relief, such as an injunction or monetary damages; rather, the interference claim is intended only to eliminate plaintiff's recovery.
It is true that defendant seeks no monetary damages, nor does it assert an infringement claim against plaintiff, however, an interference action under section 291 may result in a declaration that U.C.'s patent or Genentech's patent is invalid, in whole or in part. The Court believes that such an affirmative declaration of invalidity is beyond the waiver of immunity intended by such cases as Woelffer. Although, the law in this area is sparse, a few older cases under section 66 suggest that a judgment of invalidity in an interference proceeding is affirmative relief. For example, in Electrical Accumulator Co. v. Brush Electric Co., 44 F. 602 (C.C. Ohio 1890), the court held that a defendant may obtain "affirmative relief" on an answer alleging the validity of his own patent, and the invalidity of plaintiff's, even though the defendant did not assert the claim in a cross-bill. See also, Lockwood v. Cleaveland, 6 F. 721 (C.C. N.J. 1881). Affirmative relief would result if the Court was to grant defendant's prayer and declare U.C.'s 740 patent invalid. Such relief goes beyond mere recoupment or set-off from U.C.'s infringement action against defendant, and, therefore, is barred by the Eleventh Amendment.
The parties did not argue whether or not the counterclaim arises from the same events underlying U.C.'s action, and since the relief sought is barred by the Eleventh Amendment, the Court does not need to address this question. A cursory review of the facts underlying U.C.'s infringement action and a review of the relevant inquiry in interference actions (e.g. when the patents at issue where in fact invented), however, suggests that the Court would be delving into an entirely different set of facts which do not involve the same events underlying the infringement claim. This consideration may be weakened by the fact that defendant has asserted an affirmative defense of invalidity under 35 U.S.C. section 102(g) which will entail a review similar in scope to that reviewed in a section 291 action.
For the above reasons, the Court concludes that U.C. is immune under the Eleventh Amendment from a counterclaim of interference under section 291 as proposed by defendant.
Plaintiff does not object to defendant's proposed affirmative defenses and first and second counterclaims for declaratory judgment.
C. Genentech, as owner of the 362 patent in an indispensable party to a section 291 action, however joinder of Genentech is barred by the Eleventh Amendment.
It is clear that an exclusive licensee can join a patent owner as a defendant to an infringement suit when the owner is unwilling to voluntarily join the action. See Independent Wireless Tel. Co. v. Radio Corp. of America, 269 U.S. 459, 70 L. Ed. 357 , 46 S. Ct. 166 (1926), (exclusive licensee as coplaintiff could join owner of patent, being with in jurisdiction, as party defendant to an infringement action). This result seems equally applicable to an interference action under section 291 -- indeed, it is compelled by the rationale in Dooley, 66 F.2d at 554, where all owners of a patent are indispensable parties to an interference proceeding.
Even though defendant, as an exclusive licensee, arguably would be able to compel joinder of Genentech as an indispensable party, it cannot under these facts because U.C. is immune from an interference action brought by way of a counterclaim in the name of Genentech for the same reasons U.C. is immune from counterclaim asserted by defendant. Specifically, the affirmative relief sought by way of a declaration of interference is beyond the scope of a State's waiver of its Eleventh Amendment immunity.
D. Plaintiff's request for reference of privilege disputes to a special master.
Plaintiff's request for a special master is DENIED. The Court, however, hereby orders, pursuant to Local Rule 415-1, that discovery matters of this case be referred to the Chief Magistrate to be heard and considered at the convenience of his calendar, or to be assigned by him to another available Magistrate. Counsel will be advised of the date, time and place of the hearing by notice from the assigned Magistrate.
For the foregoing reasons, the Court rules that plaintiff's motion to amend the complaint is GRANTED. The amended complaint is to be filed within 10 days from the date of this order. Defendant's motion to add affirmative defenses of estoppel, waiver, release, license and laches is GRANTED, as is defendant's motion to add the first and second counterclaims of declaratory judgment. Defendant's motion to add the counterclaim of interference under 35 U.S.C. section 291 to the answer is DENIED. Defendant's motion to join Genentech as a necessary party is DENIED. Lastly, plaintiff's motion for appointment of a special master is DENIED; however, discovery matters are hereby referred to the Chief Magistrate to he heard and considered at the convenience of his calendar, or to be assigned by him to another available Magistrate. Counsel will be advised of the date, time and place of the hearing by notice from the assigned Magistrate.
A status conference in this matter is scheduled for Wednesday, July 17, 1991, at 9:00 a.m.
IT IS SO ORDERED.