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A123 Sys., Inc. v. Hydro-Quebec, 10-1059

Suit seeking declaration of noninfringement and invalidity of patents related to lithium based cathode materials dismissed

A123 Sys., Inc. v. Hydro-Quebec, 10-1059, concerned a challenge to the district court's denial of plaintiff's motion to reopen and dismissal of the declaratory judgment action, in plaintiff's suit seeking a declaration of noninfringement and invalidity of two patents related to a genus of lithium based cathode materials.


In affirming the judgment, the court held that, because the defendant had acquired less than all substantial rights in the patents in suit, University of Texas (UT) is a necessary party to plaintiff's declaratory judgment action.  The court also held that 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, and absent such a waiver, UT cannot be joined.  And lastly, because three of the four Rule 19(b) factors weigh in favor of holding UT to be an indispensable party, UT was not only a necessary party, but also and indispensable party, making dismissal appropriate.

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