The U.S. Court of Appeals for the Federal Circuit has teed up another opportunity for the Supreme Court to ponder sovereign immunity and patent laws.

This time, the question is whether a state can be dragged against its will into federal court—not as a defendant, but as a plaintiff by a licensee who needs its cooperation to bring a patent infringement suit.

The court answered no, by a 2-1 vote. It further ruled that the licensee can proceed without the University of Texas, over the state's objection. That too was decided 2-1, albeit a different lineup.

Along the way, Judges Kathleen O'Malley and Pauline Newman encouraged the U.S. Supreme Court to reconsider a pair of 1999 precedents. Abrogating Florida Prepaid v. College Savings Bank "I suspect would be welcomed by many," O'Malley wrote in a footnote.

Judge Richard Taranto, meanwhile, said the majority was misconstruing a more recent Supreme Court sovereign immunity opinion and suggested that the court has created a circuit split on its proper interpretation.

The roots of Gensetix v. The Board of Regents of the University of Texas System are in the decision of UT to license a cancer treatment to Gensetix but then refuse to join in a suit against alleged infringers at the Baylor College of Medicine.

When a patent is jointly owned, both owners generally must participate for the suit to go forward. The Supreme Court has said that a patent holder can be involuntarily joined to a lawsuit if there's no other way of securing justice for a licensee. But U.S. District Judge Andrew Hanen of Houston ruled, and the Federal Circuit agreed, that UT's Eleventh Amendment immunity trumps that principle.

Gensetix had argued that while sovereign immunity shields states from being sued—no case has ever held that it also prevents them from being hauled into court as plaintiffs.

Now there's one.

"It is immaterial that there are no claims against UT, or that UT is named an involuntary plaintiff rather than an involuntary defendant," O'Malley wrote. "The Eleventh Amendment serves to prevent 'the indignity of subjecting a State to the coercive process of judicial tribunals' against its will."

Newman dissented. "Just as the State must pay its bills, it also must comply with its contracts," she wrote. She quoted Justice Stephen Breyer's dissent in one of the Florida Prepaid cases, which held that states can invoke sovereign immunity to escape being sued for patent infringement. Breyer reiterated his critique earlier this year but acknowledged "that my longstanding view has not carried the day."

But Gensetix and partner Paul Skiermont of Skiermont Derby still come away with the win, because O'Malley and Newman ruled that Gensetix is free to proceed against Baylor without UT as a co-plaintiff. "Gensetix is fully able (and willing) to step into UT's shoes and protect the absent sovereign's interests in the validity of the patents-in-suit," she wrote.

In dissent Taranto pointed to Republic of Philippines v. Pimentel, a 2008 case in which the Supreme Court ruled that an action must be dismissed if a sovereign makes a nonfrivolous assertion that its interests could be harmed by proceeding in its absence. Because UT reasonably argues that its patent could be narrowed or invalidated if Gensetix proceeds without it, the case must be dismissed, Taranto wrote.

He noted that the Ninth Circuit has cited "'a wall of authority" in favor of dismissing actions in which a necessary party cannot be joined due to tribal sovereign immunity."

Gensetix also had counsel from Schiff Hardin. UT was represented by Vinson & Elkins. Baker Botts represented Baylor.

The Federal Circuit has ruled in the last couple of years that sovereign immunity does not shield state universities or Native American tribes from administrative patent validity challenges at the USPTO. The Supreme Court declined to review either decision.