Case: 19-1424    Document: 77     Page: 1   Filed: 07/24/2020




   United States Court of Appeals
       for the Federal Circuit
                  ______________________

                    GENSETIX, INC.,
                    Plaintiff-Appellant

                             v.

  THE BOARD OF REGENTS OF THE UNIVERSITY
             OF TEXAS SYSTEM,
               Plaintiff-Appellee

                             v.

   BAYLOR COLLEGE OF MEDICINE, DIAKONOS
     RESEARCH LTD, WILLIAM K. DECKER,
              Defendants-Appellees
             ______________________

                        2019-1424
                  ______________________

    Appeal from the United States District Court for the
 Southern District of Texas in No. 4:17-cv-01025, Judge An-
 drew S. Hanen.
                  ______________________

                  Decided: July 24, 2020
                  ______________________

    PAUL SKIERMONT, Skiermont Derby LLP, Dallas, TX,
 argued for plaintiff-appellant. Also represented by SARAH
 ELIZABETH SPIRES; MIEKE K. MALMBERG, Los Angeles, CA;
 CHRISTOPHER MICHAEL HODGE, Oracle Corp., Irving, TX;
 IMRON T. ALY, Schiff Hardin, Chicago, IL.
Case: 19-1424      Document: 77    Page: 2   Filed: 07/24/2020




 2               GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




    PETER E. MIMS, Vinson & Elkins LLP, Houston, TX, ar-
 gued for plaintiff-appellee. Also represented by OLIN RAY
 HEBERT, III, Austin, TX.

     MICHAEL HAWES, Baker Botts, LLP, Houston, TX, ar-
 gued for defendants-appellees Baylor College of Medicine,
 Diakonos Research Ltd. Defendant-appellee Baylor Col-
 lege of Medicine also represented by PAUL R. MORICO.

     GORDON ARNOLD, Arnold, Knobloch & Saunders,
 L.L.P., Houston, TX, for defendant-appellee Diakonos Re-
 search Ltd.

    MURRAY JULES FOGLER, Fogler Brar O'Neil and Gray
 LLP, Houston, TX, for defendant-appellee William K.
 Decker.
               ______________________

 Before NEWMAN, O’MALLEY, and TARANTO, Circuit Judges.
     Opinion for the court filed by Circuit Judge O’MALLEY.
 Opinion concurring in part and dissenting in part filed by
                 Circuit Judge NEWMAN.
 Opinion concurring in part and dissenting in part filed by
                 Circuit Judge TARANTO.
 O’MALLEY, Circuit Judge.
     This case involves the interplay of state sovereign im-
 munity under the Eleventh Amendment and required join-
 der of parties under Rule 19 of the Federal Rules of Civil
 Procedure. Gensetix, Inc. (“Gensetix”) exclusively licensed
 U.S. Patent Nos. 8,728,806 and 9,333,248 from the Univer-
 sity of Texas (“UT”), an arm of the state of Texas. Gensetix
 then sued Baylor College of Medicine, Diakonos Research
 Ltd., and William K. Decker (collectively, “Baylor”) for in-
 fringement of the patents-in-suit, naming UT as an
Case: 19-1424     Document: 77      Page: 3    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                 3



 involuntary plaintiff pursuant to Rule 19(a). The District
 Court for the Southern District of Texas determined that
 the Eleventh Amendment barred joinder of UT as an invol-
 untary plaintiff. Gensetix, Inc. v. Baylor Coll. of Med., 354
 F. Supp. 3d 759, 766 (S.D. Tex. 2018). The court also con-
 cluded that, under Rule 19(b), the suit could not proceed in
 UT’s absence. Id. at 773–74. Accordingly, the court dis-
 missed the suit. This appeal followed. For the reasons
 stated below, we affirm-in-part, reverse-in-part, and re-
 mand.
                       I. BACKGROUND
     The patents-in-suit are directed to methods of modify-
 ing a patient’s immune system to kill cancer cells. Decker,
 the named inventor of the patents-in-suit, developed his in-
 vention during his employment at the University of Texas
 MD Anderson Cancer Center. Pursuant to the terms of
 Decker’s employment agreement, the patents-in-suit were
 assigned to UT. 1 In September 2008, UT granted an exclu-
 sive license in the patents-in-suit to Alex Mirrow, a third
 party not relevant to this suit. In January 2014, Mirrow
 assigned his rights in the exclusive license to Gensetix. UT
 confirmed Mirrow’s assignment of the exclusive license to
 Gensetix in a June 2014 amendment.
     The license agreement provides that, Gensetix, at its
 own expense, must enforce any patent “covered by the li-
 cense and is entitled to retain recovery from such enforce-
 ment.” Gensetix, 354 F. Supp. 3d at 769. UT retained a
 secondary right to sue if Gensetix fails to file suit against a
 substantial infringer within six months of knowledge of



     1    According to the complaint, Decker left the Univer-
 sity of Texas MD Anderson Cancer Center around 2011 and
 joined the faculty at Baylor College of Medicine. J.A. 119.
 Neither Decker nor Baylor College of Medicine have li-
 censed the patents-in-suit from UT or Gensetix.
Case: 19-1424     Document: 77     Page: 4    Filed: 07/24/2020




 4              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 infringement. Id. The parties agreed to fully cooperate
 with each other in any infringement suit. And, the parties
 agreed that nothing in the agreement shall be deemed a
 waiver by UT of its sovereign immunity. Id. at 772.
       In April 2017, Gensetix filed this suit against Baylor,
 alleging infringement of the patents-in-suit. Gensetix
 noted that, before filing its complaint, it requested that UT
 join as a co-plaintiff, but UT declined. Gensetix therefore
 named UT as an involuntary plaintiff pursuant to
 Rule 19(a). J.A. 115–16. In its complaint, Gensetix alleged
 that Decker “continued and continues to use technology
 that infringes one or more claims of the [p]atents-in-[s]uit
 . . . as part of his work at” Baylor. J.A. 119. Gensetix also
 alleged that in 2013 and 2014, Decker published content
 while at Baylor that “gives Gensetix reason to believe” that
 Decker has practiced methods infringing at least claim 1 of
 each of the patents-in-suit. Id. According to the complaint,
 in May 2016, Baylor filed two patent applications, naming
 Decker as an inventor, which rely on the methods claimed
 in the patents-in-suit. J.A. 127.
      UT filed a motion to dismiss pursuant to Rule 12(b)(1),
 seeking to dismiss itself from the lawsuit. UT argued that
 it is a sovereign state entity under Texas law and that, un-
 der the Eleventh Amendment, the district court had no
 subject matter jurisdiction over UT. 2 It argued that,



     2    As the district court noted, the Eleventh Amend-
 ment “confers waivable immunity upon sovereign entities
 ‘rather than a nonwaivable limit on the Federal Judiciary’s
 subject-matter jurisdiction.’’’ Gensetix, 354 F. Supp. 3d
 at 764 (quoting Idaho v. Coeur d’Alene Tribe of Idaho, 521
 U.S. 261, 267 (1997). The court correctly concluded that
 the Eleventh Amendment does not necessarily deprive fed-
 eral courts of subject matter jurisdiction, rather, the “issue
 in this case is whether the Eleventh Amendment prevents
Case: 19-1424    Document: 77      Page: 5    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE               5



 pursuant to the license agreement, it had not waived its
 sovereign immunity, nor did it have the authority to do so
 because such authority lies only with the Texas Legisla-
 ture.
      Baylor argued that: (1) UT is a necessary party be-
 cause it owns the patents-in-suit and transferred less than
 all substantial patent rights to Gensetix; (2) UT cannot be
 joined as an involuntary plaintiff because, as an entity of
 the State of Texas, it is entitled to Eleventh Amendment
 sovereign immunity; and (3) the Rule 19(b) factors weigh
 in favor of dismissing the suit, rather than proceeding in
 UT’s absence.
     The district court granted UT’s motion to dismiss. It
 held that “[t]he purpose of the Eleventh Amendment is to
 prevent states from being compelled to litigate.” Gensetix,
 354 F. Supp. 3d at 766 (internal quotation marks omitted).
 It found that, while “there [were] currently no claims
 against UT, requiring joinder would, in effect, force UT to
 pursue claims against its will.” Id. Accordingly, the court
 held that, because “UT did not waive its immunity, initiate
 [the] suit, or agree to participate in [the] litigation,” the
 Eleventh Amendment prohibited involuntary joinder. Id.
     As to whether the infringement suit could proceed in
 UT’s absence, the court held that UT was a “necessary”
 party under Rule 19(a) because it retained substantial
 rights in the patents-in-suit. 3 Analyzing the applicable




 UT from being joined as an involuntary plaintiff in a patent
 suit.” Id.
     3   Rule 19 no longer uses the term “necessary party;”
 the more modern term is “required party.” See Republic of
 the Phil. v. Pimentel, 553 U.S. 851, 855–56 (2008). The
 Rule also no longer uses the term “indispensable.” Id.
 These changes were intended to be stylistic only. See Fed.
Case: 19-1424     Document: 77     Page: 6    Filed: 07/24/2020




 6              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 Rule 19(b) factors, the district court concluded that UT was
 an “indispensable” party, and that the suit could not pro-
 ceed in its absence. Id. at 773–74. Accordingly, the court
 dismissed the case. Gensetix timely appealed. We have
 jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
                        II. DISCUSSION
      On appeal, Gensetix argues that the district court
 (1) erred in holding that sovereign immunity bars coercive
 joinder of UT pursuant to Rule 19(a); and (2) abused its
 discretion in determining that, under Rule 19(b), the in-
 fringement suit should be dismissed rather than proceed in
 UT’s absence. 4 We address each argument in turn.
     A. Sovereign Immunity Bars Rule 19(a)(2) Joinder
      Rule 19(a)(2) requires a court to order a required plain-
 tiff “who refuses to join as a plaintiff” to “be made either a
 defendant or, in a proper case, an involuntary plaintiff.”
 Fed. R. Civ. P. 19(a)(2). The Eleventh Amendment pro-
 vides, however, that “[t]he Judicial power of the United
 States shall not be construed to extend to any suit in law
 or equity, 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.
 Although the procedural issue of joinder under Rule 19 is
 not unique to patent law, and we thus review its applica-
 tion under the law of the regional circuit, to the extent the
 district court assessed the interplay between Rule 19 and
 the Eleventh Amendment, we review that question using
 the law of our circuit. Regents of Univ. of N.M. v. Knight,
 321 F.3d 1111, 1124 (Fed. Cir. 2003). We therefore apply


 R. Civ. P. 19 advisory committee’s note to 2007 amend-
 ment.
     4   Gensetix does not challenge the district court’s con-
 clusion that, pursuant to the license agreement, UT did not
 transfer all substantial rights in the patents to Gensetix.
Case: 19-1424     Document: 77     Page: 7    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                7



 our law and review the district court’s decision on Eleventh
 Amendment immunity de novo. Id.
      On appeal, Gensetix argues that sovereign immunity
 does not preclude coercive joinder of a sovereign under
 Rule 19(a)(2). In Gensetix’s view, the Eleventh Amend-
 ment bars suits brought by private citizens against the
 state, which is not the case here. Appellant’s Br. 41–42
 (citing Regents of the Univ. of Cal. v. Eli Lilly & Co.,
 119 F.3d 1559, 1564 (Fed. Cir. 1997) (“Regents of UC”)).
 Gensetix argues that, like Regents of UC, here, there are
 no claims or counterclaims against UT, thereby making
 sovereign immunity inapplicable. Id. at 43. Gensetix also
 contends that both the Supreme Court and our court have
 consistently held that a patentee who refuses to voluntarily
 join an infringement action initiated by its exclusive licen-
 see can nonetheless be joined as an involuntary plaintiff.
 Id. at 39–41 (citing, e.g., Indep. Wireless Tel. Co. v. Radio
 Corp. of Am., 269 U.S. 459, 473 (1926), and Abbott Labs. v.
 Diamedix Corp., 47 F.3d 1128, 1133 (Fed. Cir. 1995)).
     UT responds that sovereign immunity protects it from
 private party litigation and this protection extends to join-
 der under Rule 19(a). According to UT, sovereign immun-
 ity “controls over the joinder process of Rule 19.” UT
 Br. 14. And, relying on the Supreme Court’s decision in
 Pimentel, 553 U.S. at 869, UT argues that, where there is
 a “potential for injury to the interests” of the absent sover-
 eign, the suit must be dismissed. Id. at 15.
      Like UT, Baylor argues that the Eleventh Amendment
 forbids the court from ordering UT to subject its property
 to federal court adjudication. Baylor Br. 16–17. According
 to Baylor, a state’s property rights cannot be limited or de-
 feated where the state neither brought a claim nor agreed
 to join the suit. And, like UT, Baylor points to the express
 language of Section 15.4 of the license agreement as indic-
 ative of UT’s refusal to waive sovereign immunity. Id. at
Case: 19-1424     Document: 77     Page: 8    Filed: 07/24/2020




 8              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 18–19. We agree that sovereign immunity is to be applied
 more broadly than the face of its text.
      Gensetix’s attempt to limit the Eleventh Amendment
 to its text—i.e., to cases “against” a state—is contrary to
 Supreme Court guidance. “[T]he sovereign immunity re-
 flected in (rather than created by) the Eleventh Amend-
 ment transcends the narrow text of the Amendment itself.”
 Coll. Sav. Bank v. Fla. Prepaid Postsecondary Ed. Expense
 Bd., 527 U.S. 666, 687 n.5 (1999). The Supreme Court has
 “understood the Eleventh Amendment to stand not so
 much for what it says, but for the presupposition . . . which
 it confirms.” Seminole Tribe of Fla. v. Fla., 517 U.S. 44, 54
 (1996) (quoting Blatchford v. Native Vill. of Noatak, 501
 U.S. 775, 779 (1991)). Importantly, the Court has made
 clear that “[t]he Eleventh Amendment does not exist solely
 in order to prevent federal-court judgments that must be
 paid out of a State’s treasury; it also serves to avoid the
 indignity of subjecting a State to the coercive process of ju-
 dicial tribunals at the instance of private parties.” Semi-
 nole Tribe, 517 U.S. at 58 (citations and internal quotation
 marks omitted).
     Gensetix provides no basis for suggesting that these
 principles are inapplicable in cases where the state is
 joined as an involuntary plaintiff. Indeed, Gensetix’s reli-
 ance on our decision in Regents of UC is misplaced. Regents
 of UC involved a suit initiated by the University of Califor-
 nia in the Northern District of California. 119 F.3d
 at 1559. In opposing transfer to the Southern District of
 Indiana, the university asserted that it only waived sover-
 eign immunity with respect to California federal courts and
 that the Eleventh Amendment barred transfer to a differ-
 ent district court. Id. at 1564. The defendant, Eli Lilly,
 argued that the Eleventh Amendment is inapplicable
 where a state asserts a claim and the suit involves no coun-
 terclaims against the state. Id. We agreed with Eli Lilly,
 explaining that the Supreme Court has “not construe[d]
 the Eleventh Amendment to apply to suits in which a state
Case: 19-1424      Document: 77    Page: 9    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                9



 is solely a plaintiff, as UC is here.” Id. We further ex-
 plained that:
     [T]he Eleventh Amendment applies to suits
     “against” a state, not suits by a state. Thus, we
     need not determine whether UC waived its immun-
     ity only in California, because this case does not
     create an Eleventh Amendment jurisdictional is-
     sue concerning which the question of waiver even
     arises. This case only involves UC’s patent in-
     fringement claims and Lilly’s defenses; it does not
     involve any claim or counterclaim against UC that
     places UC in the position of a defendant. Accord-
     ingly, we conclude that the Eleventh Amendment
     does not deprive the Indiana district court of juris-
     diction in this case.
 Id. at 1564–65.
     Gensetix erroneously reads Regents of UC to broadly
 hold that Eleventh Amendment immunity is inapplicable
 in all cases where the state is a plaintiff (even if involun-
 tarily) and there are no counterclaims against the state.
 But Regents of UC did not create a rule whereby parties
 may drag a sovereign into the federal court system against
 its will simply because there is no claim “against” the sov-
 ereign. Instead, our holding in that case was predicated on
 the state voluntarily submitting itself to federal court ju-
 risdiction. Indeed, we recently explained that our interpre-
 tation of the Eleventh Amendment in Regents of UC was
 “guided by” the Supreme Court’s reasoning that:
     “[W]here a state voluntarily become[s] a party to a
     cause, and submits its rights for judicial determi-
     nation, 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 incon-
     sistent for a State both (1) to invoke federal
Case: 19-1424    Document: 77      Page: 10     Filed: 07/24/2020




 10             GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




      jurisdiction, thereby contending that the “Judicial
      power of the United States” extends to the case at
      hand, and (2) to claim Eleventh Amendment im-
      munity, 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).
 Regents of the Univ. of Tex. Sys. v. Bos. Sci. Corp., 936
 F.3d 1365, 1376–77 (Fed. Cir. 2019) (alterations in origi-
 nal).
      We conclude that the key distinction between Regents
 of UC and the present case—that UT did not voluntarily
 invoke federal court jurisdiction—is dispositive. Unlike
 the sovereign in Regents of UC, UT did not attempt to avail
 itself of federal court jurisdiction, and, in fact, has repeat-
 edly made clear that it does not want to participate in this
 litigation. 5 It is immaterial that there are no claims
 against UT, or that UT is named an involuntary plaintiff
 rather than an involuntary defendant. The Eleventh
 Amendment serves to prevent “the indignity of subjecting
 a State to the coercive process of judicial tribunals” against
 its will. Seminole Tribe, 517 U.S. at 58. Accordingly,
 Rule 19(a)(2) cannot be used to drag an unwilling UT into
 federal court.




      5   Gensetix argues that “numerous appellate courts
 have confirmed” its reading of Regents of UC. Appellant’s
 Br. 43–44 (citing, e.g., California v. Atl. Richfield Co.,
 488 F.3d 112 (2d Cir. 2007); Oklahoma ex rel. Edmondson
 v. Magnolia Marine Transp. Co., 359 F.3d 1237 (10th Cir.
 2004)). But, as UT correctly points out, every case Gensetix
 relies on in support of this argument involves litigation in-
 itiated by a state as plaintiff, and a subsequent assertion of
 sovereign immunity to prevent removal. UT Br. 23–24.
Case: 19-1424    Document: 77      Page: 11    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE               11



      Gensetix fares no better in its attempt to distinguish
 the other cases relied upon by the district court in reaching
 the same conclusion. For example, in Thomas v. Bearings
 Corp., 50 F.3d 502 (8th Cir. 1995), the Eighth Circuit for-
 bade involuntary joinder of a state agency in a lawsuit by
 city residents against a company that had allegedly con-
 taminated their drinking water. The court held that the
 “Eleventh Amendment provides immunity from suit, not
 merely immunity from liability . . . . It may be circum-
 vented by waiver, abrogation, or a suit against state offi-
 cials, but federal courts cannot simply deem a state’s
 Eleventh Amendment defense inapplicable.” Id. at 506.
 The Eighth Circuit specifically noted that the Eleventh
 Amendment precludes involuntary joinder even if it in-
 volves later realignment of the state agency as a plaintiff.
 Id. at 502, 504 n.5. Gensetix argues that, in Thomas, the
 Eighth Circuit was concerned with subjecting the state
 agency to premature litigation, “strik[ing] at the very heart
 of the Eleventh Amendment by undermining the state’s as-
 serted autonomy in decision-making.” Appellant’s Br.
 44–45 (citations omitted). In Gensetix’s view, here, joining
 UT as an involuntary plaintiff does not undermine the
 state’s autonomy. But forcing UT to litigate against its will
 does exactly that.
     Gensetix also relies on Independent Wireless, 269
 U.S. 459 (1926), and Abbott Laboratories, 47 F.3d 1128
 (Fed. Cir. 1995), to argue that “equity and justice” require
 joinder of UT. See Appellant’s Br. 39–40. In Gensetix’s
 view, UT voluntarily granted an exclusive license to Gen-
 setix and this license includes “an implied obligation” to the
 use of UT’s name. Appellant’s Br. 40 (citing Indep. Wire-
 less, 269 U.S. at 469). Although Gensetix acknowledges
 that UT did not waive sovereign immunity, it nonetheless
 argues that UT willingly entered into the license agree-
 ment and must now abide by its terms. We disagree.
     When it comes to suits between private parties, Gen-
 setix is correct that a patentee who refuses to voluntarily
Case: 19-1424     Document: 77      Page: 12     Filed: 07/24/2020




 12             GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 join an infringement action initiated by its exclusive licen-
 see can ordinarily be joined as an involuntary plaintiff un-
 der Rule 19(a). See, e.g., Indep. Wireless, 269 U.S. 459
 (1926); Lone Star Silicon Innovations LLC v. Nanya Tech.
 Corp., 925 F.3d 1225, 1237 (Fed. Cir. 2019) (collecting
 cases). But we refuse to extend that principle to this case,
 which involves coercive joinder of a state sovereign. In-
 deed, none of the cases identified by Gensetix examined the
 interplay between Rule 19(a) and state sovereign immun-
 ity. Accordingly, it is of no moment that the license agree-
 ment requires initiation of an infringement suit by
 Gensetix or cooperation by UT in any infringement suit.
 Although UT willingly entered into the license agreement,
 so too, did Gensetix. It agreed to terms expressly stating
 that UT was not waiving its sovereign immunity, and
 terms that allow UT to initiate a suit on behalf of Gensetix,
 but not the other way around. As we explain above, in the
 absence of a state voluntarily availing itself of federal court
 jurisdiction, or an express waiver of sovereign immunity,
 Rule 19(a) must yield to the state’s assertion of sovereign
 immunity.
     In sum, neither Supreme Court case law, nor the deci-
 sions of this circuit or our sister circuits, support Gensetix’s
 arguments that, absent waiver, a sovereign may be joined
 as an involuntary plaintiff under Rule 19(a). Accordingly,
 we affirm the district court’s conclusion that UT may not
 be joined as an involuntary plaintiff. 6




      6  While I may not speak for our splintered majority
 on this point, I have some sympathy for Judge Newman’s
 views. Unfortunately, absent abrogation of Florida Pre-
 paid Postsecondary Education Expense Board v. College
 Savings Bank, 527 U.S. 627 (1999), which I suspect would
 be welcome by many, I remain of the view that involuntary
 joinder of UT as a plaintiff to this action is impermissible.
Case: 19-1424     Document: 77       Page: 13     Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                   13



         B. The District Court Abused Its Discretion
            In Concluding That This Case Must Be
                 Dismissed In UT’s Absence
      We next consider whether the district court properly
 concluded that this case cannot proceed in UT’s absence. A
 district court’s analysis under Rule 19(b) is a matter of re-
 gional circuit law. Univ. of Utah v. Max-Planck-Gesell-
 schaft zur Forderung der Wissenschaften E.V., 734 F.3d
 1315, 1320 (Fed. Cir. 2013). The Fifth Circuit reviews a
 district court’s decision to dismiss a suit pursuant to the
 Rule 19(b) inquiry for abuse of discretion. Hood v. City of
 Memphis, 570 F.3d 625, 628 (5th Cir. 2009). “Determining
 whether [a suit should be dismissed in the absence of a re-
 quired party] is a highly-practical, fact-based endeavor,
 and . . . a district court will ordinarily be in a better position
 to make a Rule 19 decision than a circuit court would be.”
 Id. (internal citations omitted). 7 “A district court abuses
 its discretion if it: (1) relies on clearly erroneous factual
 findings; (2) relies on erroneous conclusions of law; or
 (3) misapplies the law to the facts.” In re Volkswagen of
 Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc)). And,
 “[a] district court would necessarily abuse its discretion if



     7    Gensetix submits that we should review this issue
 de novo and argues that the district court committed legal
 error by (1) assuming that UT was indispensable even be-
 fore it conducted its factor-by-factor analysis, and (2) fail-
 ing to consider the equities. Appellant’s Br. 16–24. We
 reject this attempt to manufacture legal error based on out-
 of-context statements from the district court’s opin-
 ion. Gensetix cannot deny that the district court did, in
 fact, conduct a factor-by-factor Rule 19(b) analysis. Con-
 trary to Gensetix’s arguments, moreover, the district court
 did not fail to consider the equities in its Rule 19(b) analy-
 sis. This analysis is properly reviewed under an abuse of
 discretion standard.
Case: 19-1424    Document: 77      Page: 14     Filed: 07/24/2020




 14             GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 it based its ruling on an erroneous view of the law or on a
 clearly erroneous assessment of the evidence.” Highmark
 Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559,
 564 n.2 (2014).
     Rule 19(b) provides that, where joinder of a required
 party is not feasible, “the court must determine whether,
 in equity and good conscience, the action should proceed
 among the existing parties or should be dismissed.” Fed.
 R. Civ. P. 19(b). This inquiry involves consideration of four
 factors: (1) the extent to which a judgment rendered might
 prejudice the missing required party or the existing par-
 ties; (2) the extent to which any prejudice could be lessened
 or avoided (3) whether a judgment rendered in the required
 party’s absence would be adequate; and (4) “whether the
 plaintiff would have an adequate remedy if the action were
 dismissed for nonjoinder.” Id. On appeal, Gensetix argues
 that the district court abused its discretion by failing to
 meaningfully analyze each of the Rule 19(b) factors. 8 As
 explained below, we agree.




      8   UT and Baylor argue that Gensetix waived many
 of its arguments regarding the court’s Rule 19(b) analysis.
 Under Fifth Circuit case law, “an argument is not waived
 on appeal if the argument on the issue before the district
 court was sufficient to permit the district court to rule on
 it.” In re Liljeberg Enters., Inc., 304 F.3d 410, 427 n.29 (5th
 Cir. 2002). Gensetix’s arguments to the district court were
 sufficient. It is true, moreover, that a party cannot waive
 objection to a court’s failure to apply the correct legal
 standard to the question presented. Myco Indus., Inc. v.
 BlephEx, LLC, 955 F.3d 1, 11 (Fed. Cir. 2020) (citing
 United States v. Ali, 508 F.3d 136, 144 n.9 (3d Cir. 2007),
 and Brown v. Smith, 551 F.3d 424, 428 n.2 (6th Cir. 2008)).
 Accordingly, we conclude that Gensetix did not waive any
 arguments regarding the Rule 19(b) inquiry.
Case: 19-1424    Document: 77      Page: 15     Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                15



      The district court found that three out of the four
 Rule 19(b) factors weighed in favor of dismissing the case.
 As to the first factor—the extent to which a judgment ren-
 dered in UT’s absence might prejudice UT or the parties to
 the litigation—relying on our decision in A123 Systems,
 Inc. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010), the
 court found that “UT risks an invalidation of its patent
 without the opportunity to litigate.” Gensetix, 354 F. Supp.
 3d at 764. It concluded that it “must give sufficient weight
 to the prejudice to UT, which is absent from this suit based
 on a claim of sovereign immunity.’’ Id. (quoting A123,
 626 F.3d at 1221). Without any analysis of the second fac-
 tor, the court also found that it would not be able to lessen
 or avoid prejudice to UT. Id. (citing A123, 626 F.3d
 at 1222 n.1). As to the third factor, the court found that a
 judgment rendered without UT would be inadequate. Id.
 It noted Baylor’s argument that there is a risk of multiple
 suits against Baylor on the same patents. But, it nonethe-
 less “decline[d] to determine whether UT would be judi-
 cially estopped from later filing suit against [Baylor] for the
 purposes of this Rule 19(b) analysis.” Id. Finally, as to the
 fourth factor—whether Gensetix would have an adequate
 remedy if the action were dismissed for nonjoinder—the
 court found it “seemingly” weighed in favor of Gen-
 setix. Regardless, the court “refused to effectuate a rescue”
 by joining UT, noting that, “[w]hile this result may be
 harsh, it is an inherent risk for anyone who chooses to con-
 tract with a sovereign entity.” Id.
     The parties argue at length about the facts applicable
 to each factor, but we need not delve into each argument to
 assess the appropriateness of the district court’s analysis.
 We conclude that the district court abused its discretion by
 collapsing the multi-factorial Rule 19(b) inquiry into one
 dispositive fact: UT’s status as a sovereign. For example,
 in evaluating the prejudice to UT, the district court relied
 on our decision in A123 and concluded that it must give
 weight to the fact that the sovereign risked losing rights in
Case: 19-1424     Document: 77      Page: 16     Filed: 07/24/2020




 16              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 its patent without an opportunity to defend itself. Gen-
 setix, 354 F. Supp. 3d at 764. But in A123, we noted that
 the interests of the licensee and licensor were “overlap-
 ping” not “identical,” because the licensee had only a field-
 of-use license. A123, 626 F.3d at 1221. We concluded that
 this left open the possibility of the licensee advancing ar-
 guments during litigation that served its own interests but
 not that of the absent licensor. Id. Here, as Gensetix cor-
 rectly points out, it has a license in every field, and, as such,
 the parties’ interests in the validity of the patents-in-suit
 are identical. Appellant’s Br. 27. The prejudice to UT is
 minimal, or at least substantially mitigated, because, un-
 like the licensee in A123, Gensetix will adequately protect
 UT’s interests in the validity of the patents-in-suit.
      Likewise, the court dismissed the lack of an adequate
 remedy for Gensetix resulting from UT’s nonjoinder—i.e.,
 the fourth Rule 19(b) factor—as simply “an inherent risk
 for anyone who chooses to contract with a sovereign entity.”
 Id. That may be true, but this fact is more relevant to join-
 der under Rule 19(a) than it is to the Rule 19(b) analysis.
 Rather than cede control, once again, to UT’s claim of sov-
 ereign immunity, the district court should have given
 weight to the fact that Gensetix is without recourse to as-
 sert its patent rights because UT cannot be feasibly joined.
 Accordingly, we conclude that the district court abused its
 discretion in giving overwhelming weight to UT’s sovereign
 status to the exclusion of all other facts.
      Pimentel, on which UT relies, does not compel a differ-
 ent conclusion. Pimentel involved an interpleader action
 commenced to determine ownership of property allegedly
 stolen by Ferdinand Marcos, the former President of the
 Philippines. In concluding that the action should not have
 proceeded in the Republic of Philippines’ absence, the Su-
 preme Court noted that a sovereign’s immunity from suit
 is a “privilege [that] is much diminished if an important
 and consequential ruling affecting the sovereign’s substan-
 tial interest is determined, or at least assumed, by a federal
Case: 19-1424    Document: 77      Page: 17    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE               17



 court in the sovereign’s absence and over its objection.” Pi-
 mentel, 553 U.S. at 868 (emphasis added). The Court ex-
 plained that, “where sovereign immunity is asserted, and
 the claims of the sovereign are not frivolous, dismissal of
 the action must be ordered where there is a potential for
 injury to the interests of the absent sovereign.” Id. at 867
 (emphasis added). This seemingly broad language is best
 understood, however, within the specific facts of Pimentel.
 First, the case dealt with foreign sovereign immunity, not
 state sovereign immunity, and the Court placed some
 weight on the “[c]omity and dignity interests” at play. Id.
 at 869. No comity concerns exist here. Second, and more
 importantly, there was no dispute in Pimentel that the ab-
 sence of the Philippines in the interpleader suit would re-
 sult in its interests going unprotected. Id. at 863–64. By
 contrast, here, 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. Indeed, in the license
 agreement, UT required that it do so. Finally, in Pimentel,
 the claim was not extinguished for lack of an alternative
 forum, unlike here.
     In his dissent-in-part, Judge Taranto, respectfully,
 reads too much into Pimentel. We do not agree that the
 Court gave “controlling weight to the sovereign interest” in
 that case. In evaluating the first Rule 19(b) factor, the
 Court concluded that the district court and the Court of Ap-
 peals “gave insufficient weight to the likely prejudice to”
 the sovereign. Id. at 869. The Court nonetheless analyzed
 the remaining Rule 19(b) factors before concluding that the
 action must be dismissed. Rather than announcing a
 bright-line rule, the Court clarified that “Rule 19 cannot be
 applied in a vacuum, and it may require some preliminary
 assessment of the merits of certain claims.” Id. at 868. It
 also made clear that in conducting “the Rule 19(b) inquiry,
 a court must examine, to some extent, the claims presented
 and the interests likely to be asserted both by the joined
 parties and the absent entities or persons.” Id. (emphasis
Case: 19-1424    Document: 77      Page: 18     Filed: 07/24/2020




 18             GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 added). The deciding factor in Pimentel was the court giv-
 ing insufficient, rather than controlling, weight to the
 likely prejudice to the sovereign. 9 We conclude that a
 proper application of Pimentel mandates consideration of
 the claims presented and the interests asserted by UT,
 Gensetix, and Baylor—an analysis the district court failed
 to properly engage in.
     Beyond giving controlling weight to UT’s status as a
 sovereign in its analysis of several of the applicable factors,
 in concluding that a judgment rendered in UT’s absence
 would be inadequate, the district court also refused to
 properly analyze the third Rule 19(b) factor. In refusing to
 consider whether UT would be barred from filing suit
 against Baylor, such that there would be a risk of multiple
 suits, the court ignored its own express finding that, under
 the terms of the agreement, UT’s right to sue is secondary,
 and it cannot initiate a lawsuit against Baylor now that
 Gensetix has done so. Therefore, allowing the litigation to
 proceed in UT’s absence does not pose a substantial risk of
 multiple suits.




      9   We are likewise unpersuaded by that opinion’s ref-
 erence to decisions from two of our sister circuits in support
 of the assertion that a court must give “decisive weight” to
 a state’s sovereign interest in conducting this analysis. See
 Taranto Op. at 3–4 (citing, e.g., Kickapoo Tribe of Indians
 v. Babbitt, 43 F.3d 1491, 1498 (D.C. Cir. 1995) and Dine
 Citizens Against Ruining Our Env’t v. Bureau of Indian Af-
 fairs, 932 F.3d 843, 858 (9th Cir. 2019)). The cited cases
 either pre-date Pimentel or do not interpret it. And, these
 cases do not present a situation, where, like here, one of the
 parties to the litigation has an interest in the subject mat-
 ter of the litigation that is identical to the absent sover-
 eign’s interest, thereby mitigating the prejudice to the
 sovereign.
Case: 19-1424    Document: 77      Page: 19    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE               19



     The proper analysis of the Rule 19(b) factors is far more
 nuanced than the district court’s. As to the prejudice to
 UT, the interests of UT and Gensetix are aligned. Despite
 UT’s sovereign status, given Gensetix’s identical interest
 in the validity of the patents-in-suit, any prejudice to UT is
 greatly reduced. There is also no risk of multiple suits be-
 cause, under the express terms of the parties’ agreement,
 UT may not sue Baylor once Gensetix has commenced liti-
 gation. And, as an exclusive licensee with less than all sub-
 stantial rights in the patents-in-suit, Gensetix cannot
 enforce its patent rights without the court allowing the suit
 to proceed in UT’s absence. Given this clear factual record,
 we conclude that it was an abuse of discretion to find that
 the suit may not proceed in UT’s absence. Accordingly, we
 reverse the district court on this point.
                       III. CONCLUSION
      We have considered the parties’ remaining arguments
 and find them unpersuasive. For the foregoing reasons, we
 affirm-in-part, reverse-in-part, and remand for proceed-
 ings consistent with this opinion.
   AFFIRMED-IN-PART, REVERSED-IN-PART, AND
                 REMANDED
                            COSTS
     Each party to bear its own costs.
Case: 19-1424   Document: 77      Page: 20   Filed: 07/24/2020




    United States Court of Appeals
        for the Federal Circuit
                  ______________________

                    GENSETIX, INC.,
                    Plaintiff-Appellant

                             v.

  THE BOARD OF REGENTS OF THE UNIVERSITY
             OF TEXAS SYSTEM,
               Plaintiff-Appellee

                             v.

    BAYLOR COLLEGE OF MEDICINE, DIAKONOS
      RESEARCH LTD, WILLIAM K. DECKER,
               Defendants-Appellees
              ______________________

                        2019-1424
                  ______________________

    Appeal from the United States District Court for the
 Southern District of Texas in No. 4:17-cv-01025, Judge An-
 drew S. Hanen.
                  ______________________
 NEWMAN, Circuit Judge, concurring in part, dissenting in
 part, concurring in the judgment.
     The panel majority holds that the Board of Regents of
 the University of Texas System (“the University” or “UT”)
 has Eleventh Amendment immunity that shields it from
 involuntary joinder in this infringement suit against Bay-
 lor College of Medicine and others. Respectfully, I disa-
 gree.
Case: 19-1424    Document: 77     Page: 21    Filed: 07/24/2020




 2              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




     The University is the assignee of the patents at issue,
 of which William K. Decker et al. are inventors. The Uni-
 versity licensed the patents to Gensetix, Inc. for commer-
 cial development, with significant payments to the
 University. The “Patent And Technology License Agree-
 ment” grants Gensetix the exclusive right to make, use,
 and sell the patented subject matter for the life of the pa-
 tents, and requires Gensetix to enforce the patents against
 any infringer. However, when Gensetix sought cooperation
 in this infringement suit, the University refused to join or
 be joined as a party, and invoked the Eleventh Amendment
 to bar involuntary joinder, thus preventing enforcement of
 the patents. The district court deemed the University to be
 a necessary party, and dismissed Gensetix’s infringement
 suit. 1
     I respectfully dissent from the court’s holding that the
 University has Eleventh Amendment immunity from join-
 der in this litigation. However, this infringement suit may
 proceed without the University as a party, in conformity
 with Federal Rule of Civil Procedure 19(b); thus I concur in
 the court’s judgment.
     The Eleventh Amendment does not insulate a
     State from its contractual obligations
     Just as the State must pay its bills, it also must comply
 with its contracts. The purpose of the Eleventh Amend-
 ment is to shield a State’s sovereign functions of govern-
 ance from judicial oversight in federal courts. See William
 A. Fletcher, The Eleventh Amendment: Unfinished Busi-
 ness, 75 Notre Dame L. Rev. 843, 854 (2000). When a State
 agency enters into commercial transactions, it is subject to
 the rules of commerce. As Justice Breyer explained in Col-
 lege Savings Bank v. Florida Prepaid Postsecondary



     1   Gensetix, Inc. v. Baylor Coll. of Med., 354 F. Supp.
 3d 759 (S.D. Tex. 2018) (“Dist. Ct. Op.”).
Case: 19-1424    Document: 77      Page: 22    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                3



 Education Expense Board, 527 U.S. 666 (1999): “When a
 State engages in ordinary commercial ventures, it acts like
 a private person, outside the area of its ‘core’ responsibili-
 ties, and in a way unlikely to prove essential to the fulfill-
 ment of a basic governmental obligation.” Id. at 694
 (Breyer, J., dissenting).
      The Eleventh Amendment is not an authorization
 whereby State agencies may violate their commercial and
 contractual obligations. Its purpose is not to absolutely
 “prevent states from being compelled to litigate,” as the dis-
 trict court stated. Dist. Ct. Op. at 766 (internal quotation
 marks omitted). The Supreme Court expressed this view
 in Ex parte Young, 209 U.S. 123 (1908), holding that even
 if the State is immune from suit on a particular issue, its
 officials may not be immune. Id. at 167. As a recent illus-
 tration, in Pennington Seed, Inc. v. Produce Exchange No.
 299, 457 F.3d 1334 (Fed. Cir. 2006), this court explained
 that although the University of Arkansas may assert Elev-
 enth Amendment immunity from suit for patent infringe-
 ment, that University’s officials can be sued. Id. at 1342.
     Here, the University of Texas obtained United States
 patents on inventions of the University’s scientists, and en-
 tered into an exclusive License Agreement with Gensetix
 for development and commercialization. 2 Paragraph 7.1 of
 the License Agreement provides that Gensetix “must en-
 force any patent exclusively licensed hereunder against in-
 fringement by third parties,” and that if Gensetix does not
 do so within 6 months of learning of infringement, the Uni-
 versity has the right to sue the infringer(s) and retain any


     2    “Section 3.1 of the License Agreement states that
 Gensetix has the ‘exclusive’ right to manufacture, use, im-
 port, and sell the licensed product within the ‘licensed ter-
 ritory’ (L.A. § 2.5: ‘licensed territory means worldwide’) for
 use within the ‘licensed field’ (L.A. § 2.2: ‘licensed field
 means all fields of use.’).” Dist. Ct. Op. at 770.
Case: 19-1424    Document: 77      Page: 23    Filed: 07/24/2020




 4              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 recovery. License Agreement at 13–14. And Paragraph 7.2
 of the License Agreement states that in any infringement
 action “the parties agree to cooperate fully with each
 other.” License Agreement at 14.
     The University now refuses such cooperation, by refus-
 ing to be named as a party to the suit, thereby preventing
 enforcement of the patents—although the License Agree-
 ment requires Gensetix to enforce the patents. The Uni-
 versity not only violates its agreement to “cooperate fully,”
 but also deprives its licensee of the agreed upon exclusivity.
 The University achieves this result by invoking the Elev-
 enth Amendment.
     This is not a matter of shielding the State from the “in-
 dignity” of judicial process, as in Seminole Tribe of Florida
 v. Florida, 517 U.S. 44, 58 (1996). When a State enters into
 commerce, it accedes to the rules of commerce. See White
 v. Massachusetts Council of Const. Employers, Inc., 460
 U.S. 204, 207 (1983) (“There is no indication of a constitu-
 tional plan to limit the ability of the States themselves to
 operate freely in the free market.” (quoting Reeves, Inc. v.
 Stake, 447 U.S. 429, 436–47 (1980))).
     I do not share the majority’s conclusion that the Elev-
 enth Amendment shields the University from compliance
 with its contractual obligation to “cooperate fully” with its
 exclusive licensee, Gensetix, in enforcing these patents
 against infringers. 3



     3   The Supreme Court recently reaffirmed “a princi-
 ple as old as the Nation itself: The Government should
 honor its obligations. Soon after ratification, Alexander
 Hamilton stressed this insight as a cornerstone of fiscal
 policy. ‘States,’ he wrote, ‘who observe their engage-
 ments . . . are respected and trusted: while the reverse is
 the fate of those . . . who pursue an opposite conduct.’ Cen-
 turies later, this Court’s case law still concurs.” Maine
Case: 19-1424    Document: 77      Page: 24    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                 5



     This infringement suit may proceed under
     Rule 19(b) without joinder of the University
     The district court held that the University, as patent
 assignee, is a necessary party to this infringement suit
 brought by its exclusive licensee. If the assignee is indeed
 a necessary party, in most situations it can be joined as a
 voluntary or involuntary party. However, if joinder is not
 available, the question is whether it is an indispensable
 party. Dainippon Screen Mfg. Co. v. CFMT, Inc., 142 F.3d
 1266, 1272 (Fed. Cir. 1998).
     The question of whether and when a licensee may sue
 infringers in its own name was elaborated in Waterman v.
 Mackenzie, 138 U.S. 252 (1891); the Court stated:
     The patentee or his assigns may, by instrument in
     writing, assign, grant, and convey, either (1) the
     whole patent, comprising the exclusive right to
     make, use, and vend the invention throughout the
     United States; or (2) an undivided part or share of
     that exclusive right; or (3) the exclusive right under
     the patent within and throughout a specified part
     of the United States. Id. § 4898. A transfer of ei-
     ther of these three kinds of interests is an assign-
     ment, properly speaking, and vests in the assignee
     a title in so much of the patent itself, with a right
     to sue infringers. In the second case, jointly with
     the assignor. In the first and third cases, in the
     name of the assignee alone.
 Id. at 255. Following the Court’s holding in Waterman, a
 conveying of the “whole patent, comprising the exclusive


 Community Health Options v. United States, 140 S. Ct.
 1308, 1331 (2020) (ellipses in original) (quoting Report Rel-
 ative to a Provision for the Support of Public Credit (Jan.
 9, 1790), in 6 Papers of Alexander Hamilton 68 (H. Syrett
 & J. Cooke eds. 1962) (internal citations omitted)).
Case: 19-1424    Document: 77      Page: 25     Filed: 07/24/2020




 6              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 right to make, use, and vend the invention throughout the
 United States” is tantamount to an assignment, and vests
 in the assignee “a right to sue infringers . . . in the name of
 the assignee alone.” Id. However, the district court relied
 on Alfred E. Mann Found. for Sci. Research v. Cochlear
 Corp., 604 F.3d 1354 (Fed. Cir. 2010) to support holding
 that the University’s default right to sue infringers if Gen-
 setix did not do so, was a right so substantial that it de-
 feated Gensetix’s right to sue as exclusive licensee. Dist.
 Ct. Op. at 769–71.
      Here, the issue is resolved not only by Federal Rule
 19(b), but also by legal and equitable theories of property
 rights, such as the constructive trust described in Inde-
 pendent Wireless Telegraph Co. v. Radio Corporation of
 America, 269 U.S. 459, 468 (1926) (patent owner holds title
 in trust for exclusive licensee); or determining whether the
 license is “by way of mortgage and liable to be defeated by
 non-performance of a condition subsequent,” as described
 in Vaupel Textilmaschinen KG v. Meccanica Euro Italia
 SPA, 944 F.2d 870, 875 (Fed. Cir. 1991) (holding that “the
 termination provisions in the agreements were entirely
 consistent with an assignment.”).
      Applying the principles of precedent to the Gensetix-
 University License Agreement, the default provision for su-
 ing infringers is consistent with the assignment of exclu-
 sive patent rights, whereby Gensetix may sue infringers in
 its own name when, as here, the University declines to join
 or be joined.
     I join the court’s ruling that this litigation may proceed
 without the University as a party, and concur in the appli-
 cation of Federal Rule 19(b).
Case: 19-1424    Document: 77      Page: 26    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                7



     The University’s rights of scientific publica-
     tion, research, and teaching are not patent
     rights
     In the district court, Baylor had moved for dismissal on
 the ground that “the only allegations of patent infringe-
 ment in the Complaint were allegations of research activi-
 ties.” University Br. 5 n.1. The district court did not decide
 this motion, instead dismissing the action on the Eleventh
 Amendment ground.
     The License Agreement states that the University has
 the right to “[p]ublish the general scientific findings from
 research,” to use the subject matter for “academically-re-
 lated purposes” such as “research, teaching, [and] patient
 care,” and to transfer to “academic or research institutions
 for non-commercial research use.” License Agreement at 5
 (¶¶ 3.1(a), (b), (c)). The scientific/technologic information
 in patents is part of the balance in the Constitution’s pro-
 vision “To promote the Progress of Science and useful
 Arts,” Art. I, § 8, cl. 8. As explained by Justice Story in
 Sawin v. Guild, 21 F. Cas. 554, 555 (C.C.D. Mass. 1813),
 this balance distinguishes “the making with an intent to
 use for profit, and not for the mere purpose of philosophical
 experiment, or to ascertain the verity and exactness of the
 specification.” This principle has supported centuries of in-
 novation.
      The License Agreement’s acknowledgement of scien-
 tific knowledge is not a reservation of patent rights, and
 was inappropriately held by the district court to comprise
 substantial retained patent rights and thus to support
 Eleventh Amendment immunity.
                         CONCLUSION
     Although I do not agree with the court’s holding that
 the University has Eleventh Amendment immunity from
 participation in this litigation, I do agree that this action
 may proceed in the absence of the University as a party.
Case: 19-1424    Document: 77    Page: 27    Filed: 07/24/2020




 8              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 Thus I join in holding that this infringement suit may pro-
 ceed without joinder of the University, and in remanding
 for further proceedings.
Case: 19-1424   Document: 77      Page: 28   Filed: 07/24/2020




    United States Court of Appeals
        for the Federal Circuit
                  ______________________

                    GENSETIX, INC.,
                    Plaintiff-Appellant

                             v.

  THE BOARD OF REGENTS OF THE UNIVERSITY
             OF TEXAS SYSTEM,
               Plaintiff-Appellee

                             v.

    BAYLOR COLLEGE OF MEDICINE, DIAKONOS
      RESEARCH LTD, WILLIAM K. DECKER,
               Defendants-Appellees
              ______________________

                        2019-1424
                  ______________________

    Appeal from the United States District Court for the
 Southern District of Texas in No. 4:17-cv-01025, Judge An-
 drew S. Hanen.
                  ______________________

 TARANTO, Circuit Judge, concurring in part and dissenting
 in part.
     I join Parts I and II-A of Judge O’Malley’s opinion
 except for footnote 6. Those portions of the opinion
 conclude that the constitutionally preserved protection of
 state sovereign immunity bars a coerced joinder of the
 University of Texas (UT), which is an arm of the State of
Case: 19-1424    Document: 77       Page: 29    Filed: 07/24/2020




 2              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 Texas, as an involuntary plaintiff in this federal action,
 which Gensetix, Inc., as UT’s exclusive licensee, initiated
 to assert infringement of UT-owned patents. I agree that
 joinder of UT under Federal Rule of Civil Procedure 19(a),
 even though UT is a “required” party under that provision,
 would improperly subject UT “to the coercive process of
 judicial tribunals at the instance of private parties.”
 Seminole Tribe of Florida v. Florida, 517 U.S. 44, 58 (1996);
 see Franchise Tax Board of California v. Hyatt, 139 S. Ct.
 1485, 1497 (2019).
      I part company with Judge O’Malley’s opinion in its
 conclusion, in Part II-B, that the district court erred in
 ruling that the infringement action should not proceed
 under Rule 19(b) without the presence of required-party
 UT. For that reason, I dissent from the majority’s reversal
 of the district court’s dismissal of the action. The Supreme
 Court’s decision in Republic of Philippines v. Pimentel, 553
 U.S. 851 (2008), explains that when a sovereign entity is a
 required party under Rule 19(a), is protected against
 joinder by sovereign immunity, and makes a non-frivolous
 assertion that it will be prejudiced by a suit proceeding in
 its absence, a district court is generally obligated to dismiss
 the suit under Rule 19(b). Because UT made such an
 assertion, I see no abuse of discretion in the district court’s
 dismissal of this action, which I would affirm.
                                I
     In Pimentel, the Supreme Court considered whether a
 federal-court action may proceed, under Rule 19(b),
 without the presence of a sovereign entity that was a
 “required” party under Rule 19(a) but that could not be
 joined because of sovereign immunity. 553 U.S. at 863.
 The Court recognized that it “ha[d] not considered a case
 posing the precise question presented,” but it noted that
 there were “some authorities involving the intersection of
 joinder and the governmental immunity of the United
 States.” Id. at 866. The “analysis of the joinder issue in
Case: 19-1424     Document: 77      Page: 30    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                  3



 those cases”—Mine Safety Appliances Co. v. Forrestal, 326
 U.S. 371 (1945) and Minnesota v. United States, 305 U.S.
 382 (1939)—“was somewhat perfunctory,” the Court wrote,
 “but the holdings were clear: A case may not proceed when
 a required-entity sovereign is not amenable to suit.”
 Pimentel, 553 U.S. at 866–67 (emphasis added).
     Based on those holdings, the Court in Pimentel stated
 its conclusion in the following bright-line-rule terms:
 “where sovereign immunity is asserted, and the claims of
 the sovereign are not frivolous, dismissal of the action must
 be ordered where there is a potential for injury to the
 interests of the absent sovereign.” Id. at 867 (emphasis
 added). The Court stated that rule, as it stated its
 summary of the earlier holdings, in terms of an immunity-
 protected “sovereign” generally, not only a foreign
 sovereign or the United States. Moreover, the Court’s
 statement that “dismissal of the action must be ordered”
 lacks a qualifier allowing for other Rule 19(b) factors to
 outweigh the protection of a sovereign’s non-frivolous
 interest. Although the Court discussed such other factors,
 the discussion gives controlling weight to the sovereign
 interest. Id. at 869–72.
     Consistent with Pimentel, at least two federal courts of
 appeals have mandated, or at least approved, giving
 decisive weight under Rule 19(b) to avoiding impairment of
 a sovereign interest in the contexts of sovereign immunity
 of States and Indian tribes. In a case involving state
 sovereign immunity, the D.C. Circuit concluded, before
 Pimentel, that “[w]hile Rule 19(b) sets forth four non-
 exclusive factors . . . ‘there is very little room for balancing
 of other factors’ set out in Rule 19(b) where a necessary
 party under Rule 19(a) is immune from suit because
 immunity may be viewed as one of those interests
 ‘compelling by themselves.’” Kickapoo Tribe of Indians v.
 Babbitt, 43 F.3d 1491, 1496 (D.C. Cir. 1995) (quoting
 Wichita & Affiliated Tribes of Oklahoma v. Hodel, 788 F.2d
 765, 777 n.13 (D.C. Cir. 1986)). In a case involving tribal
Case: 19-1424    Document: 77       Page: 31   Filed: 07/24/2020




 4              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 sovereign immunity, the Ninth Circuit observed, before
 Pimentel, that “some courts have held that sovereign
 immunity forecloses in favor of tribes the entire balancing
 process under Rule 19(b).” Am. Greyhound Racing, Inc. v.
 Hull, 305 F.3d 1015, 1025 (9th Cir. 2002). More recently,
 the Ninth Circuit reiterated that “there is a ‘wall of circuit
 authority’ in favor of dismissing actions in which a
 necessary party cannot be joined due to tribal sovereign
 immunity—‘virtually all the cases to consider the question
 appear to dismiss under Rule 19, regardless of whether [an
 alternate] remedy is available, if the absent parties are
 Indian tribes invested with sovereign immunity.’” Dine
 Citizens Against Ruining Our Environment v. Bureau of
 Indian Affairs, 932 F.3d 843, 857 (9th Cir. 2019) (citing
 White v. University of California, 765 F.3d 1010, 1028 (9th
 Cir. 2014)).
      I see neither authority nor a persuasive basis for
 excluding state sovereign immunity from the Pimentel rule,
 which, as noted, the Supreme Court stated in terms
 covering immunity-protected sovereigns generally. In any
 event, and what suffices for the present case, I see no
 authority or good reason for prohibiting a trial court from
 giving controlling effect to the protection of a state
 sovereign’s non-frivolous interest from impairment by
 litigation in its absence when the state sovereign is a
 required party under Rule 19(a).
                               II
     Whether a suit can proceed without an absent,
 required party is a “matter of regional circuit law.”
 University of Utah v. Max-Planck-Gesellschaft zur
 Forderung der Wissenschaften E.V., 734 F.3d 1315, 1320
 (Fed. Cir. 2013). The Fifth Circuit reviews such a
 determination for an abuse of discretion. See Acevedo v.
 Allsup’s Convenience Stores, Inc., 600 F.3d 516, 520 (5th
 Cir. 2010) (“Rulings on the joinder of parties are reviewed
 for abuse of discretion.”). A district court “abuses its
Case: 19-1424    Document: 77      Page: 32     Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE                 5



 discretion when it makes ‘a clear error of judgment in
 weighing relevant factors or in basing its decision on an
 error of law or on clearly erroneous factual findings.’”
 Thermolife International LLC v. GNC Corporation, 922
 F.3d 1347, 1356 (Fed. Cir. 2019) (citing Bayer CropScience
 AG v. Dow AgroSciences LLC, 851 F.3d 1302, 1306 (Fed.
 Cir. 2017)).
      Here, it suffices, to find no abuse of discretion, that UT
 has made a non-frivolous claim that its interests as patent
 owner could easily be harmed—by, e.g., narrow-scope
 rulings or invalidation—if the suit proceeds in its absence.
 See Brief for University of Texas at 32–33 (“UT would risk
 an invalidation of its patents without the opportunity to
 litigate”); id. at 34 (“In its filing below, UT pointed out the
 invalidation risk as well as the risk that the ‘construction
 of those claims [] will impact the value of the patents.’”
 (citing J.A. 628)).
      It is not disputed on appeal that UT retained
 substantial rights in the asserted patents, as the district
 court concluded. Gensetix, Inc. v. Baylor College of
 Medicine, 354 F. Supp. 3d 759, 768–71 (S.D. Tex. 2018).
 The district court noted that “UT retains a broad right to
 sue and control litigation”; that UT “retained the right to
 publish general findings, use licensed subject matter for
 research, teaching, or other academic purposes, and
 transfer rights to other research institutions for non-
 commercial research use”; and that Gensetix’s rights “are
 subject to termination provisions.”         Id. at 770–71.
 Moreover, the district court observed, “UT and Gensetix
 share a financial interest in litigation because if Gensetix
 initiates an infringement suit, both entities are entitled to
 recovery.” Id. at 771. UT thus has a substantial interest
 in maintaining the value of the patents.
     It is far from frivolous to assert that UT’s interest could
 be impaired by an invalidity ruling or a narrow claim
 construction. The doctrines of claim and issue preclusion
Case: 19-1424    Document: 77      Page: 33    Filed: 07/24/2020




 6              GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE




 might prevent UT from relitigating such adverse rulings
 made in this suit, given that the UT-Gensetix license
 agreement designates Gensetix as UT’s representative in
 infringement litigation, J.A. 314–15. See Restatement
 (Second) of Judgments § 41 (a “person who is not a party to
 an action but who is represented by a party is bound by and
 entitled to the benefits of judgment as though he were a
 party”). In any event, a ruling that the patents’ claims are
 invalid or are narrow in scope would be harmful at least as
 adverse precedent. In A123 Systems, Inc. v. Hydro-Quebec,
 another case involving UT, we relied on Pimentel and
 affirmed the district court’s conclusion that “were it to
 reinstate the action and declare the patents invalid, UT
 would lose all rights in its patents despite the fact that it
 had no opportunity to defend its interests in the litigation.”
 626 F.3d 1213, 1221 (Fed. Cir. 2010). Accordingly, we were
 obligated to “give sufficient weight to the prejudice to UT.”
 Id. The same is true here.
       This conclusion suffices to affirm the district court’s
 dismissal of the present action as not an abuse of
 discretion. I have no reason to doubt that this result leaves
 Gensetix without any forum to press the infringement
 claims it has presented in this action. (Whether Gensetix
 may sue UT for breach of contract is a separate matter.)
 But in Pimentel, the Court expressly noted that
 “[d]ismissal under Rule 19(b) will mean, in some instances,
 that plaintiffs will be left without a forum for definitive
 resolution of their claims” and that such a “result is
 contemplated under the doctrine of foreign sovereign
 immunity.” 553 U.S. at 872; see also Wichita & Affiliated
 Tribes, 788 F.2d at 777 (stating that “dismissing an action
 where there is no alternative forum” is “less troublesome”
 when dismissal is compelled by sovereign immunity
 because the loss of forum results not from “some procedural
 defect such as venue” but from “the fact that society has
 consciously opted to shield [sovereigns] from suit without
 . . . consent”). More generally, the Supreme Court’s state
Case: 19-1424    Document: 77     Page: 34    Filed: 07/24/2020




 GENSETIX, INC. v. BAYLOR COLLEGE OF MEDICINE               7



 sovereign immunity jurisprudence contemplates that
 patent owners may be left without a remedy when States
 are involved. See Allen v. Cooper, 140 S. Ct. 994, 1001
 (2020).
     Because UT made a non-frivolous assertion that it will
 be harmed if this suit proceeds, I would hold that the
 district court did not abuse its discretion by dismissing the
 suit. I respectfully dissent from the judgment of the court
 reversing the district court’s decision.
