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University of Florida Research Foundation v. Medtronic

2016 WL 3869877 (2016)

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University of Florida Research Foundation v. Medtronic

United States District Court for the Northern District of Florida

2016 WL 3869877 (2016)

Facts

The University of Florida Research Foundation (foundation) (plaintiff) was an arm of the University of Florida, a state university. The foundation existed for the purpose of licensing the patents of university employees and collecting royalties from those licenses. The foundation’s activities were broadly controlled by the university’s board of trustees. The foundation sued Medtronic PLC (defendant) in Florida state court for breach of a license agreement. Medtronic filed a counterclaim seeking a declaratory judgment to the effect that Medtronic had not infringed the patent on which the license agreement was based. Medtronic also removed the action to federal court based, in part, on 28 U.S.C. § 1454, which provided for the removal of civil actions in which any party asserted a claim for relief arising under federal patent law. The foundation filed a motion to remand, asserting, among other things, that the foundation was immune from suit in federal court under the Eleventh Amendment to the United States Constitution. Medtronic argued that the foundation had waived any Eleventh Amendment immunity because the counterclaim was compulsory, and the state court did not have jurisdiction over it pursuant to 28 U.S.C. §1338.

Rule of Law

Issue

Holding and Reasoning (Walker, J.)

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