State Sovereignty Principles Do Not Allow the State to Bring a Patent Infringement Suit in an Improper Venue

BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.

Before Prost, Reyna, and Stoll.  Appeal from the United States District Court for the Western District of Texas.

Summary:  The patent venue statute governs actions filed by a State as State sovereignty does not apply when a State acts solely as a plaintiff in asserting patent infringement.

The Board of Regents of the University of Texas System (“UT”) and TissueGen Inc. sued Boston Scientific Corporation (“BSC”) for patent infringement in the Western District of Texas.  UT alleged that venue was proper because UT has sovereign immunity as an arm of the State of Texas, and it would violate the Eleventh Amendment and offend the dignity of the State to require it to pursue persons who have harmed it outside the State of Texas.  BSC moved to dismiss for improper venue, or alternatively transfer the case.  The district court transferred the case to the District of Delaware, where BSC is incorporated.  UT appealed.

As a threshold matter, the Federal Circuit concluded that it had jurisdiction over UT’s appeal because “UT challenges the district court’s transfer order based on state sovereignty” and therefore the “case falls within the small class of orders excepted from the final judgment rule by the collateral order doctrine.”

On the merits, the Federal Circuit affirmed the district court’s transfer order.  The Federal Circuit held that the Eleventh Amendment and other asserted doctrines of State sovereign immunity do not apply where a State acts solely as a plaintiff.  When a State files an action in federal court invoking the federal court’s jurisdiction, it must abide by federal rules and procedures, including venue.

Editor: Paul Stewart

Written by: Noorean Gill & Kendall Loebbaka