Sovereign Immunity for the Involuntary State Plaintiff; But Infringement Lawsuit Continues Without the Patent Owner

by Dennis Crouch

This decision offers some interesting analysis of Federal Courts questions. We have three opinions; a “splintered majority;” and a loss of dignity for the state of Texas. The basic issue here is core to many biotech patents because they are owned by public universities and then licensed out to private entities.  The holding: (1) an exclusive licensee cannot force the university be joined as a plaintiff in the case (State Sovereign Immunity); (2) But, a lawsuit brought by the exclusive licensee can continue without the patent owner (balancing test of FRCP 19(b)). 

Gensetix, Inc. v. Baylor College of Medicine and William K. Decker, Appeal No. 19-1424 (Fed. Cir. 2020)

University of Texas (UT) owns the patents (US8728806; US9333248 — using modified dendritic cells to create an anti-tumor immune response); Gensetix is the exclusive licensee who sued Baylor for patent infringement.  The first-named-inventor, William K. Decker continues to research in this area, but is now at Baylor rather than UT and is a defendant in the lawsuit. Note also that the Gensetix license doesn’t come directly from UT. Rather, UT provided the exclusive license to “Mr.

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