11th Amendment Immunity Waived by Requesting an Interference Proceeding

ScreenShot070Vas-Cath v. University of Missouri (Fed. Cir. 2006).

Interference proceedings arise when two patent applicants both hope to obtain a patent on the same invention. 35 USC §135. The PTO holds a mini-trial and (usually) grants a patent to the party with priority. This case arose over claims to a dual-lumen catheter used in prolonged hemodialysis.

The University of Missouri filed its patent application first, but Vas-Cath pushed its through the PTO more quickly — resulting in an issued patent. On Missouri’s request, the PTO initiated an interference — a process that lasted six years and eventually resulted in all nineteen claims being awarded to the University.

Vas-Cath appealed and the case was heard in the Western District of Missouri. Unfortunately for Vas-Cath, the district court quickly dismissed the case based on Missouri’s Eleventh Amendment immunity from suit in federal court. (District Court Decision).  Vas-Cath then appealed to the Court of Appeals for the Federal Circuit (CAFC).

11th Amendment Sovereign Immunity: The 11th Amendment, ratified in 1798 provides that:

The Judicial powers 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.

This has been interpreted to provide a state (or a state university) with absolute immunity from an action in federal court unless the immunity is waived or the State’s actions violate someone’s 14th Amendment due process guarantee. In general, a state’s participation in the patenting process does not imply any waiver of immunity.

Here, Vas-Cath argued that the University’s request for and participation in the interference constituted waiver, and the CAFC agreed:

[T]he University did not simply procure a patent through the routine of ex parte examination, but requested the PTO to conduct litigation-type activity, obtaining a favorable agency ruling for which the statute authorizes judicial review.

The CAFC found that the University had indeed waived its immunity by voluntarily entering into the litigation-type interference — thus negating its “assertion of immunity to bar appeal of that adjudication.”


9 thoughts on “11th Amendment Immunity Waived by Requesting an Interference Proceeding

  1. 9


    Leaving aside your last question, I think the key difference in your hypo is that the state is not requesting the interference. There is a big difference in 11th Am. jurisprudence between defensive participation in administrative proceedings (e.g., 9th Cir.: Quileute Indian Tribe v. Babitt; 2nd Cir.: McGinty v. New York; 1st Cir.: N.H. v. Ramsey) and where a state voluntarily invokes those proceedings (e.g., a different part of N.H. v. Ramsey).

    Counsel for Vas-Cath conceded at oral argument that if the PTO had ordered the interference (not the state), it would be a closer call. I thought the state’s best argument in Vas-Cath was that they had a duty under the regs to report the overlap with Vas-Cath’s issued patent. The court never seemed to give that much thought, though.

    In your more challenging hypo, I think we need to go back to the patent application stage, and say that if the state wants to obtain this federal patent right, it must be deemed to have consented to all PTO procedures pertaining to that application. That includes interferences, and Sect. 141, 146 reviews of those proceedings.

    The state could refuse to participate in the interference, or in the Sect. 141/146 reviews, but it should then be treated the same as any other nonappearing inventor.

    The question then would be whether the state is being impermissibly coerced under College Savings Bank. I think not. The state is not merely engaging in lawful activity here — it’s affirmatively seeking federal property rights. It is reasonable to for the PTO and the courts to demand that the states play by the same rules as private inventors when the state affirmatively seeks such rights.

    This isn’t like saying a state consents to federal court jurisdiction because it operates a railroad (Parden) or markets a financial product (College Savings Bank). Here the state is invoking federal agency procedures to obtain federal patent rights. It cannot fairly pick and choose which of those procedures it will follow, and which it will resist.

  2. 8

    I have a series of “what-ifs.”
    Assume the University’s patent had issued first. What if VAS-CATH, wishing to practice the invention, filed a DJ in the Western District of Missouri, asserting invalidity?
    Assume the University succeeded in getting the DJ dismissed on 11th amendment grounds. What if VAS-CATH then realized there was another way to effectively invalidate the patent? Because 35 USC 135 empowers the Board to consider all patentability issues, not just priority, VAS-CATH could copy the University’s claims to provoke an interference, then argue before the Board that the claims were unpatentable.
    Assume VAS-CATH and the University then argued the case at the board in essentially the same manner they just finished doing, with the University prevailing. What if VAS-CATH then returned to the Western District of Missouri with a civil action under 35 USC 146, making basically the same allegations they had made in their (now dismissed) DJ action?
    Waiver? No waiver? Why? Different facts? How? Different motives, but do motives matter? The only difference in the hypo that I can see is that in the hypo the private party was the one who copied the claims. But that is a matter of necessity, the patentee cannot re-write the claims of the patent.
    What if the University were the patentee but (concerned about priority) asked VAS-CATH to copy the claims of the patent? Can a state waive 11th amendment immunity by asking a private party to initiate an administrative review that involves the state?

  3. 7

    It’s true that a 35 USC 146 action is not identical to an appeal, but it is like an appeal in crucial respects: e.g., the court defers to the PTO’s findings of fact unless clearly erroneous and may consider only issues raised before the PTO. Most important, it is an action “for review of the ‘decision’ of the Board,” not a genuinely new action “against” the opposing party in interest (though for procedural purposes it is filed against that party). See General Instrument Corp. v. Scientific-Atlanta, Inc., 995 F.2d 209 (Fed. Cir. 1993). That puts Vas-Cath on all fours with Cohens. Strictly speaking, Cohens did not involve an appeal either, but a writ of error from a state criminal conviction, which formally made the state a defendant in error. But Chief Justice Marshall said form was not the issue. A defendant seeking review of a decision in favor of a state plaintiff was not functionally commencing suit against the state, so the Eleventh Amendment did not apply. The same principle applies to Vas-Cath, though I acknowledge the question is closer than I initially supposed. I’m a Fed Courts guy, not a patents guy, so I was unfamiliar with the niceties of section 146.

  4. 6

    mmmbeer, I respectfully disagree. I’m referring to the reasoning in Vas-Cath, not its specific holding. There is debate among the circuits in how to apply the 11th Amendment jurisprudence of the Supreme Court. In Vas-Cath, the CAFC chose a path helpful to those who are fighting states who use their sovereign immunity in a tactically unfair manner.

  5. 4

    I think the First “commentator” here is missing the facts that, as understood, the private party here was the one filing the Federal District Court 35 USC 146 “Civil Action..”, not the University. And furthermore, a 35 USC 146 “Civil Action..” is not just an appeal of the PTO Board’s (administrative agency) interference decision.

  6. 3

    Andrew – Tegic v. U.Texas might be closer to your fact scenario, and without knowing much more, it is not particularly helpful to your cause.

  7. 2

    Imagine a state that often files and threatens to file huge patent cases in the federal courts — indeed, some of the biggest patent cases in history. Might there come a point when that state can no longer fairly and consistently resist those same courts’ patent jurisdiction when called to account for the state’s infringement of others’ patents?

    That is not a hypothetical — it is what I’ll be arguing in two weeks at the CAFC regarding the state of California’s patent litigation conduct. The CAFC’s reasoning in Vas-Cath is very helpful to my position.

  8. 1

    This is the right result but an odd way of getting there. The Eleventh Amendment does NOT protect states against any old “action in federal court.” It bars only “suit[s] commenced or prosecuted against” states. Among other things, this means federal courts (usually the Supreme Court) can hear appeals from decisions rendered in favor of state plaintiffs (usually by state courts) with or without the state’s consent. These are not suits commenced or prosecuted against a state; therefore the Eleventh Amendment is simply inapplicable. See Virginia v. Cohens, 19 U.S. 264 (1821) (Marshall, C.J.). Vas-Cath is just such a case. The University of Missouri initiated interference proceedings against Vas-Cath, not vice versa. This makes Missouri a plaintiff, in effect if not in name, which in turn makes the Eleventh Amendment inapplicable to Vas-Cath’s appeal of the PTO decision, quite apart from any waiver.

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