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January 22, 2008

Begging Equity

Biomedical Patent Management is begging the Supreme Court to waive patent sovereign immunity in the cause of fairness. But fairness matters not a whit when pitting the state's self-interest against anything else. The state looks after itself; citizens are just cows to be milked. Patent infringement impunity is entitled under sovereign immunity.

The appeals court pitched the case under the Eleventh Amendment of the Constitution, agreeing with the district court. The basis was that there were two different lawsuits.

In petition for a writ of certiorari, Biomedical raises two questions.

1. Whether a state’s waiver of Eleventh Amendment immunity in one action extends to a subsequent action involving the same parties and the same underlying transaction or occurrence.

2. Whether a state waives its Eleventh Amendment immunity in patent actions by regularly andvoluntarily invoking federal jurisdiction to enforce its own patent rights.

The petition maps the territory of one-sidedness.

While they embrace federal jurisdiction when it helps them to enhance their patent revenue streams, states simultaneously avoid federal jurisdiction when they themselves are faced with claims of patent infringement; in those circumstances, they assert sovereign immunity under the Eleventh Amendment. Although state officials acknowledge that this asymmetry is unfair—and although it distorts the market for inventions—they contend that the jurisprudence of sovereign immunity entitles them to the risk-free windfall of suing without being sued.

While California zealously enforces its own patents in federal court, it resists answering charges that it has infringed others’ patents, instead asserting sovereign immunity under the Eleventh Amendment. Since 1987, the state has invoked sovereign immunity to obtain dismissal of at least six federal patent actions.

Case law backdrop -

The sovereign immunity of a state “is a personal privilege which it may waive at pleasure.” Clark v. Barnard, 108 U.S. 436, 447 (1883). The privilege is waived “where a state voluntarily become[s] a party to a cause, and submits its rights for judicial determination.” Gunter v. Atl. Coast Line R.R. Co., 200 U.S. 273, 284 (1906). Once the privilege is waived, it is lost, as “the immunity of sovereignty from suit without its consent cannot be carried so far as to permit [a state] to reverse the action invoked by it and to come in and go out of court at its will, the other party having no right of resistance to either step.” Porto Rico v. Ramos, 232 U.S. 627, 632 (1914).

This Court last addressed the waiver of sovereign immunity in Lapides v. Board of Regents of the University System of Georgia, 535 U.S. 613 (2002). In Lapides, the Court held that a state’s voluntary removal of an action to federal court is “sufficient to waive the State’s otherwise valid objection to litigation of a matter * * * in a federal forum.” Id. at 624. The Court recognized that “[i]n large part the rule governing voluntary invocations of federal jurisdiction has rested upon the problems of inconsistency and unfairness that a contrary rule of law would create.” Id. at 622.

The plea -

As other courts have recognized, these “problems of inconsistency and unfairness” exist when a state waives its immunity in one case and then attempts to assert immunity in a case involving the same parties and the same underlying transaction or occurrence. By adopting a contrary position, the Federal Circuit abandoned the guidance of Lapides and added further confusion to whether a state must be deemed to have waived immunity in these circumstances. This Court should grant certiorari to settle the issue.

But it won't.

Posted by Patent Hawk at January 22, 2008 5:09 PM | The Patent System


Patent Hawk,

I wish the counsel for BMPC luck on this petition for cert to SCOTUS. But I'm with you, it has about a "snow ball's chance in hell" of being accepted unless SCOTUS asks the US Solicitor General whether the petition should be granted and the US Solicitor General agrees. And that has a "slim and none" chance of happening.

Posted by: EG at January 23, 2008 5:31 AM