Green Griffith partner Emer Simic discussed the significance of the Gensetix-University of Texas decision in the September issue of Technology Transfer Tactics.
Green Griffith partner Emer Simic recently appeared in the pages of the journal Technology Transfer Tactics, weighing in on the significance of the recent Gensetix-University of Texas decision, and its likely impact on university licensing arrangements.
The case concerned a University of Texas (UT) licensee that wanted to sue Baylor College of Medicine for infringement on a valuable patent. UT refused to join the lawsuit as a necessary party. When the licensee pushed for the university to join the suit, the U.S. Court of Appeals for the Federal Circuit determined that UT has sovereign immunity and therefore could not be dragged into litigation against its will. However, the court’s decision was divided with two of the judges essentially opining that sovereign immunity can overrule a cooperation agreement in a contract.
“Prior to this decision I would tell licensees to be careful to include these provisions that everyone consents to litigate, but now that may not be sufficient,” says Emer. She goes on to say that she expects this decision to be reviewed further.
“Universities are making money and acting as private entities through these contracts, but at the same time they are relying on their state sovereign immunity to overrule portions of the contacts,” says Emer. “That is a serious concern and one I think we will see the federal circuit take a look at.”