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12 March 2020AmericasRory O'Neill

Texas uni wants Supreme Court to settle state sovereignty rules

The University of Texas has asked the Supreme Court to rule that state-owned institutions should escape the normal rules determining the appropriate venue for filing patent lawsuits.

The petition, filed yesterday, March 11, asks the court to overturn last September’s US Court of Appeals for the Federal Circuit decision, which stated that state sovereignty did not entitle the University of Texas to bring a patent suit in an improper venue.

State sovereignty principles traditionally afford state-owned institutions a different legal status to private entities.

State sovereign immunity, for example, holds that states cannot be sued in federal court.

In this case, UT argued that state sovereignty allowed it to bring a patent suit against Boston Scientific at what would normally be considered an improper venue.

UT accused Boston Scientific of infringing two of its patents (numbers 6,596,296 and 7,033,603), covering implantable drug-releasing biodegradable fibres.

The university sued the medical devices manufacturer at the US District Court for the Western District of Texas—even though Boston Scientific is based in Delaware.

In the original complaint, UT argued that it was entitled to sue there because “it would offend the dignity of the state to require it to pursue persons who have harmed the state outside the territory of Texas”.

But the district court sided with Boston Scientific and transferred the case to the District of Delaware where the company is based.

The decision to transfer the case was upheld by the Federal Circuit last year, which ruled: “We disagree with UT on all grounds. We hold that the state sovereignty principles asserted by UT do not grant it the right to bring a patent infringement suit in an improper venue.”

The Federal Circuit also clarified that state sovereignty only applies to lawsuits filed against a state, rather than suits brought by states.

UT now wants the Supreme Court to intervene and grant it the right to sue non-resident parties in Western Texas.

In yesterday’s petition to the country’s top court, UT reiterated that, where a “nonresident infringer violates a state sovereign’s property rights within the sovereign’s borders, the state sovereign should not be forced to chase the infringer into a sister state to seek redress”.

UT said that the Federal Circuit’s position, if not overturned, would be a “boon for private wrongdoers” and “offend the Constitution and the dignity it extends to state sovereigns”.

LSIPR has contacted Boston Scientific for comment in response to UT’s petition.

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More on this story

Americas
21 July 2022   Japan-based pharma company must pay for infringment | Drug was recently approved for breast cancer treatment by EU.
Biotechnology
18 February 2021   The University of Texas has failed to persuade the US Court of Appeals for the Federal Circuit to review a ruling that prevented it from using sovereign immunity to protect its cancer vaccine patents from inter partes reviews.
Americas
4 March 2021   The result of the sovereign immunity bid mirrored previous cases but we did learn something about the opinions of Justices on the issue, says Gary Frischling of Milbank.

More on this story

Americas
21 July 2022   Japan-based pharma company must pay for infringment | Drug was recently approved for breast cancer treatment by EU.
Biotechnology
18 February 2021   The University of Texas has failed to persuade the US Court of Appeals for the Federal Circuit to review a ruling that prevented it from using sovereign immunity to protect its cancer vaccine patents from inter partes reviews.
Americas
4 March 2021   The result of the sovereign immunity bid mirrored previous cases but we did learn something about the opinions of Justices on the issue, says Gary Frischling of Milbank.