Baylor College of Medicine and an inventor it worked with have prevailed in a case that attempted to hold cross-state rival University of Texas hostage as a plaintiff when it did not want to be involved in the litigation in the first place.
In a 23-page ruling, U.S. District Judge Andrew S. Hanen of the Southern District of Texas granted two motions to dismiss: one filed by Baylor, the inventor, Dr. William Decker and Diakanos Research Ltd.; and another filed by the board of regents of UT’s MD Anderson Cancer Center, which owned a few of the patents in question.
The plaintiff, Gensetix, is the exclusive licensee to two patents tied to immuno-cancer therapies that Dr. Decker invented while he was employed at UT’s MD Anderson Cancer Center. Dr. Decker left UT to work for Baylor, where he continued to conduct his research on immunotherapy.
In early 2017, Gensetix sued Baylor, Dr. Decker and Diakonos Research, a firm Baylor teamed up with to further develop the immunotherapy technology. Gensetix alleged patent infringement and named UT as an involuntary plaintiff and the true owner of the patented immuno-cancer methods, since Dr. Decker invented them during the scope of his employment with MD Anderson.
UT refused to join the lawsuit and later filed a motion to dismiss itself from the lawsuit due to its 11th Amendment sovereign immunity rights as a state body. The defendants also filed a motion to dismiss, arguing that without UT named as a plaintiff, Gensetix had no standing to prosecute its claims.
The parties took their arguments for (and against) dismissal of the case to a hearing before Judge Hanen on Nov. 15.
In Judge Hanen’s ruling, issued Monday, he pointed out that while previous caselaw has established that a patentee “may be joined as a defendant or, in a proper case, made an involuntary plaintiff” in instances it “does not voluntarily join an action prosecuted by its exclusive licensee,” the rule does not apply in this situation.
“Here, however, UT has not waived its sovereign immunity,” Judge Hanen wrote. “Thus, where UT retains substantial rights in the patents-in-suit, refuses to join voluntarily, but retains sovereign immunity, UT may not be joined as an involuntary plaintiff.”
Baker Botts partner Paul Morico, who led the case for Baylor, Dr. Decker and Diakanos, called the ruling “a major win.”
“It allows them to continue their research into these potentially life-saving cancer therapies,” said Morico, a Houston-based partner who co-chairs Baker Botts’ energy IP practice group.
He pointed out the ruling was significant because “it’s the second time a Texas court dismissed a patent infringement lawsuit brought by a UT licensee against an accused infringer” in which UT refused to join the case for sovereign immunity reasons.
The other case took place in Chief U.S. District Judge Barbara Lynn’s court and it involved a UT branch separate from MD Anderson.
“The case underscores the power of a state to control patent litigation through its sovereign immunity,” Morico said.
Houston Vinson & Elkins partner Peter Mims, who represented UT in the suit, did not immediately respond to a request for comment.
Neither did Imron Aly, a partner in Schiff Hardin’s Chicago office who is Gensetix’s lead attorney.