Supreme Court News: Eleventh Amendment Immunity Question

Today is a Supreme Court theme day. The lawyers running SCOTUS blog have projected Biomedical Patent Management Corp. v. < ?xml:namespace prefix ="" st1 />California Dept. of Health Services as one of the more likely candidates to be granted certiorari after the Supreme Court’s April 18 conference. Hal Wegner also has the case on his updated top-ten patent cases to watch.


  • Case Name: Biomedical Patent Management Corp. v. California Dept. of Health Services
  • Docket No: 07-956
  • Questions Presented:
  • 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; 
  • Whether a state waives its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights. < ?xml:namespace prefix ="" o />
  • Patently-O Discussion of Case
  • Opinion below (Federal Circuit)
  • Petition for certiorari
  • Brief in opposition
  • Petitioner’s reply
  • Amicus brief of the Chamber of Commerce (in support of the petition)

    7 thoughts on “Supreme Court News: Eleventh Amendment Immunity Question

    1. 7

      I had expected to learn about a decision on the petition this past Monday when the Court typically issues its orders. I was surprised no orders list was published. Any information on when the decision might be forthcoming?

    2. 6

      Thanks, e#6k. I think we’ve made a compelling case for Supreme Court review. The Chamber’s brief provides an excellent overview of what is at stake here.

    3. 4

      Mr. Slonecker: the critical distinction here is between the merely commercial conduct of acquiring and licensing patent rights and the litigation conduct of suing others for patent infringement. The degree to which Congress can abrogate state sovereign immunity in patent cases and the scope of a state’s waiver in its affirmative patent infringement actions are very different matters.

      While others have conflated these qualitatively different things, we think the Supreme Court will expressly distinguished them.

    4. 2

      Congress tried to do this with the Patent Remedy Act and was slapped down, with quite stringent conditions being imposed before any legislative attempt to effect a blanket waiver would receive favorable consideration before the SCOTUS. It seems an uphill struggle to have the judiciary do that which is denied Congress except in the most limited of circumstances, particularly in view of the fact that this is an issue involving but a small handful (if that) of states.

      Congress does have various means at hand to rectify situations such as this without touching upon 11th Amendment issues. Perhaps it should re-read Article 1, Section 1, Clause 8 and then bring some creative thinking to the table. Of course, this would require legal counsel for the cognizant Congressional committees to actually have a comprehensive understanding of our patent and copyright laws.

    5. 1

      A good case, that fella in charge of the case was commenting, how’s it goin Andrew? Things shaping up?

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