Patent Case Summaries September 11, 2019

Patent Case Summaries | Week Ending September 6, 2019

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.


Board of Regents of the University of Texas System, et al. v. Boston Scientific Corp., No. 2018-1700 (Fed. Cir. (W.D. Tex.) Sept. 5, 2019). Opinion by Stoll, joined by Prost and Reyna.

The University of Texas (UT) and its exclusive licensee sued Boston Scientific for patent infringement in the Western District of Texas. UT asserted that venue was proper because it has sovereign immunity and because the district court has personal jurisdiction over Boston Scientific. Boston Scientific filed a motion to dismiss for improper venue, seeking to dismiss the case or, alternatively, transfer it to the District of Delaware. The court transferred the case, and UT appealed.

The Federal Circuit first addressed whether it had jurisdiction to hear the appeal, since a transfer order is interlocutory and generally cannot be appealed immediately. The court ultimately determined that it has jurisdiction “because the district court’s transfer order fits within the small class of judgments excepted from the final judgment rule by the collateral order doctrine.”

Turning to the merits, the Federal Circuit addressed each of UT’s arguments seeking reversal of the district court’s transfer order. According to UT, “venue is proper in the Western District of Texas because a State, as a sovereign entity, has the right to sue a nonresident in its forum of choice as long as personal jurisdiction is satisfied.” UT also argued that the District of Delaware lacks jurisdiction because “UT never consented to suit in Delaware, never waived its sovereignty in Delaware, and never had its sovereignty abrogated by statute.” The Federal Circuit disagreed “on all grounds.” The court held that the state sovereignty principles asserted by UT did not grant it the right to bring a patent infringement suit in an improper venue. Thus, the district court did not err by transferring the case.

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