California Should Not be Immune from Charges of Patent Infringement (But it is Immune)

PatentLawPic160BPMC v. California Department of Health (on petition for certiorari). [Read the Petition]

States generally support strong patent rights. Why? Because States are free to enforce their patent rights yet are generally immune from suit for infringing patents owned by others. 

The Eleventh Amendment – ratified in 1795 – provides immunity to State governments from suits by “Citizens of another State … [or] any Foreign State.” The US Supreme Court has expanded the literal reading of the amendment — holding that state immunity broadly extends to almost all lawsuits brought against a state.

A State may, of course, waive its immunity.  A classic example of waiver occurs when a state files a patent infringement lawsuit.  After filing the lawsuit, the State cannot claim immunity against related counterclaims filed by a defendant. 

The facts of this case are quite simple: Healthcare Giant Kaiser filed a declaratory judgment action against the patent holder BPMC back in 1997. The State of California intervened in that case in support of Kaiser’s position.  The DJ action was eventually dismissed for improper venue. Almost a decade later, BPMC filed an identical (mirror image) infringement action against the State asserting the identical patent and issues and in the same venue as the 1997 action.

The issue then is whether California’s original waiver of immunity also applies to this second – seemingly identical case.

On appeal, the CAFC narrowly construed California’s waiver of immunity to be limited to only the same action. The court noted precedent that the waiver would apply if BPMC had been able to file its case as a revival of the original action an “numbered as that cause of action.”

The appellate panel also rejected BPMC’s argument that the DOH should be judicially estopped from changing its position in this litigation. According to the court, the about-face was excusable because of an intervening change in the law of immunity.  In particular, during the interim, the Supreme Court decided Florida Prepaid. That case held that Congress could not legislatively eliminate a State’s sovereign immunity from patent infringement claims without showing cause under the 14th amendment.

In its petition for certiorari, BPMC focuses on the issue of waiver due to litigation conduct. The patentee argues that its case is particularly special — because of past waiver in the same transaction. In addition, however, the patentee argues that some states – such as California – have become such major market participants in patent litigation that it would be unjust to allow immunity to continue:

California’s effort to invoke sovereign immunity selectively in this case is part of a larger scheme to use the federal courts as both a sword and a shield. California embraces federal patent jurisdiction when it seeks to benefit but avoids that jurisdiction when it faces liability. Through its frequent voluntary invocation of federal patent jurisdiction, however, California has unambiguously demonstrated that it is generally amenable to federal jurisdiction in these matters and has thereby waived its Eleventh Amendment immunity.

Although not likely, BPMC has a better than average chance at certiorari.  It is a fundamental constitutional question with a circuit split and changed business circumstances (States are now major patent players).  Another plus is that noted Supreme Court specialist Andy Pincus is on the brief and would likely argue for BPMC. 


83 thoughts on “California Should Not be Immune from Charges of Patent Infringement (But it is Immune)

  1. 83

    Mr. Slonecker,

    I understand that it’s pretty common for a respondent not to file a responsive brief. The court will often deny cert. without a response, so the respondent can save time and money. The court might request a response, and they will do that before granting cert. So, it can be pretty reasonable for a respondent to be a no-show.

  2. 82

    Mr. Dhuey,

    Thank you for the information. I would, of course, be surprised if the state does not file a response. After all, how many colleagues can resist the temptation to say they have prepared a brief pending before the Supreme Court?

    Assuming a brief is filed, I would think it would give you and your associates an excellent opportunity to better hone your arguments for that 5th “vote” from the court.

  3. 81

    Mr. Slonecker, yes, any response by the state is due on February 22nd. They might choose not to file such a response.

  4. 80

    Mr. Dhuey,

    Simply out of curiosity, has a due date been set for a response by the DHS?

  5. 79

    EG, my posts aren’t really a dialog with anyone in particular. In the off change that any of our potential amici are following this, I’d like our views to be clear.

  6. 78

    Mr. Mooney, you are looking into the head of the State of California when you focus on its “understanding of the law with respect to the 11th amendment”. Lapides teaches away from that: “A benign motive, however, cannot make the critical difference for which Georgia hopes. Motives are difficult to evaluate, while jurisdictional rules should be clear.” 535 U.S. at 621.

    And speaking of Lapides, your view that it was a slam-dunk is a shot from the hip. That was a reversal of an 11th Cir. decision, which had support not only in the jurisprudence of other circuits, but also in Ford Motor v. Indiana (S.Ct., 1945). It was not at all obvious that the court would overrule its precedent in Ford, and side with the petitioner.

  7. 77


    Now I understand your thinking. I figured you had a reason for referring to Kennedy’s concurring opinion in eBay, and I won’t quibble with you on that. And I would suggest ignoring MM or taking what he say with a huge grain of salt.

  8. 76

    “UC didn’t intervene in this case, Mr. Mooney. ”

    State of California, whatever.

    “”Cert. denied” is a pretty safe prediction in just about every case”

    Yes, but my point is that this one has far far less of a chance than, say, Metabolite Labs or KSR, for the reasons that I’ve mentioned. Had the original intervention occurred AFTER Florida Prepaid with the facts otherwise identical, all bets would be off. I might even take your position.

    Alas, we file our petitions for cert only with the facts we have.

  9. 75

    “UC’s earlier intervention was based on a prior (universally held) understanding of the law with respect to the 11th amendment. As such, their prior behavior will not suffice as a waiver of immunity nearly a decade later.”

    UC didn’t intervene in this case, Mr. Mooney. Perhaps if you get familiar with the facts of this case, your legal conclusion will be better informed. “Cert. denied” is a pretty safe prediction in just about every case, but one can easily reach the right conclusion for the wrong reasons.

  10. 74

    A thoughtful article re the 11th Amendment and waiver of sovereign immunity, entitled “The state political processes theory of the 11th Amendment” by J. Brian King:

    link to

    The original article appears in a Univ. of Texas School of Law journal I could not access, so one will have to put up with ads as he/she reads the entire article.

  11. 73

    “Alito might be similarly troubled in this situation”

    No, he won’t be troubled because the allegedly “non-practicing” nature of UC has nothing to do with immunity under the 11th amendment.

    Absolutely nothing.

    Alito will look at the facts and understand that UC has done nothing that would reasonably constitute a waiver of its 11th Amendment immunity in this case.

    UC’s earlier intervention was based on a prior (universally held) understanding of the law with respect to the 11th amendment. As such, their prior behavior will not suffice as a waiver of immunity nearly a decade later.

    Cert denied.

  12. 72

    EG, as I posted above, the four dissenters in Florida Prepaid and College Savings Bank (Stevens, Souter, Breyer & Ginsburg) would surely be with us on the merits. Our waiver argument is far stronger than Florida’s was in those twin cases.

    Although it takes only four votes to grant cert., these justices are unlikely to do so unless they feel they can bring aboard the fifth vote on the merits. That’s where Justice Kennedy comes in.

    He was ahead of the Lapides decision on the potential for unfairness and inconsistency in a state’s assertion of sovereign immunity in litigation (Schacht in 1998). His concern about non-practicing entities in eBay went beyond the injunction issue in that case. Whether he agrees with us that these concerns should apply to our case is an open question. Still, he’s the logical focus. Justice Alito might be similarly troubled in this situation, but his views on waiver-by-litigation are less clear.

  13. 71


    Thanks for the link to the Genentech case (at least portion of which has been overruled or brought into question by Florida Prepaid); I didn’t realize this case talked about immunity issues outside 11th Amendment. Anyway, you’re right, Pennington Seed was all about suing the right officials of the state institution. To be safe, you could bring in all who might qualify, or if you wanted to be more selective, see which officials have been substantively involved in other litigation to suggest they’ve got the right authority, and include them only.

    Anyway I’ve read your petition for cert more carefully, and you’ve collectively done a very nice job. The only quibble I have is the citation to Kennedy’s concurring opinion in eBay at page 24 which caused me to cringe somewhat. I don’t know what your feelings are about eBay, but Kennedy’s concurring opinion gives me nightmares as it is not patent friendly; in my view, Kennedy should never have said what he did in eBay as to “business method” patents and NPEs as it’s unnecessary and uncalled for, at least by the facts in the eBay case.

  14. 70

    It seems to me that the 11th Amendment immunity is in conflict with the TRIPS treaty. See Article 41.
    1. Members shall ensure that enforcement procedures as specified in this Part are available under
    their law so as to permit effective action against any act of infringement of intellectual property rights
    covered by this Agreement, including expeditious remedies to prevent infringements and remedies which
    constitute a deterrent to further infringements. These procedures shall be applied in such a manner
    as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.

    It says “to permit effective action against ANY act of infringement”. Presumably, as it stands now there isn’t any effective action available against state institutions.

  15. 69

    EG, this issue has come up, but remains unresolved. See link to

    I haven’t given this particular issue much thought, but I suspect that under Pennington, the key would be to name the right university official in the declaratory relief action. Perhaps that would be the general counsel, if he/she is supervising the licensing staff, which would probably be the accused infringer’s source of the apprehension of suit.

  16. 68

    EG, thanks for the cases. I had looked at the plain text of the 11th Amendment (“The 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 …”) and concluded that “in law or equity” meant just that. Looking into things further, the case law on this topic certainly is a bit of a maze.

    As to a State committing IE in the prosecution of its patent: in Young, Mr. Young acted in his official capacity as Attorney General of Minnesota. Nevertheless, the critical issue for the Supreme Court was that of *constitutionality of the law he sought to enforce* (the enforcement conduct being in contempt of an injunction he believed invalid due to sovereign immunity). I’m unsure that principle reaches so far as to ensnare the state-employee inventors or the state university tech-transfer officer charged in the first instance of withholding a reference material to patentability. The issue would be purely of State compliance with federal law, without calling into question the constitutional validity of any particular law.

    More relevant to this topic, though … As to a State infringing a privately-owned patent: Pennington says (to me) that a patentee may sue a State only for prospective injunctive relief. To my eye, the patentee cannot recover money damages for past infringement (11th Am.), cannot sue for a reasonable royalty on future infringement (11th Am.), and may well not be able to obtain a permanent injunction against the State’s continuing infringement (MercExchange).

  17. 67


    Actually, if the state institution were to obtain the patent through IE, as in your example, you should still be able bring the DJ action against state institution. The 11th Amendment only applies to getting money damages from the state institution, not other forms of relief, such as a DJ action that the patent is unenforceable. This would be consistent with the Ex parte Young doctrine, as expressed (pardon the pun) through Pennington Seed v. Produce Exchange case. I don’t think the specific example you bring up has actually been litigated (at least not to my knowledge), but I think the DJ action should be viable. Hope my explanation is understandable.

  18. 66


    You raise very valid points illustrating the dichotomy created by the 11th Amendment, with your observation about a DJA being quite apropo. There is virtually nothing that can be done by the federal courts absent a clear waiver of sovereign immunity. The 11th Amendment was enacted to limit federal judicial power over states, but this is a far cry from saying it compels a construction that permits states to run roughshod over the law.

    Please excuse my Sunday morning ramblings since the caffein in my cup of coffee has not kicked in, but perhaps now is the time for counsel representing patentees to rethink the entire approach of securing state compliance. One example, likely among many, that readily comes to mind is thinking about the viability of in rem actions, i.e., proceed against the “product” and not the state itself. Still another, as I have noted above, is comprehensively exploring whether or not governmental bodies, which of course can only act via those in its employ, can under the circumstances I described qualify as inventors and/or authors under Article 1, Section 8, Clause 8. On this latter point I can tell you that every academic and practitioner to whom I have mentioned it immediately responded with “Of course they can”. I find this “gut reaction” quite interesting given that I have never found any case law even remotely on point or any journal article analyzing the issue. It truly is one of first impression.

    BTW, at least one suggestion above involves requiring all parties availing themselves of the benefits under Title 35 (and presumably Title 17) waive immunity. Sounds simple enough until the import of 28 USC 1498 is taken into consideration vis a vis the federal government.

    Obviously, I am quite interested in hearing the views of others regarding other alternatives that may hold out the promise of backing state and federal governments into a legal corner from which there just might be no escape.

  19. 65

    Mr. Slonecker, with my apologies if the answer is something basic that I’ve overlooked … what currently stops a state institution from engaging in inequitable conduct in the prosecution of every one of its patent applications? If no private party can bring a declaratory judgment case against the state’s patent, then such improper conduct can only be examined through counterclaim/defense if the state decides to enforce its patent through actual litigation (rather than merely the threat of expensive litigation). Even then, of course, the accused infringer runs the risk of a prolonged and costly court battle with no certainty of victory.

  20. 64

    Mr. Examiner6k,

    The Supreme Court did not create or establish a right for royalty sharing by the federal government with inventors in its employ. That “nugget” was created (and mandated) by enactecment of Section 14 to The Stevenson-Wydler Technology Innovation Act of 1980, Public Law 96-480, October 21, 1980, 96th Congress, 94 Stat. 2311, 15 U.S.C. 3701.

    There is no counterpart provision in federal law respecting states. Any such provisions are solely creatures of state law. Though I am personally unaware of any state that has mandated such sharing by legislation, political and quasi-political subdivisions of states have embraced the concept via promulagation of policies by various subdivisions, most notably state university systems that are able to meet the test of being a political arm of the state.

    One facet of your points relating to “public good” I find interesting is your apparent assumption that permitting both the federal governement and state governments to secure patents promotes the “public good”. I must ask the question “Just what is it about permitting the federal and state governments to secure patents invented by those in their employ that promotes the “public good?” Using the federal government as an example, is it not curious that the federal government is responsible for the issuance of patents, and then uses its power to grant itself a patent? This is indeed a rather unusual state of affairs that defies logic. Using an admittedly extreme example, can the federal government in granting itself a patent be later charged with inequitable conduct against itself? If searches of the prior art are mandated as a necessary part of a patent application, does it not seem a bit strange that the federal government will be the sole arbiter of whether or not the prior art search it conducts is sufficient for it to examine its own application?

    The above are merely a small tip of the iceberg. It is in large part the curious nature of the federal government granting itself a “property” right that makes me wonder whether or not the federal government is even constitutionally authorized to participate in the very process that it oversees? In more legalistic form, does Article 1, Section 8, Clause 8 embrace within the definition of “authors and inventors” employees of the government itself where an employee is performing his/her duties as a normal incident of his/her governmental duties? I rather doubt the Founding Fathers in crafting the Constitution would have answered this question in the affirmative.

  21. 63

    Mr. Mooney, you seem to think you have a better sense than Andy Pincus over what may or may not annoy Supreme Court justices. You are the only one on the face of this planet with that silly delusion.

  22. 62

    Hmmm, well in that case then I’m at a loss for why the SCOTUS (in coordination with whomever else) would have established such a right for the universities in the first place. Unless of course, even if the prof’s do get phat lootz, the patented knowledge they licensed was of such benefit to society that the phat lootz are just a small portion of what they would have made in the business world, and the biggest portion goes to the state. But I don’t have time to read through it now, I’ll check it out later. I’m sure you guys will get it all worked out if it’s that horrible and SCOTUS is that bad at establishing things for the public good.

  23. 61

    I should add, though, that some states issued none because no patent law was ever enacted there.

  24. 60

    I doubt that less than 40 state patents were issued. I believe you will find that they were surveyed in the first OG circa 1840, and some states may have issued almost that many in one state, from what I can recall.

  25. 59

    “Mr. Mooney, perhaps you think our reliance on Lapides is misplaced. Perhaps the Supreme Court will ultimately agree. That is a very different concept than considering our citation of Lapides a “slipshod application of case law” upon which the court “won’t look too kindly”. ”

    Perhaps you think the words “very different” mean something that is “very different” from what many other people think. Perhaps we disagree on a number of other important questions, including whether the best Rolling Stones LP is Aftermath or Beggars Banquet.

    “If you think our cert. petition, to which Andy Pincus signs his name, will “annoy” the justices …. then your viewpoint is no more credible than those of the psychotics who pass through here from time to time.”

    Perhaps you have some sort of fiduciary relationship with Andy Pincus that compels you to make such strange statements. Perhaps I could care less who signs his name to the petition, for the reasons I outlined above.

  26. 58

    I doubt that less than 40 state patents were issued. I believe you will find that they were surveyed in the first OG circa 1840, and some states may have issued almost that many in one state, from what I can recall.

  27. 57


    Perhaps it would prove instructive to peruse the Stevenson-Wydler Technology Innovation Act of 1980, Public Law 96-480, October 21, 1980, 96th Congress, 94 Stat. 2311, 15 U.S.C. 3701, and specifically Section 14 thereof.

    Many public and private universities have implemented policies of royalty sharing of similar import. Stanford and UC are but two of many, many examples where royalty sharing is an integral part of their policies.

  28. 56

    examiner#6k, you are incorrect in saying that “The monies generated go right to the public benefit, so far as I know there have been no professors or otherwise growing particularly rich from their gov sponsored patent ideas, though it might get them another grant etc.”

    In fact, the professor inventors at UC get a very large part of the loot. See link to In the recruiting pitch to technology research professors, UC has a big edge over Stanford and other private universities, since UC has the 11th Am. shield available, and Stanford is vulnerable to both declaratory relief and infringement actions.

    This is precisely what Judge Patel had in mind when she lamented the unfair advantage of “similarly situated private universities”.

  29. 55

    Mr. Mooney, perhaps you think our reliance on Lapides is misplaced. Perhaps the Supreme Court will ultimately agree. That is a very different concept than considering our citation of Lapides a “slipshod application of case law” upon which the court “won’t look too kindly”.

    Even if you’re ultimately right about what the Supreme Court will do in our case, you have completely misunderstood this process. If you think our cert. petition, to which Andy Pincus signs his name, will “annoy” the justices, and that they will consider it a “slipshod application of case law”, then your viewpoint is no more credible than those of the psychotics who pass through here from time to time.

  30. 54

    Examiner#6k: The California Dept. of Health Services (DHS) is the infringing defendant. They feared they were infringing in 1998, when they elbowed their way into a case between BPMC and Kaiser (siding with Kaiser and also seeking a judicial finding of their non-infringement). BPMC leveled a patent infringement claim against DHS. No claim of sovereign immunity was then raised by DHS (as this was pre-Florida Prepaid). That is to say, DHS voluntarily entered the federal court and voluntarily asked it to assess DHS’s conduct in view of the ‘693 Patent’s claims, and DHS also faced an infringement claim from the owner of that patent.

    The claims of the ‘693 Patent are directed to a medical diagnostic method. DHS operates a vast healthcare network throughout the state. It ostensibly infringes the ‘693 Patent (or feared it did strongly enough to jump into court in 1998). BPMC seeks to sue DHS (again), as the first case was voluntarily dismissed for improper venue, not on the merits.

    Given its immense resources, it would be possible for DHS to establish a national laboratory for this diagnostic, completely undercutting BPMC’s ability to compete on their own or to license to any third party. If any other State did that, they would be entirely immune from litigation. If I understand the position, Mr. Dhuey argues that California should not, on the basis of its purposeful availment of the federal court in 1998 for the specific question of its infringement of the ‘693 Patent.

  31. 53

    “Mr. Mooney, was it fair for the State of Georgia simultaneously to invoke federal jurisdiction and to assert its Eleventh Amendment immunity? No. Was the recipient of that unfairness left only to petition Congress for relief? No. See Lapides. ”

    Lapides was a “slam dunk” and Breyer probably wrote that Opinion himself on the Metro to work one morning. Unlike the University of Georgia, UC didn’t move to have this case transferred from State Court to Federal Court. So, uh, nice try. Again, I think the Supremes won’t look too kindly on this slipshod application of case law (tho I’m sure they’ve seen worse).

    My point is that to extent “fairness” is an issue it cuts both ways. UC did what it did in 1997 because, at that time, Florida Prepaid was just a fantasy in Billy Rehnquist’s mind. The present facts will suffice to make this case “something special” (to use Breyer’s language in Lapides), thereby excusing any behavior that might otherwise constitute a waiver of immunity by UC.

  32. 52

    Idk Hutz, I disagree for the simple reason that the gov (universities mostly I’d guess) doesn’t get to “profit” from “its” ideas in any other way than the patent $ it receives, unless you know of some University factories that I don’t know about. The monies generated go right to the public benefit, so far as I know there have been no professors or otherwise growing particularly rich from their gov sponsored patent ideas, though it might get them another grant etc. or create business ops that they pursue outside their official gov. work, however, those are available for everyone to pursue. I don’t know for certain though, there are too many variables about which I’m uncertain, but I’m sure SCOTUS will do ok after everyone has had their say.

    Dhuey: I’ve got a cool 6k on Sen. Feinstein!

  33. 51

    Mr. Dhuey,

    It is the following language from the majority opinion in Florida Prepaid that piques my interest in this issue:

    “Instead, only where the State provides no remedy, or only
    inadequate remedies, to injured patent owners for its
    infringement of their patent could a deprivation of property
    without due process result.” Florida Prepaid at p.15.

    Of course, it begs the question “What remedy does a patentee have under California law that satisfies the due process requirements enunciated in Section 1 of the 14th Amendment?” I wish this was a question admitting to an easy answer, but unfortunately I believe Congress did patentees no favor by its incredibly sloppy drafting of 28 USC 1338. The resulting “Catch-22” faced by patentees was very likely not intended, but its existence cannot be denied.

    Suit in state court…oops, federal preemption…state court can’t touch it. (But I do have to ask, is federal preemption truly an accurate description of the relevant legal principle? I think not.)

    Suit in federal court…oops, sovereign immunity…state can’t be touched.

    A sad state of affairs indeed. Small wonder so many view our laws with a jaundiced eye.

  34. 50

    Great idea, Mr. Hutz. That was a key part of the Intellectual Property Protection Restoration Act. I was working with the committee on one side of that legislation, and Senator Feinstein (on behalf of the University of California) was on the other. Any guesses on who won that battle?

    link to

  35. 49

    Mr. Slonecker, I agree with you completely on that last post. Unfortunately, what you posted is a rough summation of the dissent in Florida Prepaid. Let’s hope that those same four dissenters can persuade one more justice that this case is distinguishable from College Savings Bank.

  36. 48

    I believe a simple solution be to simply have any applicant or assignee sign a short form that requires them to waive any immunity to patent infringement suits if they are to participate in the patent system. If you are going to avail yourself of a system you should be subject to the rules of that system.

    States are able to waive immunity through contract.

    And yes, many things in life aren’t fair, but this particular lunacy was created by the SC over the last 20 years. Case law or practice should change to prevent states from having their cake and eating it too.

  37. 47

    will not*

  38. 46

    No, I don’t think that I do misunderstand the fairness issue, if people working for the gov. are “infringing” on people’s patents it is for the singular reason of advancing the knowledge (or otherwise benefiting) of the nation without making a product for profit etc. (though on this you can correct me, and if it is different then sure, you have a case).

    And don’t get me wrong, as with all of my statements on here, you must take them as they are understood by at least semi-intelligent men, as relating to the topic at hand. I did not mean that statement as in if you’re doing something completely right and the gov is your opponent or oppressor then stop, I mean if you’re blatently doing something wrong (i.e. infringing on their patents) then you better stop, and not try to hit them back with litigation counter crap when you know you can’t sue them, just stop infringing. This runs along the same lines as, if a cop is speeding and you speed (way over the limit, same as the cop) right beside him, guess who better stop? Is it fair I end up with a ticket and he does not? The gov. doesn’t cut me breaks on things like this, why on earth you think it would cut you one just because this is the patents arena and “it isn’t fair” I am certainly do not understand. What if the OA you recieve from the patent office that is full of wording that would be a 112 in a claim? Is it not fair that you get rejected under 112 for bad claim writting when the examiner can’t type his rejections any better than you can type your claims? I’m going to go with, um no.

    I’d be willing to back you on the “it’s not fair” part though, unfortunately, it doesn’t matter and there is little doubt in my mind that SCOTUS will care either.

  39. 45

    Mr. Dhuey,

    Obviously I concur with your assessment of a state proceeding and its pitfalls. I use the example of a state claim as a strawman for the purpose of exploring the feasibility/strength of a 5th via 14th Amendment argument to weaken attempts by a state to cowardly hide under an 11th Amendment umbrella.

    In many respects this situation reflects the frustration felt by Zoltek in its 1498 action against the USG.

    When Atascadero came out from the Supreme Court many years ago I knew those of us dealing with intellectual property were in for a bumpy ride, with cases like yours only too well highlighting the problem.

  40. 44

    Mr. Slonecker, I agree that there is uncertainty to how this would play out in state court. It might be tempting to say, hey, just file in state court and give it a shot, but consider the risks from a patent holder’s perspective. You file your takings-based complaint, and the state demurrers.

    First the state court judge says, “patents…I’ve heard of those — doesn’t Michael Jackson own the patents to the Beatles songs?” Then, let’s say the law & motion judge rejects the state’s preemption argument and the case goes forward. Imagine what Markman proceedings would be like in state court.

    Let’s say that after a long, strange trip through state court, you win a judgment. On appeal, the state gets another shot at the preemption argument. In addition, there’s a very good chance of some kind of error of law below, since the case is blazing a new trial.

    It’s fun to think about what a case like this might be like in state court, but it’d be anything but fun for the patent holder.

  41. 43

    Mr. Dhuey,

    “There is a very serious preemption issue under 28 USC 1338. Sure, you can claim it’s not really a patent infringement claim, but that’s a tough sell. Whether there was a taking is completely defined by whether there was an infringement under federal patent law. See link to at pp. 17-18, 64.”

    I hope you did not interpret my remarks to suggest a state claim is a strong position from the perspective of a patentee. 28 USC 1338 (certainly not a model of clarity) does represent a hurdle, but then again a patent is defined as having all the atributes of personal property and is presumptively valid.

    One thing that the GAO report makes only too clear is that as a general rule the attorney generals of the several states that responded to the GAO inquiry are all over the map on the issue of a state action.

  42. 42

    Mr Dhuey:
    I am dead serious about this stuff. That is why I proffer a perfectly acceptable action by a state. I do not believe that California should be sued in Federal Court for Patent Infringement. Takings maybe.

  43. 41

    Mr. Mooney, was it fair for the State of Georgia simultaneously to invoke federal jurisdiction and to assert its Eleventh Amendment immunity? No. Was the recipient of that unfairness left only to petition Congress for relief? No. See Lapides.

  44. 40

    Is it “fair” that only natural-born citizens can become President? No. It’s not fair.

    But that’s the way it is. Congress is welcome to fix the problem.

    For what it’s worth, I think much of 11th Amendment immunity jurisprudence is a bad joke likely cooked up by a clerk sharing a cigar with Scalia after Thanksgiving Dinner at the Justice’s mansion.

  45. 39

    Thanks for your thoughts, TJ. I respectfully disagree. The Kennedy concurrence in eBay expressed a deep concern about the strategic advantages an NPE has in patent litigation. Whether the NPE does the research or not doesn’t alter that. It’s all the same for the accused infringer, for whom Justice Kennedy was concerned.

    Your take on the odds is probably right — it is very difficult to obtain cert. in almost any case. But that was true in a lot of Supreme Court cases where the litigant pressed ahead despite the odds and won.

  46. 38


    I am sympathetic to your case, I realize you are advocating for your client, and I agree that the chances of a grant are not zero (but I think they are not good, either). At the same time, there is a significant difference between the UC system that actually does research (and gets exclusive licensees to practice) and the more typical patent “troll”, which does no research. The justices made this pretty clear in eBay that they are not going to screw over the small inventor really doing research. I noticed your cite to the Kennedy concurrence. I think it is going to fall flat (I realize, of course, that Andy Pincus is a very good S.Ct. litigator), though of course that is just my own opinion.

    As for your suggestion that California’s own attorney has agreed it is unfair: he agreed that California’s sue-but-not-be-sued immunity is unfair. That has absolutely nothing to do with whether California is a practicing entity or not. Even if California practiced its patents, it would still be just as unfair that they have immunity to suit.

  47. 37

    “If your opponent = gov. = stop doing what you’re doing. Get it?”

    That’s a very interesting take on one’s rights and responsibilities with respect to the state, examiner#6k. Thanks for sharing.

  48. 36


    You misapprehend the problem. The fairness issue is that states are allowed to enforce their patents, but are allowed to infringe other people’s patents indiscriminately. You cannot sue a state for infringement under the current state of the law.

  49. 35

    I have practically no knowledge about the situation except what’s presented here, but from the common man’s point of view it seems that the courts have established that you are not supposed to infringe patent rights that were invented by the State. Bar none, end of story, do not do it, and they gave them the sheild to protect them from the natural weapon of litigation, i.e. extended battles.

    In essence, if the state comes up with something and gives it to one person to use, don’t use it unless you are that person, and don’t think you have many legal mumbo jumbo attacks to help your position of infringing.

    Oh yeah, and as much as I feel for you on the issue of fairness, your case is gonna be smacked down for the very reason I just explained, which happens to be the same as you and Dennis just explained it to me.

    If your opponent = gov. = stop doing what you’re doing. Get it?

  50. 34

    Mr. Mooney, had we known in advance your inside knowledge of what annoys the justices, we would have retained you as a paid consultant. Perhaps you could review Andy Pincus’s cert. drafts in the future, lest he annoy the justices in his next case.

    There is no dispute that UC is a non-practicing, patent holding entity. If you’re suggesting that the situation is somehow fair (or less unfair) because it’s UC and not MercExchange, you’ve gone farther than the state’s lawyer, who concedes this is unfair.

  51. 33

    Malcom, I don’t think that it’s in Andrew’s (or his clients) best interest to walk into the Court and say, “UC is a practicing entity. They have not waived their immunity. And I’m not even sure that they’re infringing.”

    I think his approach has a better chance than the one you have espoused so far.

  52. 32

    “Can you name any private entity that has in the past decade more frequently and successfully exploited federal court patent jurisdiction than the University of California? I’m not aware of any.”

    Huh? It’s like attacking the ACLU for “exploiting federal court 1st amendment jurisdiction.”

    Along with the rest of the country, I shrug my shoulders: so what?

    Referring to UC as a “non-practicing entity” along the lines of MercExchange is absurd at best, intentionally misleading at worst. The Supremes won’t buy it, you can rest assured of that. On the contrary, such a description will irritate them. Do you think that’s a good idea?

  53. 31

    Andrew, I was not specifically referencing your case. I was referencing this general disgust present for non-practicing entities who enforce their rights.

    The nuclear powers scenario is accurate to the companies you describe. I should have been more specific in what I was pointing to.

    I’m describing something more along the lines of Z4 technologies v. Mircrosoft. Z4 was in business to market their validation software before the cost of going to war with Microsoft put them under. My hypothetical situation is more akin to China unilaterally declaring ownership of a portion of Laos. There’s not a lot Laos as a country can hope to do about that. Non-govn’t proxies would be their only form of resistance. Much like a non-practicing entity is the only safe place to fight one of the majors from (in some situations).

    I just dislike the implication that valid patents having valid rights are no longer valid because of who is asserting the rights.

  54. 30

    st. joe err leo — how is molly?

    irony, perhaps … are you alleging i lack permission? interesting parallel with a james joyce character … who has an adulterous wife …

  55. 29

    You are correct, Mr. Mooney, it is unfair to compare the UC system to MercExchange. My apologies to MercExchange.

    Can you name any private entity that has in the past decade more frequently and successfully exploited federal court patent jurisdiction than the University of California? I’m not aware of any.

  56. 28


    Ignore MM. But you might also want to look at an excellent article that Clark Shores (Clark is an assistant attorney for Washington University, so he won’t be able to assist you directly) wrote for the AUTM Journal on state sovereign immunity in the IP context. If you would like to see, it let me know (and provide you’re e-mail address) and I’ll send it to you.

  57. 27

    “an enormous, hyperaggressive non-practicing patent holding entity ”

    You are comparing the UC system to MercExchange?


  58. 26

    Mr. Dhuey,

    “ii) an enormous, hyperaggressive non-practicing patent holding entity that often threatens to sue for infringement and frequently delivers on those threats, in some of the largest patent cases in history. See eBay Inc. v. MercExchange, 126 S. Ct. 1837, 1842 (2006) (Kennedy, J., concurring).”

    To the extent that Bayh-Dole applies, I believe that this argument to a Bayh-Dole situation would not be favorably received in federal court. The real fun, though, would be if a federal agency made any attempt to exercise “march-in rights”.

  59. 25

    Mr. Pitchford, I respectfully disagree with both your premise and your implication that your point is relevant to our case. First, there have been all sorts of patent cases between practicing entities, including some against the very companies you mention. (e.g., Tandberg Data Corporation v. HP, Alcatel-Lucent v. Microsoft). Is Qualcomm on your list? If so, how does the Broadcom litigation fit into your claim?

    Sure, practicing entities try to avoid drawn out patent battles with each other for the same reason nuclear powers try to avoid going to war with each other. Still, they happen regularly.

    Even if your point were completely correct, I don’t see how it makes any difference here. We’re not claiming there is anything improper about UC’s aggressive patent litigation conduct. See our petition at p. 21.

  60. 24

    Mr. Dhuey,

    Obviously claims against states under state law have not exactly flooded state courts. Nonetheless, the taking of private property for a public purpose is to my knowledge one of the cornerstones of every state constitution. Certainly, Title 35 expresses that patents have all the attributes of personal property, which leads me to the quite natural conclusion that a nationwide standard has been established via federal law (In fact, patents are treated as property by the states when it comes to matters such as taxes, divorce,decedent estates, and a plethora of other laws governing how property is treated under state law). I simply do not see how a state can lawfully deny the status of a patent as property under its laws, while at the same time treating it as property when it seeks enforcement against alledged infringers. Please note, this is not an 11th Amendment issue as that is directed to the ability of our federal courts to exercise jusrisdiction in a matter where a state has not waived immunity.

    Most discussions concerning suits against states for patent infringement have focused on 11th Amendment immunity, but as the SCOTUS has previously noted such immunity can be bypassed for purposes of a federal suit if either the immunity is waived, or if the state does not have a method under its laws that satisfies US constitutional requirements of due process imposed via the 14th Amendment. California does have such a “method” under its constitution. Thus, federal jurisdiction would not likely apply absent failure of its “method” to meet 14th Amendment strictures. It is, however, an entirely different matter regarding the filing of an action under state law in a state court where federal constitutional due process standards are satisfied.

    Now, I fully recognize that a state “takings” claim under state law is not subject to the remedial provisions of Title 35. Nonetheless, the exercise by a state of eminent domain most certainly does implicate any and all remedies provided under state law for such actions by private property owners.

    While I obviously have the benefit of hindsight and am “Monday morning quaterbacking”, I believe a state would be hard pressed to successfully escape responsibility under its laws given the circumstances of this particular case.

    Merely as an aside, if Florida Prepaid was litigated today there is a very good chance the outcome would be different in that Florida law has changed significantly such that it is not a foregone conclusion the Florida university system continues to qualify as a quasi state agency. I have not considered the relationship between the California Regents and the state itself to form any opinion on such an issue.

    While not pertinent to your specific situation, I do have serious doubt that either a state or the federal government is entitled to the benefit conferred by either Title 35 or Title 17 whenever an invention is created by a state/federal employee in the ordinary course of his/her employment. This, however, is an entirely separate discussion best left for another day.

  61. 23

    Andrew, you seem to raising the “patent troll” argument.

    I would just like to point out that there are a handful of companies that you cannot viably sue if you are a practicing entity. They include IBM, Microsoft, HP, Intel, and a host of others. If you are a practicing entity, you will have to defend against the counter claims. They have and will put practicing entities who sue them out of business with the costs of defending against a literal flood of patent infringement claims.

    So, how would you propose to sue one of those companies OTHER than though a “patent troll”, “hyper agressive non-practicing entity”, or whatever other title of dubious pretext you place on such an entity?

  62. 22

    I wouldn’t feed the YMS troll.

  63. 21

    “Cert. denied” is certainly what the Vegas oddmakers would predict, Mr. Mooney. This has a much better shot than most, though, since it hits two areas of deep concern to Justice Kennedy (the fifth vote in both Fla. Prepaid and College Savings Bank):

    i) a state using its sovereign immunity to achieve unfair tactical advantages in litigation by accepting the benefits but eschewing the burdens of federal court patent jurisdiction (see Wisconsin Dept. of Corrections v. Schacht, 524 U.S. 381, 393-94 (1998) (Kennedy, J., concurring)) and

    ii) an enormous, hyperaggressive non-practicing patent holding entity that often threatens to sue for infringement and frequently delivers on those threats, in some of the largest patent cases in history. See eBay Inc. v. MercExchange, 126 S. Ct. 1837, 1842 (2006) (Kennedy, J., concurring).

  64. 20

    YOURMOMMASAYS, you don’t seem too serious about this stuff, but I will remind you that once the state voluntarily opens the federal court doors (the situation here), the federal court tells the state what the waiver rules will be based on principles of fairness and consistency. The state’s preferences at that point fall by the wayside. See Lapides.

  65. 19

    “As you can see from our petition, though, California has gone way beyond this.”

    If you think the Supreme’s are going to selectively punish California for behaving perfectly logically in the wake of the Supreme’s 11th amendment jurisprudence, you are mistaken.

  66. 18

    “Interestingly, BPMC’s claims are quite similar to those in the LabCorp v. Metabolite debacle. Here, we have a method of diagnosing placental disfunction by comparing a pregnant woman’s HCG levels against normal levels. Justice Breyer may want to hear this case to take another shot at medical methods.”

    If the claims are truly as broad as those in LabCorp. v. Metabolite (such that they cover *thinking* about the “discovered” correlation) then that is another great reason for the Supreme’s **not** to take cert on this case.

    My prediction: cert denied.

  67. 17

    Boo hoo hoo yet another corporate advocate who doesn’t like the Constitutional Republic. Try this one on for size baby. How about the State of California tell the patent enforcer that you can no longer do business in California. It is entirely within the perogative of the State of California to allow a corporate vail to exist. In other words, there is no fundamental right to the corporate form. The State of California could just as easily say the members of the corporation can do business only as a partnership. How do ya like those banannas?

  68. 16


    Are you being ironic when you re-publish several pages of a journal article that apparently has decades remaining in its copyright term? It seems especially ironic that these pirated passages extol the natural law theory of intellectual property.

  69. 15

    Mr. Slonecker, first off, any such takings claim would have to be in state court to avoid the 11th Am. issue we have now. To my knowledge, no patent holder has attempted any such claim in any state, since Florida Prepaid in 1999.

    There is a very serious preemption issue under 28 USC 1338. Sure, you can claim it’s not really a patent infringement claim, but that’s a tough sell. Whether there was a taking is completely defined by whether there was an infringement under federal patent law. See link to at pp. 17-18, 64.

  70. 14

    Any questions of Statute of Limitations aside, I am curious why a claim(s) under either Article 1, Section 19 of the California Constitution or a federal claim under the 14th Amendment was not pursued? Obviously these would have been “takings” actions.

  71. 13

    Good Luck!

    fascinating … (to me) historical background on state patent grants & the Framer’s response …

    Edward C. Walterscheid [FNa1]
    Copyright © 2000 Journal of Intellectual Property Law Association; Edward C. 
    (Cite as: 7 J. Intell. Prop. L. 315, *347)

    IV. The Constitutional Convention and Its Immediate Backdrop
    At the time the Framers drafted the Constitution in 1787 they were aware of more than merely the British patent and copyright practice which they desired to give Congress the power to emulate. Thus, they were fully cognizant that under the Articles of Confederation, Congress had no power with respect to either patents or copyrights. The problem resided in Article II thereof, which read: “Each State retains its sovereignty, freedom and independence, and every power, jurisdiction and right, which is not by this confederation expressly delegated to the United States, in Congress assembled.” [FN130]

    The use of the term “expressly” in Article II was what made it so supremely restrictive of the authority of the national government, i.e., “the United States, in Congress assembled.” For by the literal language of Article II, if a power, jurisdiction, or right was not expressly delegated to Congress, that authority could not be exercised by it. It was for this reason that the Continental Congress never attempted to legislate with respect to patents or copyrights or to grant any form of exclusive rights to inventors in their inventions or authors in their writings. The power to do so was simply not delegated to Congress by the Articles.

    If the Continental Congress had no power to legislate with respect to or grant patents and copyrights, it could recommend that the individual states take action in such regard. While it never presented any recommendations concerning patents, it did resolve on May 2, 1783:
    That it be recommended to the several states, to secure to the authors or publishers of any new books not hitherto printed, being citizens of the United States, and to their . . . executors, administrators and assigns, the copyright of such books for a certain time, not less than fourteen years from the first publication; and to secure to the said authors, if they shall survive the term first mentioned, and to their . . . executors, adminstrators and assigns, the copyright of such books for another term of time not less than *348
    (Cite as: 7 J. Intell. Prop. L. 315, *348)
    fourteen years, such copy or exclusive right of printing, publishing and vending the same, to be secured to the original authors, or publishers, or . . . their executors, administrators and assigns, by such laws and under restrictions as to the several states may seem proper. [FN131]

    Perhaps the most striking feature of this congressional resolution is that it recommends a floor of at least fourteen years for the term of the copyright but suggests no ceiling whatever. Apparently, insofar as the Continental Congress was concerned, there was no objection if a state wanted to issue a copyright in perpetuity; the concern was that the copyright term not be too short, rather than that it might be too long. This is a significant distinction from what would be incorporated into the Constitution four years later, namely, the power to enact laws securing to writers the exclusive right to their works “for limited times.”

    The resolution says not a word about any justification for copyright. But a March 10, 1783 resolution creating the committee that proposed it stated the purpose of the committee to be “to consider the most proper means of cherishing genius and useful arts through the United States by securing to the authors or publishers of new books their property in such works.” [FN132] The committee presented its recommendation resulting in the resolution to the states after “being persuaded that nothing is more properly a man’s own than the fruit of his study, and that the protection and security of literary property would greatly tend to encourage genius, to promote useful discoveries and to the general extension of arts and commerce.” [FN133]

    The committee language is of interest both for what it says and for what it does not say. It clearly seems to adopt the natural law view that writers have an inherent property right in their works. It also seems to confuse the role of copyrights and patents in assuming that copyright will in and of itself “promote useful discoveries.” But it says nothing about the promotion of learning, which was stated to be a primary purpose of copyright in the *349
    (Cite as: 7 J. Intell. Prop. L. 315, *349)
    Statute of Anne. Nor does it make any reference to copyright being a common law property right.

    The May 2, 1783 resolution is limited to copyright and says nothing about letters patent for invention. Yet the remarkable thing about the committee language quoted above is that if the phrase “literary property” were replaced with “property in invention,” it would have provided an equally admirable justification for a congressional recommendation that the states protect the rights of inventors “by such laws and under such restrictions as the several states may deem proper.” Obviously, this did not occur, possibly because of a mistaken belief that copyright would encourage discovery and protect property rights in invention. More likely, however, inventors had at this point in time made no concerted effort to seek protection of supposed property rights in their inventions, whereas “sundry papers and memorials from different persons on the subject of literary property” had been submitted to the Continental Congress by early 1783. [FN134]

    *** Between the beginning of 1783 and the close of 1786 twelve states enacted general copyright statutes, [FN135] although the suggestion has been made that these statutes apparently never became operative. [FN136] As a practical matter, all the states adopting copyright statutes limited the term to either that set forth in the Statute of Anne or set a fixed term of twenty or twenty-one years. No state was disposed to view copyright as creating a perpetual property right.

    The Massachusetts statute had an eloquent preamble which, by today’s standards, could fully as well have served as a justification for a patent statute. [FN137] It read:
    Whereas the Improvement of Knowledge, the Progress of Civilization, the public Weal of the Community, and the Advancement of Human Happiness, greatly depend on the Efforts of learned and ingenious Persons in the various Arts *350
    (Cite as: 7 J. Intell. Prop. L. 315, *350)
    and Sciences: As the principal Encouragement such Persons can have to make great and beneficial Exertions of this Nature must exist in the legal Security of the Fruits of their Study and Industry to themselves; and as such Security is one of the natural Rights of all Men, there being no Property more peculiarly a Man’s own than that which is produced by the Labour of his mind. [FN138]

    This same preamble was copied into the acts of Rhode Island and New Hampshire. [FN139] The preamble to North Carolina’s act expressed similar sentiments although more succinctly. [FN140] But neither Massachusetts nor any other state enacted a general patent statute assuring the right of inventors to obtain exclusive rights in their inventions for some limited period of time.
    One state, however, did address the issue, but did so in the context of its copyright statute.

    In 1784, South Carolina enacted a copyright law which contained the following clause: “The Inventors of useful machines shall have a like exclusive privilege of making or vending their machines for the like term of fourteen years, under the same privileges and restrictions hereby granted to, and imposed on, the authors of books.” [FN141] It is unclear whether the fourteen-year term was taken from the Statute of Monopolies or from the Statute of Anne. [FN142]
    Whereas the general legislative enactments, with the exception of that of South Carolina, were limited to copyright, after the end of the Revolutionary War various states began to grant patents to inventors for their *351
    (Cite as: 7 J. Intell. Prop. L. 315, *351)
    inventions through private laws and acts. [FN143]

    ***It is difficult to know exactly how many state patents were actually granted, but the number is unlikely to have exceeded forty. [FN144] The terms of these state patents varied from five years to twenty-one years, with the term increasingly being fourteen years, apparently patterned after the British practice. [FN145] Clearly, the states had determined to limit the term of any patent grant in much the same fashion as had occurred in Great Britain and for many of the same reasons.

    ***In 1787 the Framers were undoubtedly aware of both the state enactments concerning copyright and the state practices regarding the issuance of patents. These practices and enactments, along with the British practice, were part of the immediate backdrop to the constitutional convention. As evidenced by the ultimate content of the Intellectual Property Clause, they were quite prepared to give Congress power to act with respect to patents and copyrights, but at least initially this deference was not high on their list of priorities. [FN146] It was not until August 18, 1787 that the proposals which would ultimately be transformed into the Intellectual Property Clause were presented to the convention.

  72. 12


    I wish you luck on this petition (you’ll need all you can get and some Amicus support as well, including the US Solicitor General). From my brief glance through your petition, you’ve pushed all the right buttons (the “fairness” issue, conflict in the Circuits, Constitutional question, no more than 2 questions, etc.).

    The main problem you’ll have is that your representing the patentee, and SCOTUS right now is anti-patent. Also, SCOTUS will have to come to grips with what its Florida Prepaid decision means, and from what I’ve seen of SCOTUS on recent patent cases before them, the subtleties your making frankly go over their heads. Everyone in the patent (or even IP) world knows that 11th Amendment immunity for state insitutions isn’t always fair, but I doubt that SCOTUS will listen (for how “fairness” falls on deaf ears with SCOTUS, see Kelo v. City of New London). But good luck to you, what an experience to at least have the chance to make it to the High Court!

  73. 11

    Very interesting. Mr. Pincus generally writes excellent cert petitions, and this seems to be no exception. I’m curious to see what the response will be.

    “If we lose, all patent holders lose.”

    Well, not ALL patent holders….

  74. 10

    TJ, one more quick point — Florida Prepaid really is not at issue here at all. That case was about congressional power under Article I and the 11th & 14th Amendments.

    Perhaps you mean College Savings Bank, the companion case to Florida Prepaid. CSB repudiated the constructive waiver doctrine, and held that a state’s mere commercial participation in a marketplace does not effect a waiver of sovereign immunity.

  75. 9

    How is assigning the right to sue to the state’s exclusive licensees getting out of the marketplace? It’s only one change from the status quo: the state lets others do the suing.

    Once the state decides it wants to house a patent litigation business in the federal courts, then the courts have to decide the scope of the litigation waiver this effects. Lapides teaches that we draw those lines based on principles of fairness and consistency.

    Sure, there will be some fuzziness, but that is common in constitutional law, and it sure beats the current carte blanch rule, which even the state’s attorney concedes is unfair.

  76. 8

    I can only suppose that my responses are all going to come in the state’s brief anyway. But, the mandatory divestment option you suggest is not usually thought of as “participating” in the marketplace. More like “getting out of” the marketplace.

    As for the suggestion that states may from “time to time” enforce their patents, well, that both works and doesn’t. First there is the fuzziness problem. Second, if the fuzziness is replaced by a de facto rule, then a rule of, say, ten-cases-before-you-waive-immunity is no less gutting Florida Prepaid than a rule of one-case-and-you-waive. It just means that after California sues nine infringers, then all its patents become fair game.

  77. 7

    TJ, states don’t need to use federal courts to participate in the patent marketplace. California’s model is to find an exclusive licensee and retain the right to sue. Instead, it could just assign the patent outright. It doesn’t do that now because it makes more sense for both the exclusive licensee and the state to keep the power to sue in the hands of the entity that has the 11th Am. shield.

    Even if a state were to turn to the courts from time to time to enforce their patents, that would not effect a general waiver. As you can see from our petition, though, California has gone way beyond this. It’s analogous to a company becoming so regularly and continuously active in a forum that it has become subject to its general jurisdiction.

    We aren’t the first to notice the similarly of 11th Am. waiver-by-litigation to the concept of general personal jurisdiction. Justice Kennedy did so 10 years ago (see our petition at p. 25).

  78. 6

    Andrew, I am sympathetic to your fairness argument as a policy matter. But I do not see how you have a case without gutting Florida Prepaid. So far as I can see, the petition is making the exact two arguments I outlined. It is just instead of saying “Please overrule Florida Prepaid”; you say “Please gut Flordia Prepaid by creating a swallow-the-rule exception that, while state patentees can theoretically participate in the patent marketplace, they can’t use federal courts to enforce–meaning that their patents are worthless and they really can’t participate in the marketplace.” I doubt the Supreme Court will fall for it.

  79. 5

    Thanks, Kevin. I sent Dennis the PDF of the cert. petition, so perhaps he’ll put up a link. In the meantime, it’s available at link to

    TJ, we’re not challenging Florida Prepaid. Roughly speaking, we’re distinguishing College Savings Bank and arguing that the fairness and consistency principles of Lapides control here.

  80. 4

    Although I have my doubts about Florida Prepaid’s holding, doesn’t that case kind of make certiorari kind of unlikely? The petitioner has basically two arguments, but they are in tension with each other:

    1. “This is a important and recurring issue. Please overrule Florida Prepaid.” To which the Supreme Court will probably reply: “No, the case is not even 10 years old and there has been no material change in the Court’s composition.”

    2. “This is a quirky and unusual case, which is why Florida Prepaid does not apply.” To which the Supreme Court will probably reply: “So why should we devote our attention to it, exactly?”

    You can argue (1) or (2), but it is really hard to argue both.

  81. 3

    Dear Andrew:

    Best of luck with the cert petition. Is there electronic access to a copy – it would make enlightening reading and may encourage amici to get involved.

  82. 2

    I’m thrilled to see the most important patent law blog cover our cert. petition. Everyone — and I really mean everyone — agrees that the situation is unfair. As our opposing counsel told the Wall Street Journal, “It’s not fair but it’s the current state of the law.”

    If you have a client who agrees that “sue often and never be sued” should not be the rule for states in patent cases, please contact me as soon as possible to discuss potential amicus support. (510-528-8200;

    Even if your client does not wish to appear directly, it can encourage its industry trade association to do so. Right now, all of the major technology sector trade associations, and the U.S. Chamber of Commerce, are deciding whether to file an amicus brief in support of our position.

    If we lose, all patent holders lose. It is doubtful any patent holder would have enough incentive to bring this issue to the Supreme Court again.

  83. 1


    Re Justice Breyer, since the patentee has framed the questions presented (and invalidity is unlikely to be on the menu), are you suggesting Justice Breyer will try to raise the validity issue sua sponte?

    Second, while the patent is the same, a DJ action and an infringement action are two different things. It would be one thing for the state to waive immunity in a breach of contract case, and then claim immunity in a counterclaim (or a later claim) on the same contract. I don’t see this as the same transaction just because it is the same patent.

    And my reading of Florida Prepaid (not a case heard that long ago) is that States have the immunity no matter what their patent-obtaining (or enforcing) activity may be. Sovereignty is the issue, not conduct.

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