Home Legal Advice When the State is an Involuntary Plaintiff

When the State is an Involuntary Plaintiff


Gensetix v. Univ. Texas v. Baylor College of Med. (Fed. Cir. 2020)

Here is the three-party setup on this case involving the patentee, licensee, and accused infringers:

  • Invent & Patent: Dr. Decker, a UTexas researcher invented a technique for producing anti-tumor immune response and UTexas obtained the patents (US8728806; US9333248);
  • License: UTexas supplied an unique license to Mr. Mirrow who later transferred the license to Gensetix;
  • Infringe: Dr. Decker later moved his lab to BCM and continued analysis with out license;
  • Sue: Gensetix sued BCM & Decker for infringement, however the patent proprietor UTexas refused to take part within the case.

The common rule is {that a} patent infringement lawsuit can not proceed until the patentee — i.e., the patent proprietor — is a plaintiff.  And, in a traditional lawsuit being a plaintiff is voluntary enterprise. However, our guidelines of civil process do additionally require “involuntary plaintiffs.”

(2) Joinder by Court Order. [A required party] who refuses to hitch as a plaintiff could also be made both a defendant or, in a correct case, an involuntary plaintiff.

Fed. R. Civ. Pro. R. 19(a)(2).  This occurs sometimes in patent circumstances reminiscent of this what place the patentee has promised to implement the patent, however then later refuses.  In that state of affairs, the licensee information the lawsuit as plaintiff and joins the patent proprietor as an involuntary plaintiff.  The drawback right here — UTexas is a part of the State of Texas and claims sovereign immunity on this case.

The Judicial energy of the United States shall not be construed to increase to any go well with in legislation or fairness, commenced or prosecuted towards one of many United States by Citizens of one other State.

U.S. Const., Amendment XI (1795). Although the 11th Amendment gives solely a restricted quantity of State Sovereign immunity, the Supreme Court has repeatedly written that the construction and nature of Federal system consists of extra State immunities.

In its appellate choice within the case, the Federal Circuit answered two questions (1) Does sovereign immunity shield TX from being joined as an involuntary plaintiff; (2) If TX can’t be joined as a celebration, could the case proceed with out the patentee? The courtroom then issued three separate opinions with Judge O’Malley’s approach garnering a majority on every problem:

 Thus, in the long run, the courtroom discovered that TX is immune from being joined, however that the case ought to proceed with the licensee suing BCM for infringement.

BCM subsequently petitioned for en banc evaluation on the next query:

Can a celebration who is just not a patentee “have remedy by civil action for infringement”?

BCM En Banc Petition.  That petition has now been denied — organizing potential Supreme Court evaluation.

The fundamental framing of the appeal is that there’s some rigidity between the language of R.19 and the Supreme Court choice in Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).

First, R. 19:  The textual content of the rule expressly permits a courtroom to proceed with a lawsuit although a “required party” can’t be joined. The fundamental approach is that the courtroom should apply “equity and good conscious” to find out whether or not to dismiss the case or to proceed.

19(b) When Joinder Is Not Feasible. If an individual who’s required to be joined if possible can’t be joined, the courtroom should decide whether or not, in fairness and good conscience, the motion ought to proceed among the many present events or ought to be dismissed.

Id. (itemizing elements to think about).

On the opposite hand, in Pimentel, the courtroom appeared to endorse a stark restrict on persevering with suits reminiscent of this what place the sovereign is absent however shall be probably injured by an adversarial choice:

A case could not proceed when a required entity sovereign is just not amenable to go well with. [Our prior] circumstances instruct us that what place sovereign immunity is asserted, and the claims of the sovereign are usually not frivolous, dismissal of the motion should be ordered what place there’s a potential for damage to the pursuits of the absent sovereign.

Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).

The patent act creates a cause-of-action for patent infringement, and the en banc query offered quotes from from the statute:

A patentee shall have treatment by civil motion for infringement of his patent.

35 U.S.C. 281. The petition mentions that on remand it is going to be in a position to elevate this problem and dismiss the case since Gensetix is just not a “patentee.” The FedCir has held that unique assignees may be thought of a patentee if they’ve “all substantial rights” to the patent. In this case, Gensetix initially argued that it had all substantial rights, however now admits that it doesn’t. Thus on remand this will turn out to be a standing problem.


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