Board of Regents v. Boston Scientific Corporation ( 2019 )

United States Court of Appeals
for the Federal Circuit
______________________
BOARD OF REGENTS OF THE UNIVERSITY OF
TEXAS SYSTEM, TISSUEGEN, INC.,
Plaintiffs-Appellants
v.
BOSTON SCIENTIFIC CORPORATION,
Defendant-Appellee
______________________
2018-1700
______________________
Appeal from the United States District Court for the
Western District of Texas in No. 1:17-cv-01103-LY, Judge
Lee Yeakel.
______________________
Decided: September 5, 2019
______________________
MICHAEL W. SHORE, Shore Chan DePumpo LLP, Dal-
las, TX, argued for plaintiffs-appellants. Also represented
by ALFONSO CHAN, CHIJIOKE E. OFFOR; ANDREW M.
HOWARD, Howard & Spaniol, PLLC, Dallas, TX; RUSSELL
J. DEPALMA, Russell J. DePalma PLLC, Irving, TX.
JOHN NILSSON, Arnold & Porter Kaye Scholer LLP,
Washington, DC, argued for defendant-appellee. Also rep-
resented by MATTHEW WOLF, ANDREW TUTT.
______________________
2 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
Before PROST, Chief Judge, REYNA and STOLL, Circuit
Judges.
STOLL, Circuit Judge.
The Board of Regents of the University of Texas Sys-
tem (UT) and TissueGen Inc. sued Boston Scientific Corpo-
ration (BSC) for patent infringement in the Western
District of Texas. The district court determined that venue
was improper and transferred the case to the District of
Delaware. UT, acting as an arm of the State of Texas, ap-
peals the district court’s transfer order on several grounds
relating to its rights as a sovereign entity.
We hold that, as a threshold matter, we have jurisdic-
tion to hear this appeal under the collateral order doctrine.
On the merits, we conclude that the state sovereignty prin-
ciples asserted by UT do not grant it the right to bring suit
in an otherwise improper venue. We affirm.
BACKGROUND
The Board of Regents is the governing body for the Uni-
versity of Texas System, which includes eight universities
and six health institutions. The Board’s nine regents are
appointed by the Governor of Texas and confirmed by the
Texas Senate, and its authority to govern the University of
Texas System is delegated to it by the Texas Legislature.
It is undisputed that UT is an arm of the State of Texas.
UT is the assignee and exclusive owner of patents re-
sulting from research conducted at the University of Texas
System. Its portfolio includes U.S. Patent Nos. 6,596,296
and 7,033,603 (the “patents-in-suit”), which are directed to
implantable drug-releasing biodegradable fibers.
Dr. Kevin Nelson, co-inventor of the patents-in-suit, devel-
oped the claimed technology at the University of Texas at
Arlington and founded TissueGen Inc. as a vehicle for com-
mercializing his inventions. UT exclusively licensed the
patents-in-suit to TissueGen, which then commercialized
its ELUTE® fiber product. According to UT, ELUTE® fiber
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 3
is intended to replace standard fibers in medical devices
like implantable stents, and it is capable of delivering ther-
apeutic agents directly to the site of implantation.
In November 2017, UT and TissueGen sued BSC for
patent infringement in the Western District of Texas. See
Compl., Bd. of Regents, the Univ. of Tex. Sys. v. Boston Sci.
Corp., No. 1:17-cv-1103 (W.D. Tex. Nov. 20, 2017), ECF
No. 1. UT alleged that several BSC stent products in-
fringed the patents-in-suit. In its complaint, UT conceded
that BSC is a Delaware corporation with a principal place
of business in Massachusetts. It asserted that “[v]enue is
proper in the Western District of Texas because UT has
sovereign immunity and this Court has personal jurisdic-
tion over [BSC].” Id. ¶ 7. Relying on state sovereignty as
its hook for venue, UT explained:
Venue is proper in the Western District of Texas
because UT is an arm of the State of Texas, has the
same sovereign immunity as the State of Texas, it
would offend the dignity of the State to require it
to pursue persons who have harmed the State out-
side the territory of Texas, and the State of Texas
cannot be compelled to respond to any counter-
claims, whether compulsory or not, outside its ter-
ritory due to the Eleventh Amendment.
Id. ¶ 10. UT further emphasized that it did not waive its
sovereign immunity and did not “consent[] to any suit or
proceeding filed separate from this action.” Id. ¶ 2.
BSC filed a motion to dismiss under Federal Rule of
Civil Procedure 12(b)(3) for improper venue. It requested
that the case be dismissed or, in the alternative, trans-
ferred to the District of Delaware. BSC noted that it does
not own or lease any property or maintain a business ad-
dress in the Western District of Texas. BSC disclosed that
it has approximately forty-six employees in the Western
District of Texas, all of whom maintain home offices and do
4 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
not work in spaces that are owned, leased, or controlled by
BSC.
The district court granted BSC’s motion and trans-
ferred the case to the District of Delaware. See Bd. of Re-
gents, the Univ. of Tex. Sys. v. Boston Sci. Corp., No. 1:17-
cv-1103 (W.D. Tex. Mar. 12, 2018), ECF No. 27 (“Order”).
It explained that “28 U.S.C. § 1400(b)[] is the ‘sole and ex-
clusive provision controlling venue in patent infringement
actions,’” and that venue is proper under this section where
a defendant resides or has a regular and established place
of business. Id. at 2 (quoting TC Heartland LLC v. Kraft
Foods Grp. Brands LLC, 137 S. Ct. 1514, 1519 (2017)). Ap-
plying this court’s decision in In re Cray Inc., 871 F.3d 1355(Fed. Cir. 2017), the district court found that BSC “does not
maintain a ‘regular and established place of business’ in
the Western District of Texas.” Id. It rejected UT’s sover-
eign immunity arguments, explaining that “[s]overeign im-
munity is a shield; it is not meant to be used as a sword . . .
There is no claim or counterclaim against The Board of Re-
gents that places it in the position of a defendant.” Id. at 3
(citing Regents of the Univ. of Cal. v. Eli Lilly & Co.,
119 F.3d 1559, 1565 (Fed. Cir. 1997)). The district court
held that venue was improper under § 1400(b), as there
was no dispute that BSC, a Delaware corporation, does not
reside in the district. Accordingly, it transferred the case
to the District of Delaware pursuant to 28 U.S.C. § 1406.
Id. at 3–4. UT appeals the district court’s transfer order.
DISCUSSION
I
We first address whether we have appellate jurisdic-
tion over UT’s appeal. Transfer orders are interlocutory
and generally cannot be appealed immediately. We con-
clude, however, that we have jurisdiction here. Because
UT challenges the district court’s transfer order based on
state sovereignty, we hold that this case falls within the
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 5
small class of orders excepted from the final judgment rule
by the collateral order doctrine.
Section 1295(a)(1) of Title 28 grants this court jurisdic-
tion over any “appeal from a final decision of a district court
of the United States . . . in any civil action arising under
. . . any Act of Congress relating to patents.” Under the fi-
nal judgment rule, a party may not appeal “until there has
been a decision by the district court that ends the litigation
on the merits and leaves nothing for the court to do but
execute the judgment.” Robert Bosch, LLC v. Pylon Mfg.
Corp., 719 F.3d 1305, 1308 (Fed. Cir. 2013) (en banc) (quot-
ing Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368,
373 (1981)). “Appeal is thereby precluded ‘from any deci-
sion which is tentative, informal or incomplete,’ as well as
from any ‘fully consummated decisions, where they are but
steps towards final judgment in which they will merge.’”
Puerto Rico Aqueduct & Sewer Auth. v. Metcalf & Eddy,
Inc., 506 U.S. 139, 142 (1993) (quoting Cohen v. Beneficial
Indus. Loan Corp., 337 U.S. 541, 546 (1949)). A transfer
order is not a final judgment. It “is interlocutory and thus
not immediately appealable, but appealable only incident
to a final judgment in a case (or a partial judgment pursu-
ant to Fed. R. Civ. P. 54(b)) or as a certified question pur-
suant to 28 U.S.C. § 1292(b).” FDIC v. Maco Bancorp, Inc.,
125 F.3d 1446, 1447 (Fed. Cir. 1997).
The collateral order doctrine provides a “narrow excep-
tion” to the final judgment rule. Amgen Inc. v. Hospira,
Inc., 866 F.3d 1355, 1358–59 (Fed. Cir. 2017). An order
that is not final will be immediately appealable under this
doctrine if it “fall[s] in that small class which finally deter-
mine[s] claims of right separable from, and collateral to,
rights asserted in the action, too important to be denied re-
view and too independent of the cause itself to require that
appellate consideration be deferred until the whole case is
adjudicated.” Puerto Rico, 506 U.S. at 143 (quoting Cohen,
337 U.S. at 546). “To come within the ‘small class’ of
. . . [collateral order doctrine decisions], the order must
6 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
[1] conclusively determine the disputed question, [2] re-
solve an important issue completely separate from the mer-
its of the action, and [3] be effectively unreviewable on
appeal from a final judgment.” Id. at 144–45 (quoting
Coopers & Lybrand v. Livesay, 437 U.S. 463, 468 (1978));
see also Cohen, 337 U.S. at 546.
The Supreme Court has held that States and State en-
tities may invoke the collateral order doctrine to immedi-
ately appeal an order denying a claim of sovereign
immunity. In Puerto Rico, the Puerto Rico Aqueduct and
Sewer Authority (PRASA)—an arm of the Puerto Rican
government—sought to upgrade Puerto Rico’s waste treat-
ment plants and contracted with Metcalf & Eddy Inc. to
assist with the task. 506 U.S. at 141. PRASA withheld
payments on the contract due to alleged overcharging by
Metcalf, and Metcalf sued PRASA in the District of Puerto
Rico for breach of contract in response. Id. PRASA then
moved to dismiss the case on grounds that sovereign im-
munity under the Eleventh Amendment prohibited the
suit. Id. The district court denied the motion, PRASA ap-
pealed, and the First Circuit dismissed the appeal for lack
of jurisdiction. Id. at 141–42. The First Circuit explained
that its precedent barred States from taking an immediate
appeal on a claim of sovereign immunity. Id. at 142.
The Supreme Court reversed. It determined that deci-
sions denying claims of sovereign immunity by a State or
its arms fall within the “small class” of decisions covered
by the collateral order doctrine. Id. at 144–45. The Court
explained that such decisions satisfy the three elements of
the doctrine as set forth in Cohen and Coopers & Lybrand.
Id. It emphasized that the Eleventh Amendment confers
on States the privilege not to be sued, and that decisions
denying sovereign immunity “purport to be conclusive de-
terminations that [States] have no right not to be sued in
federal court.” Id. at 145. The Court noted that resolving
the issue of sovereign immunity “generally will have no
bearing on the merits of the underlying action,” and that
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 7
the value of sovereign immunity to a State “is for the most
part lost once litigation proceeds past motion practice.” Id.Accordingly, the Court held that “States and state entities
that claim to be ‘arms of the State’ may take advantage of
the collateral order doctrine to appeal a district court order
denying a claim of Eleventh Amendment immunity.” Id.
at 147; see also Univ. of Minn. v. LSI Corp., 926 F.3d 1327,
1331 n.2 (Fed. Cir. 2019) (“It is well-established that deci-
sions denying sovereign immunity are appealable as collat-
eral orders, and the ‘ultimate justification is the
importance of ensuring that the States’ dignitary interests
can be fully vindicated.’” (quoting Puerto Rico, 506 U.S.
at 146–47)).
Here, UT challenges the district court’s transfer order
on several grounds. It argues that the U.S. Constitution’s
Original Jurisdiction Clause ensures that a State cannot
be forced to sue in a court located in another State. See
Appellant’s Br. 11–17. UT also argues that the Eleventh
Amendment confirms that a State is entitled to control
where it litigates against a private party. See id. at 18–21.
Finally, it asserts that it did not consent to jurisdiction or
waive its sovereignty rights in Delaware, and that the pa-
tent venue statute does not abrogate those rights. See id.at 26–36. UT generally invokes its rights as a state sover-
eign to challenge the district court’s transfer order—an or-
der denying the application of the Eleventh Amendment.
See Order at 3. We thus hold that, based on the Supreme
Court’s reasoning and analysis in Puerto Rico, the collat-
eral order doctrine likewise applies here.
As in Puerto Rico, the district court’s order satisfies all
three elements of the collateral order doctrine. See
506 U.S. at 144–45. The first element is met because the
order “conclusively determine[d]” that State sovereignty
principles do not apply. Id. at 144. There is nothing “ten-
tative, informal or incomplete” about the transfer order re-
garding this issue. Cohen, 337 U.S. at 546. As soon as the
case proceeds in Delaware, UT is subject to suit there, and
8 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
the issue of whether state sovereignty principles apply is
conclusively determined in the negative. Contrary to
BSC’s argument, UT cannot simply “raise its sovereignty
arguments in a ‘different room,’” because UT’s asserted
right to not litigate in Delaware is immediately lost upon
transfer. Appellee’s Br. 9 (quoting Carefirst of Md., Inc. v.
Carefirst Urgent Care Ctr., LLC, 305 F.3d 253, 255 (4th Cir.
2002)).
During oral argument, BSC conceded that, had UT un-
successfully moved in the District of Delaware to retransfer
the case back to Texas, then the issue would be conclusively
determined and the collateral order doctrine would apply.
Oral Arg. at 23:08, http://oralarguments.cafc.uscourts.gov/
default.aspx?fl=2018-1700.mp3. That UT could have filed
a motion to retransfer in Delaware does not alter our de-
termination that the first element is satisfied. The Texas
court already concluded that (1) venue is improper in the
Western District of Texas; and (2) venue is proper in the
District of Delaware. As the Supreme Court has explained,
these conclusions are law of the case:
Federal courts routinely apply law-of-the-case
principles to transfer decisions of coordinate courts
. . . Indeed, the policies supporting the doctrine ap-
ply with even greater force to transfer decisions
than to decisions of substantive law; transferee
courts that feel entirely free to revisit transfer de-
cisions of a coordinate court threaten to send liti-
gants into a vicious circle of litigation.
Christianson v. Colt Indus. Operating Corp., 486 U.S. 800,
816 (1988). “A court has the power to revisit prior decisions
of its own or of a coordinate court in any circumstance, alt-
hough as a rule courts should be loathe to do so in the ab-
sence of extraordinary circumstances such as where the
initial decision was ‘clearly erroneous and would work a
manifest injustice.’” Id. at 817 (quoting Arizona v. Califor-
nia, 460 U.S. 605, 618 n.8 (1984)). Thus, the District of
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 9
Delaware can revisit the Texas court’s venue determina-
tion only under extraordinary circumstances, such as
reaching a conclusion that the Texas court’s decision was
“clearly erroneous and would work a manifest injustice.”
Id. (quoting Arizona, 460 U.S. at 618 n.8). In the absence
of such a conclusion, however, the law-of-the-case doctrine
applies and the issue of whether UT is subject to jurisdic-
tion in Delaware is conclusively determined. We note that,
in opposing appealability, BSC does not waive the law-of-
the-case protection it has against the Delaware court draw-
ing a different conclusion than the one it urged the Texas
court to make. BSC does not argue that the Texas court’s
decision is implausible or clearly erroneous. Nor could it.
After all, BSC’s position is that, far from being clearly er-
roneous, the Texas court’s decision is actually correct. We
agree that the Texas court’s ruling is not clearly erroneous
or implausible and, as such, we are satisfied that the Texas
court’s transfer decision is conclusive for purposes of the
collateral order doctrine.
The second element is also met because the state sov-
ereignty issues raised here are “important issue[s],” the
resolution of which are “completely separate from the mer-
its” of the patent infringement suit. Puerto Rico, 506 U.S.
at 144. In Puerto Rico, the Supreme Court explained that
Eleventh Amendment immunity is “a fundamental consti-
tutional protection” and that “its ultimate justification is
the importance of ensuring that the States’ dignitary inter-
ests can be fully vindicated.” Id. at 145–46. The Court
noted that the purpose of the Eleventh Amendment is to
“prevent the indignity of subjecting a State to the coercive
process of judicial tribunals at the instance of private par-
ties,” and that the Amendment “is rooted in a recognition
that the States, although a union, maintain certain attrib-
utes of sovereignty, including sovereign immunity.” Id.
at 146. The state sovereignty principles claimed here are
similar to the claims of Eleventh Amendment immunity in
Puerto Rico because, in both instances, the claim invokes
10 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
sovereignty to protect a State’s dignitary interest in not lit-
igating under conditions to which it did not agree. We thus
determine that resolving whether those principles apply
here is also an “important issue.” Id. at 144. And because
resolution of this issue is “completely separate from the
merits of” a patent infringement suit, the second element
of the collateral order doctrine is satisfied. See id. Our
determination here turns on UT’s assertion of state sover-
eignty, and we recognize that transfer orders normally
would not satisfy this element. See Appellee’s Br. 10–11.
Finally, the third element of the collateral order doc-
trine is satisfied because the district court’s order, which
determined that Eleventh Amendment principles do not
apply, is “effectively unreviewable on appeal from a final
judgment.” See Puerto Rico, 506 U.S. at 144–45. On ap-
peal, UT asserts its rights as a sovereign entity to choose
its forum and not litigate its case in Delaware. If the case
proceeds to final judgment, an appeal of UT’s claims of
state sovereignty would be effectively pointless as UT
would have been litigating in Delaware the entire time.
Like the scenario in Puerto Rico, the value of UT’s asserted
rights “is for the most part lost as litigation proceeds past
motion practice.” Id. at 145; see also Firestone, 449 U.S.
at 376–77 (explaining that the challenged order must con-
stitute a final rejection “of a claimed right where denial of
immediate review would render impossible any review
whatsoever” (quoting United States v. Ryan, 402 U.S. 530,
533 (1971))).
We acknowledge that Puerto Rico differs because there
the State entity stood as a defendant whereas here, UT
stands as a plaintiff. The Supreme Court’s decision in
Puerto Rico turned on its recognition that the Eleventh
Amendment confers on a State or state entity the right to
not defend a suit, and that this important right is lost if the
State’s claim to sovereign immunity is denied. See
506 U.S. at 144–45. Here, in contrast, UT relies not on sov-
ereign immunity under the Eleventh Amendment so much
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 11
as on related principles that it labels as state sovereignty.
We nonetheless conclude that Puerto Rico’s teachings ap-
ply here. As we explained above, UT’s assertion of state
sovereignty principles is similar to a claim of Eleventh
Amendment immunity because both arguments invoke at-
tributes of state sovereignty to preclude a suit from going
forward. Even if we were to ultimately conclude that plain-
tiffs cannot assert state sovereignty to defeat a venue
transfer, that determination goes to the merits of the state
sovereignty issue in this case and cannot be the basis for
denying jurisdiction.
Given the similarities between this case and Puerto
Rico, we conclude that we have jurisdiction because the dis-
trict court’s transfer order fits within the small class of
judgments excepted from the final judgment rule by the
collateral order doctrine.
II
Turning to the merits, UT seeks reversal of the district
court’s transfer order on several grounds relating to state
sovereignty. It argues that 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. According to UT, the
federal patent venue statute cannot abrogate a State’s
right to choose the forum when asserting infringement of
its federal patent rights. UT also argues that the District
of Delaware lacks jurisdiction because UT never consented
to suit in Delaware, never waived its sovereignty in Dela-
ware, and never had its sovereignty abrogated by statute.
We disagree with UT on all grounds. We hold that the state
sovereignty principles asserted by UT do not grant it the
right to bring a patent infringement suit in an improper
venue. Accordingly, the district court did not err in trans-
ferring the case to the District of Delaware.
12 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
A. Standard of Review
The patent venue statute, 28 U.S.C. § 1400(b), “is the
sole and exclusive provision controlling venue in patent in-
fringement actions.” TC Heartland, 137 S.Ct. at 1519
(quoting Fourco Glass Co. v. Transmirra Prod. Corp.,
353 U.S. 222, 229 (1957)). Venue is proper under § 1400(b)
only where a defendant resides or “has a regular and es-
tablished place of business.” 28 U.S.C. § 1400(b). “We re-
view de novo the question of proper venue under 28 U.S.C.
§ 1400(b).” Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378,
1381 (Fed. Cir. 2019).
We apply Federal Circuit law to the questions of state
sovereignty raised here, just as we have applied our own
law to questions of sovereign immunity. See Delano Farms
Co. v. Cali. Table Grape Comm’n, 655 F.3d 1337, 1343
(Fed. Cir. 2011) (“In addressing the issue of sovereign im-
munity, we apply our own law in light of the special im-
portance of ensuring national uniformity on such
questions.”); see also Univ. of Utah v. Max-Planck-Gesell-
schaft Zur Forderung Der Wissenschaften E.V., 734 F.3d
1315, 1320 (Fed. Cir. 2013) (“We have held that the ques-
tion of Eleventh Amendment waiver is a matter of Federal
Circuit law.”). We review these questions de novo. See
Univ. of Utah, 734 F.3d at 1320 (“We review the district
court’s decision on Eleventh Amendment immunity de
novo.” (quoting A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d
1213, 1219 (Fed. Cir. 2010))).
B. Venue in the Western District of Texas
The district court determined that BSC neither resides
in nor has a regular and established place of business in
the Western District of Texas under § 1400(b). Order at 2–
3. UT does not appeal these determinations. It challenges
the transfer order only on the basis of state sovereignty.
There is no dispute that UT is an arm of the State of Texas
and is entitled to the same sovereign rights as Texas. See
Tegic Commc’ns Corp. v. Bd. of Regents of Univ. of Tex.
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 13
Sys., 458 F.3d 1335, 1340 (Fed. Cir. 2006) (“The University
of Texas System is deemed to be an arm of the State of
Texas, see Tex. Gov’t Code § 441.101(3), . . . .”).
UT argues that a State has the right to sue a private
party in any forum as long as personal jurisdiction require-
ments are met. See Appellant’s Br. 11–20. UT asserts that
this right “is an essential privilege of state sovereignty,”
and is established by several authorities including “the lan-
guage and history of the Original Jurisdiction Clause and
Eleventh Amendment,” and Supreme Court precedents.
Id. at 19. We disagree with UT. First of all, State sover-
eign immunity does not apply where a State acts solely as
a plaintiff, as UT does here. We also discern nothing in the
U.S. Constitution’s Original Jurisdiction Clause or in UT’s
other asserted authorities that supports the proposition
that a State has the right to bypass federal venue rules
when it engages in patent litigation as a plaintiff. We thus
conclude that UT does not have the right to bring a patent
infringement suit against BSC in the Western District of
Texas, an improper venue. We address UT’s sovereign im-
munity, original jurisdiction, and state sovereignty argu-
ments in detail below.
1. State Sovereign Immunity
We first address the doctrine of state sovereign im-
munity, “sometimes referred to” as “Eleventh Amendment
immunity.” See Alden v. Maine, 527 U.S. 706, 713 (1999).
The Eleventh Amendment immunizes the States from
suits “commenced or prosecuted against one of the United
States by Citizens of another State, or by Citizens or Sub-
jects of any Foreign State.” U.S. CONST. amend. XI. In its
opening appellate brief, UT asserted that the Eleventh
Amendment allows a State “to control where it litigates
against a private party.” Appellant’s Br. 18 (capitalization
altered). According to UT, state sovereign immunity pro-
vides that “only the state can dictate where it litigates its
14 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
property rights; a private party cannot dictate the forum.” 1
Id.We have previously held, however, that “the Eleventh
Amendment applies to suits ‘against’ a state, not suits by a
state.” Eli Lilly, 119 F.3d at 1564. In Eli Lilly, the Regents
of the University of California (UC)—an arm of the State
of California—sued Eli Lilly & Co. for patent infringement
in the Northern District of California. Id. at 1562. The Ju-
dicial Panel on Multidistrict Litigation consolidated the
case with five other related cases for pre-trial proceedings
in the Southern District of Indiana. Id. at 1563. UC then
filed a petition for a writ of mandamus to this court, seek-
ing to vacate the transfer order as barred by the Eleventh
Amendment. Id. We denied UC’s petition, holding that
“the transfer did not force unconsented suit upon UC and
thus was permissible for purposes of pretrial discovery.”
Id. Lilly subsequently filed a motion to have the case trans-
ferred under 28 U.S.C. § 1404(a) to the Southern District
of Indiana for trial. Id. The District Court for the Southern
District of Indiana granted the motion, transferred the case
to itself, and a trial proceeded on the merits. Id. The dis-
trict court ruled in favor of Lilly on infringement and va-
lidity, and UC appealed to this court. Id. at 1564.
UC argued on appeal that Eleventh Amendment im-
munity deprived the Southern District of Indiana of juris-
diction. Specifically, UC asserted that by choosing to bring
1 While UT expressly relied on sovereign immunity
in district court and in its opening appellate brief, it ap-
pears to have shifted course during the appeal. Indeed, in
its reply, UT asserted that “this case is not about Eleventh
Amendment immunity.” Reply Br. 5 (capitalization al-
tered). Likewise, during oral argument, UT’s counsel
stated that “[t]his is not an Eleventh Amendment case.”
Oral Arg. at 6:57. We nonetheless address this argument
since it was presented to the district court and raised here.
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 15
suit in the Northern District of California, it waived its
Eleventh Amendment immunity only in California federal
courts. Id. We explained that Eleventh Amendment im-
munity applies only in situations where a State is a defend-
ant. See id. at 1564–65. We determined that UC’s reliance
on Port Authority Trans-Hudson Corp. v. Feeney, 495 U.S.
299 (1990), was misplaced because the Court in that case
“did not construe the Eleventh Amendment to apply to
suits in which a state is solely a plaintiff,” and noted that
“we do not believe that the Court has ever so construed the
Eleventh Amendment.” Eli Lilly, 119 F.3d at 1564. Be-
cause UC was acting solely as the plaintiff, we explained
that “we need not determine whether UC waived its im-
munity only in California, because this case does not create
an Eleventh Amendment jurisdictional issue concerning
which the question of waiver even arises.” Id. at 1564–65.
Recognizing that there were no claims or counterclaims
that placed UC in the position of a defendant, we concluded
that “the Eleventh Amendment does not deprive the Indi-
ana district court of jurisdiction in this case.” Id. at 1565.
Our interpretation of the Eleventh Amendment in Eli
Lilly was guided by the Supreme Court’s reasoning in
United States v. Peters, 9 U.S. (5 Cranch) 115 (1809) (Mar-
shall, C.J.), a case where the Court declined to apply the
Eleventh Amendment in a suit instituted against the heirs
of a deceased State treasurer. See Eli Lilly, 119 F.3d
at 1564. The Court in Peters instructed:
The right of a state to assert, as plaintiff, any in-
terest it may have in a subject, which forms the
matter of controversy between individuals, in one
of the courts of the United States, is not affected by
[the Eleventh] amendment; nor can it be so con-
strued as to oust the court of its jurisdiction, should
such claim be suggested. The amendment simply
provides, that no suit shall be commenced or pros-
ecuted against a state. The state cannot be made a
defendant to a suit brought by an individual; but it
16 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
remains the duty of the courts of the United States
to decide all cases brought before them by citizens
of one state against citizens of a different state,
where a state is not necessarily a defendant.
Peters, 9 U.S. at 139 (emphases added). This is consistent
with other guidance from the Supreme Court. “[W]here a
state voluntarily become[s] a party to a cause, and submits
its rights for judicial determination, it will be bound
thereby, and cannot escape the result of its own voluntary
act by invoking the prohibitions of the 11th Amendment.”
Gunter v. Atl. Coast Line R.R. Co., 200 U.S. 273, 284 (1906).
Moreover,
[i]t would seem anomalous or inconsistent for a
State both (1) to invoke federal jurisdiction,
thereby contending that the “Judicial power of the
United States” extends to the case at hand, and (2)
to claim Eleventh Amendment immunity, thereby
denying that the “Judicial power of the United
States” extends to the case at hand.
Lapides v. Bd. of Regents of Univ. Sys. of Ga., 535 U.S. 613,
619 (2002).
Our decision in Eli Lilly controls here. Similar to UC
in Eli Lilly, UT here invokes sovereign immunity to chal-
lenge the transfer to the District of Delaware. See Appel-
lant’s Br. 18–20. Because UT is acting solely as a plaintiff,
however, sovereign immunity does not apply, and UT can-
not rely on it to challenge the transfer. See Eli Lilly,
119 F.3d at 1564–65. We thus hold that sovereign immun-
ity cannot be asserted to challenge a venue transfer in a
patent infringement case where a State acts solely as a
plaintiff.
UT nonetheless argues that “State sovereign immun-
ity—a complementary attribute of state sovereignty—con-
firms that only the state can dictate where it litigates its
property rights.” Appellant’s Br. 18. For support, it quotes
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 17
Ex parte Ayers, 123 U.S. 443, 505 (1887), for the proposition
that “[t]he very object and purpose of the eleventh amend-
ment [serves] to prevent the indignity of subjecting a state
to the coercive process of judicial tribunals at the instance
of private parties.” Appellant’s Br. 18–19. UT also quotes
Pennhurst State School & Hospital v. Halderman, 465 U.S.
89, 99 (1984), for the proposition that a “State’s constitu-
tional interest in immunity encompasses not merely
whether it may be sued, but where it may be sued.” Appel-
lant’s Br. 19. Finally, UT relies on Feeney, where the Su-
preme Court “reiterated that a state may control the venue
in which it litigates, holding that ‘issues of venue are
closely related to those concerning sovereign immunity.’”
Appellant’s Br. 19 (quoting Feeney, 495 U.S. at 307). While
UT accurately quotes these cases, we disagree with UT’s
reliance on them. Ayers, Pennhurst, and Feeney are all dis-
tinguishable as none involved the assertion of sovereign
immunity by a State as a plaintiff. We are aware of no
cases in which the Supreme Court has applied the Elev-
enth Amendment to suits in which a State is solely a plain-
tiff. Our reading of Ayers, Pennhurst, and Feeney here is
consistent with Eli Lilly, where we previously distin-
guished Feeney, emphasizing that “the Court did not con-
strue the Eleventh Amendment to apply to suits in which
a state is solely a plaintiff.” Eli Lilly, 119 F.3d at 1564.
2. The Original Jurisdiction Clause
UT next argues that “the Original Jurisdiction Clause
ensures a State cannot be forced to sue in a court located
in another State.” 2 Appellant’s Br. 11 (capitalization
2 We note that UT did not present its original juris-
diction argument to the district court. We exercise our dis-
cretion and reach UT’s argument rather than finding that
UT waived this issue by failing to present it below. See e.g.,
In re DBC, 545 F.3d 1373, 1378–79 (Fed. Cir. 2008) (noting
18 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
altered). The U.S. Constitution grants the Supreme Court
original jurisdiction over cases “in which a State shall be a
Party.” U.S. CONST. art. III, § 2, cl. 2. This grant is codified
at 28 U.S.C. § 1251(b)(3), which provides: “The Supreme
Court shall have original but not exclusive jurisdiction of
. . . All actions or proceedings by a State against the citi-
zens of another State or against aliens.” UT argues that
certain Supreme Court decisions on original jurisdiction—
namely Ames v. Kansas, 111 U.S. 449 (1884), Georgia v.
Pennsylvania Railroad Co., 324 U.S. 439 (1945), and Ohio
v. Wyandotte Chemicals Corp., 401 U.S. 493 (1971)—estab-
lish that a State has the “right to control the forum with
requisite jurisdiction in which it sues a citizen of another
state.” Appellant’s Br. 12–17. In so arguing, UT asserts
not only that (a) it has a Constitution-rooted right to avoid
out-of-state venues, but also that (b) it has an affirmative
right to sue in a federal district court that Congress has
deemed unavailable. We disagree with UT’s generous
reading of these cases and address each case in turn below.
UT cites Ames for its statements that States “were left
free to seek redress for their own grievances in any court
that had requisite jurisdiction” and “no limits were set on
their powers of choice in this particular.” See id. at 13 (em-
phasis omitted) (citing Ames, 111 U.S. at 465). But these
statements must be read in context. In Ames, the State of
Kansas filed suit in its own courts to challenge a corporate
consolidation by a national railway company. See Ames,
111 U.S. at 452–53. The defendants removed to federal
court on grounds that the case presented a federal ques-
tion, and Kansas challenged the removal. Id. at 465. Kan-
sas argued that the federal district court lacked
jurisdiction due to the Original Jurisdiction Clause, which
gives the Supreme Court “original Jurisdiction” in “all
“discretion to reach issues raised for the first time on ap-
peal”).
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 19
Cases . . . in which a State shall be Party.” U.S. CONST.
art. III, § 2, cl. 2. The Supreme Court disagreed and held
that where a State brings suit against private parties, the
original jurisdiction of the Supreme Court is not exclusive,
and those suits “may now be brought in or removed to” the
lower federal courts. Ames, 111 U.S. at 470. Ames thus
stands for the proposition that lower federal courts can ex-
ercise jurisdiction over suits filed by a State against a non-
State.
In so holding, the Supreme Court explained that one of
the practical effects of original jurisdiction was “to allow
the state to sue for itself in any tribunal that could enter-
tain its case.” Id. at 465. The Court here refers to the abil-
ity of States to sue in lower courts in addition to the
Supreme Court. These passages do not, as UT asserts, sup-
port the proposition that States may sue in any forum re-
gardless of venue rules.
Georgia also does not support UT’s argument. In Geor-
gia, the State of Georgia filed a bill of complaint in the Su-
preme Court, alleging that several railway companies had
committed antitrust violations. 324 U.S. at 443. The de-
fendants argued that the Supreme Court should decline to
exercise original jurisdiction over the case because the ac-
tion could have “conveniently proceed[ed] in the district
court of the proper venue.” Id. at 465. The Court exercised
original jurisdiction anyway, noting that “it is apparent
[from the complaint] that Georgia could not find all of the
defendants in one of the judicial districts of Georgia so as
to maintain a suit of this character against all of them in a
district court in Georgia.” Id. at 466. While the Court did
allow Georgia to proceed in its chosen forum—the Supreme
Court—this case also does not support the proposition that
a State has a right to proceed in any forum regardless of
venue rules.
In Wyandotte, the State of Ohio attempted to invoke
original jurisdiction in a suit against a Michigan chemical
20 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
company. 401 U.S. at 494. The Supreme Court declined
jurisdiction, noting that the issues raised were “bottomed
on local law,” that multiple regulatory bodies were already
involved, and that the case presented technical and factual
questions in which the Court had no expertise. Id. at 497,
502, 505. UT argues that Wyandotte supports a State’s
right to litigate in its forum of choice regardless of federal
venue rules because the Court broadly stated that “no
State should be compelled to resort to the tribunals of other
States for redress.” Appellant’s Br. 17 (quoting Wyandotte,
401 U.S. at 500). But, again, the Court’s statement must
be read in the context of the dispute litigated. In Wyan-
dotte, the Court was merely discussing the principles un-
derlying original jurisdiction and did not even consider
whether original jurisdiction confers on States the right to
bring suit in an improper venue. See 401 U.S. at 500.
The original jurisdiction cases cited by UT do not sup-
port the proposition that a State can bring suit in any fo-
rum as long as personal jurisdiction requirements are met.
These cases are further inapposite because UT never even
sought to invoke original jurisdiction. It brought this suit
“pursuant to 28 U.S.C. §§ 1331 and 1338(a).” Compl. ¶ 5.
Whether UT could have instituted this suit as an original
proceeding in the Supreme Court is irrelevant because UT
brought suit in a federal district court under federal ques-
tion jurisdiction.
3. State Sovereignty
Finally, UT asserts that it has the right to sue for pa-
tent infringement in its forum of choice based on the inher-
ent powers of a state sovereign. For example, it argues that
each State has “residual and inviolable sovereignty,” and
retained the right “as a sovereign, to choose the forum with
requisite jurisdiction in which to enforce its property rights
against citizens of another state.” Appellant’s Br. 10–11.
It further asserts that
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 21
States, although a union, maintain attributes of
sovereignty, including the (1) right to consent to or
reject jurisdiction (the right to choose where it liti-
gates its rights against a citizen); (2) immunity,
e.g., under the Eleventh Amendment or state tort
claim acts;[] (3) eminent domain power; (4) power
to try causes in its own courts; (5) power to tax; and
(6) police power, among other attributes of sover-
eignty.
Reply Br. 5.
We acknowledge that States are sovereign entities that
entered the Union with particular sovereign rights intact.
See Appellant’s Br. 9–11; see also Reply Br. 5–6. We are
not convinced, however, that the inherent powers of Texas
as a sovereign allow UT to disregard the rules governing
venue in patent infringement suits once it chose to file such
a suit in federal court.
When a State voluntarily appears in federal court, as
UT has done here, it “voluntarily invoke[s] the federal
court’s jurisdiction.” Lapides, 535 U.S. at 620. It logically
follows that the State must then abide by federal rules and
procedures—including venue rules—like any other plain-
tiff. We see nothing in UT’s cited authorities that suggests
otherwise. Indeed, it would be “anomalous or inconsistent”
for UT to both invoke federal question jurisdiction and then
to assert sovereignty to defeat federal jurisdiction. See id.
at 619.
Our conclusion here is consistent with sovereign im-
munity decisions in the removal context from the Supreme
Court and from our sister circuits. See, e.g., id. at 620 (not-
ing that the State of Georgia “voluntarily invoked the fed-
eral court’s jurisdiction” by voluntarily agreeing to remove
the case to federal court); In re Methyl Tertiary Butyl Ether
(“MTBE”) Prod. Liab. Litig., 488 F.3d 112, 119 (2d Cir.
2007) (“The removal of the cases here was the result of the
voluntary acts of California and New Hampshire in
22 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
commencing the lawsuits against the defendants. Once
having done so, these states subjected themselves to all of
the rules and consequences attendant to that decision.”); In
re Creative Goldsmiths of Washington, D.C., Inc., 119 F.3d
1140, 1148 (4th Cir. 1997) (“When a state authorizes its of-
ficials voluntarily to invoke federal process in a federal fo-
rum, the state thereby consents to the federal forum’s rules
of procedure and may not invoke sovereign immunity to
protect itself against the interposition of defenses to its ac-
tion.”).
When a State sues in federal court, it waives sovereign
immunity with respect to its asserted claims, subjecting it-
self to the jurisdiction of the federal courts, and must ac-
cept the federal statutory provisions that govern the
allocation of cases among the courts. The Supreme Court
has explained that Congress’s power to establish lower fed-
eral courts under Article III is not restricted. “The discre-
tion, therefore, of Congress as to the number, the
character, the territorial limits of the courts among which
it shall distribute this judicial power, is unrestricted except
as to the Supreme Court.” United States v. Union Pac. R.R.
Co., 98 U.S. 569, 602 (1878).
Congress thus has the power to establish as many—or
as few—federal district courts as it wishes, and to author-
ize nationwide assertion of jurisdiction by those courts.
See, e.g., Robertson v. R.R. Labor Bd., 268 U.S. 619, 622
(1925) (“Congress clearly has the power to authorize a suit
under a federal law to be brought in any inferior federal
court. Congress has power, likewise, to provide that the
process of every District Court shall run into every part of
the United States.”); Union Pac., 98 U.S. at 604 (“There is,
therefore, nothing in the Constitution which forbids Con-
gress to enact that, as to a class of cases or a case of special
character, a circuit court—any circuit court—in which the
suit may be brought, shall, by process served anywhere in
the United States, have the power to bring before it all the
parties necessary to its decision.”); Henry M. Hart, Jr., The
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 23
Power of Congress to Limit the Jurisdiction of Federal
Courts: An Exercise in Dialectic, 66 Harv. L. Rev. 1362,
1365 (1953) (“Q. [] [D]oes the Constitution give people any
right to proceed or be proceeded against in one inferior fed-
eral constitutional court rather than another? A. As to civil
plaintiffs, no. Congress has plenary power to distribute ju-
risdiction among such inferior federal constitutional courts
as it chooses to establish.”). 3 It follows that Congress has
the power to allocate cases, including patent cases, among
the federal district courts and UT, having waived its sover-
eign immunity, cannot escape Congress’s statutory provi-
sions governing patent cases.
C. Jurisdiction in the District of Delaware
Finally, UT argues that the District of Delaware lacks
jurisdiction over this case because it did not consent to suit
in Delaware, did not waive its sovereignty in Delaware,
3 See also Toland v. Sprague, 37 U.S. 300, 328 (1838)
(“Congress might have authorized civil process from any
circuit court, to have run into any state of the Union.”);
Martin v. Hunter’s Lessee, 14 U.S. 304, 331 (1816) (“[Con-
gress] might establish one or more inferior courts; they
might parcel out the jurisdiction among such courts, from
time to time, at their own pleasure.”); Robert Haskell
Abrams, Power, Convenience, and the Elimination of Per-
sonal Jurisdiction in the Federal Courts, 58 Ind. L.J. 1, 1
(1983) (“Had Congress in the exercise of its article III pow-
ers to establish ‘inferior courts’[] chosen to establish only
one such tribunal, there would be little doubt of the consti-
tutional permissibility of such a choice.”); Jonathan Remy
Nash, National Personal Jurisdiction, 68 Emory L.J. 509,
524 (2019) (commenting that, if the Supreme Court’s expla-
nation in Union Pacific is true, “then Congress could estab-
lish federal trial courts whose jurisdictional reach extends
across state lines; indeed, it could even set up a single fed-
eral trial court with national jurisdiction.”).
24 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
and never had its sovereignty abrogated by statute. See
Appellant’s Br. 26–32. Citing College Savings Bank v.
Florida Prepaid Postsecondary Education Expense Board,
527 U.S. 666 (1999), UT asserts that waiver of sovereignty
must be unequivocal and voluntary. See Appellant’s
Br. 26–29. In that case, College Savings Bank sued the
State of Florida under the Lanham Act, alleging that Flor-
ida misrepresented its tuition prepayment program. See
College Savings, 527 U.S. at 671. College Savings Bank ar-
gued that Florida waived its sovereign immunity by engag-
ing in interstate marketing of its program. See id. The
Supreme Court disagreed and held that Florida’s sovereign
immunity was not “voluntarily waived by the State’s activ-
ities in interstate commerce.” Id. at 691.
UT’s reliance on College Savings is misplaced. As we
explained above, sovereign immunity does not apply when
a State proceeds as a plaintiff. Moreover, none of the au-
thorities cited by UT support a broader privilege of state
sovereignty that gives a State the right to bring suit in an
improper venue. The issues of waiver and abrogation of
such rights thus do not arise, because there is no sovereign
immunity or relevant state sovereign right to waive or ab-
rogate. See Eli Lilly, 119 F.3d at 1564–65.
UT also argues that waiver of its sovereign immunity
is “forum and claim specific,” and that it did not waive sov-
ereignty in Delaware by filing suit in Texas. Appellant’s
Br. 29–30 (capitalization altered). We rejected the same
argument in Eli Lilly, because sovereign immunity does
not apply to “suits by a state.” 119 F.3d at 1564. The cases
UT cites as support are inapposite. UT cites to Tegic and
Hydro-Quebec, to argue that “waiver of state sovereignty is
limited to the state’s chosen forum.” Appellant’s Br. 29. In
both Tegic and Hydro-Quebec, we held that a state plaintiff
that files a patent infringement suit in one case, does not
waive its sovereign immunity in an entirely different case.
See Tegic, 458 F.3d at 1343 (“Although here the University
obviously ‘made itself a party to the litigation to the full
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. 25
extent required for its complete determination, . . . it did
not thereby voluntarily submit itself to a new action
brought by a different party in a different state and a dif-
ferent district court.” (quoting Clark v. Barnard, 108 U.S.
436, 448 (1883))); see also Hydro-Quebec, 626 F.3d at 1220(“UT’s waiver of Eleventh Amendment immunity in a pa-
tent infringement suit in the Northern District of Texas did
not result in a waiver of immunity in this separate infringe-
ment action.”). There is no second infringement suit here,
so these cases do not apply.
Additionally, UT states that “to rule against the State
of Texas, you would have to find that a venue provision is
[a] substantive jurisdictional right to defendants to only be
sued where they reside as opposed to where there is juris-
diction over them.” Oral Arg. at 36:52. UT argues that this
would be contrary to Brunette Machine Works, Ltd. v.
Kockum Industries, Inc., 406 U.S. 706 (1972). Oral Arg.
at 37:10. In Brunette, Kockum Industries, Inc. sued Bru-
nette Machine Works—a Canadian corporation—for pa-
tent infringement in the District of Oregon, which
dismissed the suit for improper venue under § 1400(b). Id.
at 707. The Supreme Court ruled that, even though venue
was improper under § 1400(b), that provision does not ap-
ply to suits against an alien defendant given the existence
of 28 U.S.C. § 1391(d), a venue statute applicable to foreign
entities. Id. at 713–14. The Court explained that “venue
provisions are designed, not to keep suits out of the federal
courts, but merely to allocate suits to the most appropriate
or convenient federal forum.” Id. at 710. The Court held
that § 1391(d) controlled and that Brunette, an alien de-
fendant, “cannot rely on § 1400” as a shield against suit in
Oregon. Id. at 714. We do not find UT’s reliance on Bru-
nette persuasive because, unlike in Brunette, there is no au-
thority asserted here that overrides the patent venue
statute.
Because sovereign immunity does not apply to a State
acting solely as a plaintiff, the issues of waiver and
26 BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP.
abrogation do not arise here. Accordingly, jurisdiction in
the District of Delaware is proper.
CONCLUSION
We have considered UT’s remaining arguments and
find them unpersuasive. UT’s sovereign rights do not allow
it to escape application of the patent venue statute in this
case. We affirm the district court’s transfer order.
AFFIRMED