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, Dallas, 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 represented 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 System (UT) and TissueGen Inc. sued Boston Scientific Corporation (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, appeals 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 jurisdiction to hear this appeal under the collateral order doctrine. 

On the merits, we conclude that the state sovereignty principles 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 University 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 resulting 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, developed the claimed technology at the University of Texas at

Arlington and founded TissueGen Inc. as a vehicle for commercializing 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 therapeutic 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 infringed 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 jurisdiction 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 outside the territory of Texas, and the State of Texas 

cannot be compelled to respond to any counterclaims, whether compulsory or not, outside its territory 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, transferred to the District of Delaware. BSC noted that it does 

not own or lease any property or maintain a business address 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 transferred the case to the District of Delaware. See Bd. of Regents, 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 exclusive 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)). Applying 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 sovereign immunity arguments, explaining that “[s]overeign immunity is a shield; it is not meant to be used as a sword . . . 

There is no claim or counterclaim against The Board of Regents 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 jurisdiction over UT’s appeal. Transfer orders are interlocutory

and generally cannot be appealed immediately. We conclude, 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 jurisdiction 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 final 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) (quoting Firestone Tire & Rubber Co. v. Risjord, 449 U.S. 368, 

373 (1981)). “Appeal is thereby precluded ‘from any decision 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 pursuant to Fed. R. Civ. P. 54(b)) or as a certified question pursuant 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 exception” 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 determine[s] claims of right separable from, and collateral to, 

rights asserted in the action, too important to be denied review 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] resolve an important issue completely separate from the merits 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 entities may invoke the collateral order doctrine to immediately 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 treatment 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 immunity under the Eleventh Amendment prohibited the 

suit. Id. The district court denied the motion, PRASA appealed, 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 decisions 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 determinations 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 decisions denying sovereign immunity are appealable as collateral 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 patent venue statute does not abrogate those rights. See id.

at 26–36. UT generally invokes its rights as a state sovereign to challenge the district court’s transfer order—an order 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 collateral 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 “tentative, informal or incomplete” about the transfer order regarding 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 unsuccessfully 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 determination 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 apply with even greater force to transfer decisions 

than to decisions of substantive law; transferee 

courts that feel entirely free to revisit transfer decisions of a coordinate court threaten to send litigants 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, although as a rule courts should be loathe to do so in the absence of extraordinary circumstances such as where the 

initial decision was ‘clearly erroneous and would work a 

manifest injustice.’” Id. at 817 (quoting Arizona v. California, 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 determination 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 jurisdiction in Delaware is conclusively determined. We note that, 

in opposing appealability, BSC does not waive the law-ofthe-case protection it has against the Delaware court drawing 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 erroneous, 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 sovereignty issues raised here are “important issue[s],” the 

resolution of which are “completely separate from the merits” 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 constitutional protection” and that “its ultimate justification is 

the importance of ensuring that the States’ dignitary interests 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 parties,” and that the Amendment “is rooted in a recognition 

that the States, although a union, maintain certain attributes 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 litigating 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 sovereignty, 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 doctrine 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 appeal, 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 constitute 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 sovereign 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 apply 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 attributes of state sovereignty to preclude a suit from going 

forward. Even if we were to ultimately conclude that plaintiffs 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 district 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 Delaware, 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 transferring 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 infringement 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 established place of business.” 28 U.S.C. § 1400(b). “We review 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 immunity, we apply our own law in light of the special importance of ensuring national uniformity on such 

questions.”); see also Univ. of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., 734 F.3d 

1315, 1320 (Fed. Cir. 2013) (“We have held that the question 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 requirements 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 language 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 sovereign 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 immunity, original jurisdiction, and state sovereignty arguments in detail below.

1. State Sovereign Immunity

We first address the doctrine of state sovereign immunity, “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 Subjects 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 provides 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 Judicial 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, seeking 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 transferred 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 district court ruled in favor of Lilly on infringement and validity, and UC appealed to this court. Id. at 1564.

UC argued on appeal that Eleventh Amendment immunity deprived the Southern District of Indiana of jurisdiction. 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 appears 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 altered). 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 immunity applies only in situations where a State is a defendant. 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. Because UC was acting solely as the plaintiff, we explained 

that “we need not determine whether UC waived its immunity 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 Indiana 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) (Marshall, 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 interest 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 construed as to oust the court of its jurisdiction, should 

such claim be suggested. The amendment simply 

provides, that no suit shall be commenced or prosecuted 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 challenge the transfer to the District of Delaware. See Appellant’s Br. 18–20. Because UT is acting solely as a plaintiff, 

however, sovereign immunity does not apply, and UT cannot rely on it to challenge the transfer. See Eli Lilly, 

119 F.3d at 1564–65. We thus hold that sovereign immunity 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 immunity—a complementary attribute of state sovereignty—confirms 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 amendment [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 constitutional interest in immunity encompasses not merely 

whether it may be sued, but where it may be sued.” Appellant’s Br. 19. Finally, UT relies on Feeney, where the Supreme 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 distinguishable 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 Eleventh Amendment to suits in which a State is solely a plaintiff. Our reading of Ayers, Pennhurst, and Feeney here is 

consistent with Eli Lilly, where we previously distinguished Feeney, emphasizing that “the Court did not construe 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 jurisdiction argument to the district court. We exercise our discretion 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 citizens 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)—establish 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 (emphasis 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 question, and Kansas challenged the removal. Id. at 465. Kansas 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 appeal”). 
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 exercise jurisdiction over suits filed by a State against a nonState. 

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 entertain its case.” Id. at 465. The Court here refers to the ability of States to sue in lower courts in addition to the 

Supreme Court. These passages do not, as UT asserts, support the proposition that States may sue in any forum regardless of venue rules.

Georgia also does not support UT’s argument. In Georgia, the State of Georgia filed a bill of complaint in the Supreme Court, alleging that several railway companies had 

committed antitrust violations. 324 U.S. at 443. The defendants argued that the Supreme Court should decline to 

exercise original jurisdiction over the case because the action 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 Wyandotte, the Court was merely discussing the principles underlying 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 support the proposition that a State can bring suit in any forum 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 question jurisdiction.

3. State Sovereignty

Finally, UT asserts that it has the right to sue for patent infringement in its forum of choice based on the inherent 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 litigates 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 sovereignty.

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 plaintiff. 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 immunity decisions in the removal context from the Supreme 

Court and from our sister circuits. See, e.g., id. at 620 (noting that the State of Georgia “voluntarily invoked the federal 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 officials voluntarily to invoke federal process in a federal forum, 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 action.”).

When a State sues in federal court, it waives sovereign 

immunity with respect to its asserted claims, subjecting itself to the jurisdiction of the federal courts, and must accept 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 federal courts under Article III is not restricted. “The discretion, 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 authorize 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 Congress 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 federal constitutional court rather than another? A. As to civil 

plaintiffs, no. Congress has plenary power to distribute jurisdiction 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 sovereign immunity, cannot escape Congress’s statutory provisions 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) (“[Congress] 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 Personal Jurisdiction in the Federal Courts, 58 Ind. L.J. 1, 1

(1983) (“Had Congress in the exercise of its article III powers to establish ‘inferior courts’[] chosen to establish only 

one such tribunal, there would be little doubt of the constitutional 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 explanation in Union Pacific is true, “then Congress could establish federal trial courts whose jurisdictional reach extends 

across state lines; indeed, it could even set up a single federal 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 Florida misrepresented its tuition prepayment program. See 

College Savings, 527 U.S. at 671. College Savings Bank argued that Florida waived its sovereign immunity by engaging 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 activities 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 authorities 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 abrogate. 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 sovereignty 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 different 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 patent infringement suit in the Northern District of Texas did 

not result in a waiver of immunity in this separate infringement 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 jurisdiction 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 Brunette Machine Works—a Canadian corporation—for patent 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 apply 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 defendant, “cannot rely on § 1400” as a shield against suit in 

Oregon. Id. at 714. We do not find UT’s reliance on Brunette persuasive because, unlike in Brunette, there is no authority 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