2014, on Mr. Ali's motion. See Order, Sept. 19, 2014, ECF No. 84.

To date, Mr. Ali has not sought leave to amend his complaint to include correction of inventorship claims against UMass officials in their official capacities. Instead, on September 29, 2014, Mr. Ali filed the instant motion for reconsideration or, in the alternative, for leave to amend his complaint, possibly by reinstating his first complaint that named only Carnegie as a defendant. See generally Pl.'s Mot. Recons., ECF No. 85.

III. ANALYSIS

Mr. Ali argues that the Court's determination that UMass was a necessary party was based on a clearly erroneous factual finding that UMass would be financially prejudiced if Mr. Ali prevailed in this matter and was named as a co-inventor. Id. at 2-4. He also claims that the Court erred by failing to find that he has no alternative forum in which to have his case heard on the merits. Id. at 5-6. Alternatively, if the Court still views UMass as a necessary party, Mr. Ali asks that he be granted leave "to remedy his amend complaint, " perhaps by reverting "back to the original complaint in which ONLY Carnegie was named as a defendant." Id. at 9-10. Defendants, on the other hand, maintain that Mr. Ali's motion should be denied as untimely under Rule 59(e), that it has no basis in fact or law, and that it improperly ...


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