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Baker Botts Secures Major Win for Baylor College of Medicine in Immuno-Cancer Therapies Patent Trial

News Release

HOUSTON, December 13, 2018 – Baker Botts L.L.C., a leading international law firm, announced that it has successfully defended its client  Baylor College of Medicine (“Baylor”), one of its researchers, Dr. William Decker, and Diakanos Research Ltd. (“Diakanos”) in a recent patent infringement law suit.

Background on the case:

  • Baylor, Dr. Decker and Diakanos were all sued for patent infringement early last year by Gensetix, Inc., a licensee of certain immuno-cancer therapy patents owned by The Board of Regents of the University of Texas System, MD Anderson Cancer Center (“UT” or “MD Anderson”) in connection with Dr. Decker's research into these immuno-cancer therapies. Dr. Decker first started his research into these immune-cancer therapies while at MD Anderson. He later moved to Baylor, where he continued his research into these therapies and also teamed up with Diakanos to further develop the technology.
  • UT refused to join the lawsuit as an involuntary plaintiff and later moved to dismiss itself from the lawsuit. Baylor also moved to dismiss the case against it on the basis that without UT in the case Gensetix had no standing to prosecute its claims for patent infringement against it.  Dr. Decker and Diakanos joined Baylor's motion to dismiss. Gensetix opposed UT's motion to dismiss arguing that its license agreement required UT's participation in the case. UT responded that it had not waived its sovereign immunity and thus could not be forced into the suit.
  • Gensetix asked the court to let it proceed against Baylor and the other defendants even without UT in the case arguing in its opposition to Baylor's motions to dismiss that its license from UT granted it substantial rights to UT's patents such that it had prudential standing to proceed against the defendants without UT.

In his findings, U.S. District Judge Andrew Hanen granted UT's motion to dismiss finding that since UT had not waived its sovereign immunity, Gensetix could not force UT to join its suit against Baylor and the other defendants. Judge Hanen also granted Baylor's motion to dismiss (and the other defendants joinder to Baylor's motion to dismiss) on the basis that UT had retained substantial rights in its license agreement with Gensetix and therefore Gensetix did not have prudential standing to proceed with its patent claims without UT in the case.

Judge Hanen dismissed a number of state law claims brought by Gensetix against the defendant. With the patent claims against the defendants dismissed, Judge Hanen declined to exercise supplemental jurisdiction over Gensetix's state law claims.

"This is a major win for Baylor and for its patients. It allows them to continue their research into these potentially life-saving cancer therapies," said Paul Morico, a partner in Baker Botts Houston office and lead counsel.

"The ruling is significant because it's the second time a Texas court dismissed a patent infringement lawsuit brought by a UT licensee against an accused infringer where UT refused to join the case on the basis of sovereign immunity. The case underscores the power of a state to control patent litigation through its sovereign immunity," added Mr. Morico.

The Baker Botts team included Houston based partners Paul Morico, Liz Flannery and Amy Hefley and Associate Lindsay Cutie.

 

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About Baker Botts L.L.P.
Baker Botts is an international law firm of approximately 725 lawyers practicing throughout a network of 14 offices around the globe. Based on our experience and knowledge of our clients’ industries, we are recognized as a leading firm in the energy and technology sectors. Throughout our 179-year history, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit BakerBotts.com.

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