There were provisions in the contract of mutual cooperation between the parties of any such lawsuits. Importantly, however, the contract also contained an express provision that UT did not waive its sovereign immunity as a State by entering into the contract.Gensetix attempted to join UT under Fed. R. Civ. Pro. 19(a) as an involuntary plaintiff upon filing suit against Baylor and Dr. Decker when UT refused to voluntarily join. UT responded with a motion to dismiss under Rule 12(b)(1) on the grounds that as an arm of the State, UT was shielded from compulsory joinder by the State's sovereign immunity under the Eleventh Amendment.

Gensetix sued Baylor College of Medicine for infringement of the patents-in-suit and requested that UT voluntarily join the suit as a co-plaintiff. After UT refused to voluntarily join, Gensetix named UT as an involuntarily plaintiff pursuant to FRCP Rule 19(a). UT moved to dismiss itself from the lawsuit, arguing that state sovereign immunity under the Eleventh Amendment barred it from being joined as an involuntary plaintiff in the patent suit.

The opinion can be found here.ALSO THIS WEEKGensetix, Inc. v. Bd. of Regents of Univ. of Texas, Appeal No. 2019-1424 (Fed. Cir. July 24, 2020)In this case, the Federal Circuit considered whether the Eleventh Amendment precludes involuntary joinder under Fed. R. Civ. P. 19 of a state patent owner as plaintiff in an infringement suit brought by its exclusive licensee. Here, Gensetix was the exclusive licensee of patents owned by the University of Texas, who was a required party in light of the secondary right to sue it retained under the license agreement, but refused to participate in Gensetix’s lawsuit.

Accordingly, the Court held that UT’s waiver of Eleventh Amendment immunity in the Texas action did not result in a waiver of immunity in the Massachusetts action since it was a separate infringement action. Finally, applying First Circuit law, the Court found that dismissal of the DJ suit was appropriate under Fed. R. Civ. P. 19(b) when a party is deemed necessary under Fed. R. Civ. P. 19(a), but cannot be joined. The Court rejected A123’s argument that the district court erred by not conducting an analysis under Rule 19.

Addressing the issue of standing in a patent infringement case, combined with the requirements of joinder under Fed. R. Civ. P. 19, the US Court of Appeals for the Federal Circuit vacated a dismissal based on lack of standing for refusal to permit joinder of the rights holder. Lone Star Silicon Innovations v. Nanya Tech.

The next issue was whether the case should be dismissed in light of UT’s absence, or, in other words, should the case proceed even if UT is immune to involuntary joinder. Although the three-judge panel was split, the panel held that the district court erred in weighing the Rule 12(b) factors such that UT was an “indispensable” plaintiff (Opinion joined by Judges O’Malley and Newman; dissenting opinion by Judge Taranto).The Rule 19(b) factors include:(1) the extent to which a judgment rendered might prejudice the missing required party or the existing parties;(2) the extent to which any prejudice could be lessened or avoided(3) whether a judgment rendered in the required party’s absence would be adequate; and(4) “whether the plaintiff would have an adequate remedy if the action were dismissed for nonjoinder.”Fed. R. Civ. P. 19(b). The district court found only factor (4) “seemingly” weighed in favor of Gensetix.

Federal Rule of Civil Procedure 19(a)(2) permits courts to join necessary parties as involuntary plaintiffs “in a proper case.” Whatever a “proper case” might look like for purposes of Rule 19(a) joinder, Judge James P. Jones of the Western District of Virginia recently found that the case before him– Childress v. UBS Financial Services–did not qualify.

According to an often-quoted principle, patent co-owners are "at the mercy" of each other. In STC.UNM v. Intel Corp.,1 the Federal Circuit again confirmed this principle, holding that a patent co-owner's substantive right to refuse to join an infringement suit trumps Federal Rule of Civil Procedure 19(a), which can allow for involuntary joinder of a party. Thus, unless a co-owner has given up the right to refuse to join an infringement suit, the co-owner can effectively impede another co-owner's ability to sue infringers.

EEOC alleges that in maintaining its employment preference Peabody discriminates against non-Navajo Indians, including two members of the Hopi Nation and one member of the Otoe tribe, in violation of Title VII, 42 U.S.C. § 2000e-2(a)(1)." The Ninth Circuit had already once reversed the district court in this case, on Fed. R. Civ. P. 19 and jurisdictional grounds (Peabody II). On this appeal, the panel reviewed the district court's entry of summary judgment.

Parties representing the pharmacy interests and PBMs filed appeals. The issues under appeal included (1) which parties could appeal the judgment, (2) whether the judgment operates against pharmacies that were not parties to the case and therefore violates their rights to due process and offends Federal Rule of Civil Procedure 19 and (3) whether the district court correctly concluded that the settlements were "fair, reasonable, and adequate." With regard to the parties entitled to appeal the judgment, the Court ruled that (1) the National Association of Chain Drug Stores, the Food Marketing Institute, and DeVille Pharmacies were entities within the class definition, did not opt out of the class and were therefore entitled to appeal, (2) the Long-Term Care Pharmacy Alliance and the American Society of Consultant Pharmacists, non-class members who moved to intervene in the district court but were denied, are permitted to intervene on appeal and (3) Eaton Apothecary, Louis and Clark Drug, Thrifty White Drug, the National Community Pharmacists Association, and the Pharmaceutical Care Management Association, non-class members who had not attempted to intervene in the district court, are not entitled to now intervene.