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 in this case involving the patentee, licensee, and accused infringers:

  • Invent & Patent: Dr. Decker, a UTexas researcher invented a method for generating anti-tumor immune response and UTexas obtained the patents (US8728806; US9333248);
  • License: UTexas provided an exclusive license to Mr. Mirrow who later transferred the license to Gensetix;
  • Infringe: Dr. Decker later moved his lab to BCM and continued research without license;
  • Sue: Gensetix sued BCM & Decker for infringement, but the patent owner UTexas refused to participate in the case.

The usual rule is that a patent infringement lawsuit cannot proceed unless the patentee — i.e., the patent owner — is a plaintiff.  And, in a normal lawsuit being a plaintiff is voluntary business. However, our rules of civil procedure do also call for “involuntary plaintiffs.”

(2) Joinder by Court Order. [A required party] who refuses to join as a plaintiff may be made either a defendant or, in a proper case, an involuntary plaintiff.

Fed. R. Civ. Pro. R. 19(a)(2).  This happens occasionally in patent cases such as this where the patentee has promised to enforce the patent, but then later refuses.  In that situation, the licensee files the lawsuit as plaintiff and joins the patent owner as an involuntary plaintiff.  The problem here — UTexas is part of the State of Texas and claims sovereign immunity in this case.

The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State.

U.S. Const., Amendment XI (1795). Although the 11th Amendment offers only a limited amount of State Sovereign immunity, the Supreme Court has repeatedly written that the structure and nature of Federal system includes additional State immunities.

In its appellate decision in the case, the Federal Circuit answered two questions (1) Does sovereign immunity protect TX from being joined as an involuntary plaintiff; (2) If TX cannot be joined as a party, may the case proceed without the patentee? The court then issued three separate opinions with Judge O’Malley’s approach garnering a majority on each issue:

 Thus, in the end, the court found that TX is immune from being joined, but that the case should proceed with the licensee suing BCM for infringement.

BCM subsequently petitioned for en banc review on the following question:

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

BCM En Banc Petition.  That petition has now been denied — setting up potential Supreme Court review.

The basic framing of the appeal is that there is some tension between the language of R.19 and the Supreme Court decision in Republic of Philippines v. Pimentel, 553 U.S. 851 (2008).

First, R. 19:  The text of the rule expressly allows a court to continue with a lawsuit even though a “required party” cannot be joined. The basic approach is that the court must apply “equity and good conscious” to determine whether to dismiss the case or to proceed.

19(b) When Joinder Is Not Feasible. If a person who is required to be joined if feasible cannot be joined, the court must determine whether, in equity and good conscience, the action should proceed among the existing parties or should be dismissed.

Id. (listing factors to consider).

On the other hand, in Pimentel, the court appeared to endorse a stark limit on continuing suits such as this where the sovereign is absent but will be potentially injured by an adverse decision:

A case may not proceed when a required entity sovereign is not amenable to suit. [Our prior] cases instruct us that where sovereign immunity is asserted, and the claims of the sovereign are not frivolous, dismissal of the action must be ordered where there is a potential for injury to the interests 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 question presented quotes from from the statute:

A patentee shall have remedy by civil action for infringement of his patent.

35 U.S.C. 281. The petition mentions that on remand it will be able to raise this issue and dismiss the case since Gensetix is not a “patentee.” The FedCir has held that exclusive assignees can be considered a patentee if they have “all substantial rights” to the patent. In this case, Gensetix originally argued that it had all substantial rights, but now admits that it does not. Thus on remand this may become a standing issue.

47 thoughts on “When the State is an Involuntary Plaintiff

  1. 5

    If standing becomes the issue on remand, could Lone Star Silicon Innovations v Nanya Technology, 925 F.3d 1225 (Fed. Cir. 2019) come into play?

    The standing issue here appears to be statutory as opposed to Article III, and “motions to dismiss based on ‘statutory standing’ defects are properly brought under Rule 12(b)(6) rather than Rule 12(b)(1) in recognition of the fact that such defects are not jurisdiction.” Id. at 1235.

    If remand renews the time to file a motion to dismiss under Rule 12(b)(6), then the lower court can hear the standing issue. Otherwise, the standing issue has possibly been waived under rule 12(h)(1). That might create a different outcome for the exclusive licensee as opposed to a case wherein the standing issue was timely presented.

  2. 4

    If the “experimental use” exception is going to be an issue in this Gensetix v. Univ. Texas v. Baylor College of Med. or other such cases, it may be a slender and shaky reed under narrowing Fed. Cir. case law if a use beyond “philosophical inquiry, curiosity, or amusement.” In particular, Madey v. Duke University, Roche Products, Inc. v. Bolar Pharmaceuticals Co. (1984), and Embrex v. Service Engineering Corp. [Not that I agree.]

    1. 4.1

      if a use beyond “philosophical inquiry, curiosity, or amusement.”

      And why would that be ‘bad?’

      Use beyond that DOES go to harming the patent holder.

      A little thing like Corporations shedding their development labs and turning to universities should IN NO WAY shield the fact that this research is directly FOR GAIN.

      How could you not agree?

      That is, unless you have the Efficient Infringers near and dear to your heart…

      1. 4.1.1

        Re: “How can you not agree.” The way Congress already agreed, as I understand it, for at least pharmaceuticals. To prevent publicly undesirable suppression of research for improvements in, and/or alternatives to, the patented product.

                1. And yet another
                  from you Shifty?

                  Why in the world would you put a question here (after what, seven other places?) — in a thread completely unrelated to the conversation that you want to misinterpret for your ‘gotcha’ attempts?

                2. Here…?

                  The would say that it has never been unclear — despite your efforts to muck things up.

                  No ‘gotcha’ for you.

                3. Asked and answered – days ago now.

                  Do you realize that your repetition is a tell?

                  Do you understand that it is not telling anything good about you?

                4. Lol – this too has already been answered many times now, with links to the explicit explanation given.

                  It’s odd that you would clamor about ‘not doing links.’ Sure, I might be able to see not doing blind links, but the links provided are not such, and clearly indicate that they link to PatentlyO.

                  This then is merely willful
                  on your part.

                  Yet another thing under YOUR control.

                  Are you seeing the pattern here?

                1. Another deliberate mistake on your part in regards to context.

                  I suppose that you might think this meme/tell is somehow ‘charming.’

                  It tells a different story though.

                2. An entire post without one of your tells !!! Onward and upward !!!

                  Well, your “meme/tell” thing just might be a new tell. Too early to tell.

                3. Wow, you are reaching deep into the old meme/tells.

                  Is this to honor Malcolm?

                  (Here’s a hint: the mental thingie never worked for him either)

  3. 3

    Of greater import re involuntary joinder of a plaintiff under FRCP 19(a)(2), can anyone identify a case in which there was such an involuntary joinder of a company that “sold” a patent to a PAE to sue on where the sale compensation was really a retained substantial financial interest in the suit outcome? I understand that that is a fairly common practice these days.

    1. 3.1

      In the VirnetX patent litigation, SAIC (now known as Leidos) had to be involuntarily joined because it retained ownership.

    1. 2.1

      Where did you get the idea there is something “vague” about emoticons, Snowflake? Use your words (such as they are).

      1. 2.1.1


        You pick this buried point to ask your question?

        Why is that?

        Your wanting me to use my words is a bizarre request, given that you seem so intent on both igN0R1ng those words (for their actual content) AND so desperately (and obsessively) clinging to them.

        Be that as it may, I have already answered this odd question of yours, and your asking again merely emphasizes YOUR lack of knowledge.

        Maybe you could google how to use emoticons, and see — for yourself — that in order to use ANY particular emoticon, you CANNOT be vague as to the command (and thus the meaning) of THAT emoticon.

        Basic logic seems a stranger to you. What was your role in the patent office prior to your retirement?


          Where did you get the idea there is something “vague” about emoticons, Snowflake? Use your words (such as they are).


            Lol – this is probably your most train wreck case of projection yet, Shifty.

            An instant classic.


              “The sandpaper reference was made after the date of the last commissioned crawl of the comments, so I do not have a ready link.”

              Are you having trouble with this life, Snowflake?


                Odd question.

                Are you trying to project again?

                Are you starting to realize how empty the waning chapter of your life is?

                Maybe you capture a glimmer of the prior dullness of whatever it was that you did at the patent office before your retirement…

                Meh, probably not.

                1. Ding D ing Ding !!! Patent Office!!! Retirement !!!

                  Ladies and Gentleman, Snowflake has a new tell !!!

                2. It’s neither a tell, nor a meme.

                  It’s a question that you have yet to answer.

                  (Something about a collection of dots comes to mind – )

                3. Nothing ‘new’ here in regards to your false assertion, merely my (perpetual) attempt to have you recognize the difference between a meme and a tell.

  4. 1

    Licensing out your patents and then refusing to assist your licensees’ attempts to enforce their exclusive rights does not seem to be a very good business practice.

    1. 1.1

      Could the facts that the accused infringer was also the inventor, and the accused infringing activity was scientific research rather than commercial use, be key facts motivating such a decision, and would such facts make refusal to participate as a plaintiff excusable? (Note, my source for these “facts” is only this blog post and I have not looked into the details of the case)

      1. 1.1.1

        infringing activity was scientific research

        You are aware of the research exemption, correct?

        Unless (and this does happen more often than not in the current set-ups) the research may be called ‘scientific,’ but is still in the furtherance of profit.

      2. 1.1.2

        That is a good point that I glossed over when the decision first came out.

        From the original decision: “Gensetix also alleged that Decker published content while at Baylor that ‘gives Gensetix reason to believe’ that Decker has practiced methods infringing at least claim 1 . . . .” While a ‘research partner’ – Diakonos Research Ltd. – is also a defendant, it seems like anything they were doing was only in the research stage. (Like you, this is based only on reading the opinions and posts, and not on any first-hand knowledge of the facts.)

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