California’s One-Sided Patent Regime: Litigating With Immunity

Biomedical Patent Management Corp. (BPMC) v. California Department of Health Services (on petition for certiorari)

BPMC’s patent infringement lawsuit against the California was dismissed after the state asserted immunity under the Eleventh Amendment of the US Constitution – a decision affirmed by the Federal Circuit. In its petition for certiorari, BPMC argues that the State has waived its immunity. BPMC presents two separate theories of waiver – one narrow and one broad. The narrow waiver theory focuses on the facts of this particular dispute – that California had previously voluntarily been a litigant in a case involving the same parties, same patent, and same infringing actions. The prior case was dismissed and then re-filed, but the state refused to participate in the second coming. The broader and more interesting waiver theory focuses on California’s deep and continued involvement in the patent system as a patent applicant, patent holder, patent plaintiff, and patent licensor. Particularly notable for this case is California’s extensive use of the Federal Courts to sue infringers. As posed by BPMC, the broad waiver question is: “Whether or in which circumstances a State may waive its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.”

Before granting certiorari in patent cases, the Court often asks the Solicitor General to provide the US Government’s views on the petition. In a recent filing, the Solicitor General recommended that the petition for certiorari be denied. On the narrow waiver question, the Solicitor sees the facts as too narrow to warrant Supreme Court attention. The SG sees the broader question as “undeniably important.” However, the Solicitor sees the proposed focus on whether a state has “regularly and voluntarily invoked federal jurisdiction to enforce its own patent rights” as “unworkable.”

“Under petitioner’s proposed rule, it is not clear at what point a State would be deemed to have voluntarily participated in enough federal court patent suits to have waived its Eleventh Amendment immunity from all such suits. Nor is it evident how a State would know in advance when it was poised to cross the waiver threshold.”

The Solicitor also notes that most of the issues were resolved by Florida Prepaid cases. Although well written, the Solicitor’s brief is just that – brief.

There are several reasons why I do not believe that the SG’s opinion seriously diminishes the chances of being granted certiorari. First, [some]* patent cases in the past decade were granted certiorari despite a SG recommendation against the grant. Second, the Supreme Court has already shown interest in the case by asking for the SG’s recommendation, and the SG recognizes that the issue is important. Third, the SG’s arguments of unworkability and lack of clarity are rather weak. The brief is just that – brief – and does not address many underlying constitutional issues. Fourth, the Supreme Court has already focused on this issue and has experience. However – as the SG notes, the issue raised by BPMC is not directly covered by the court’s prior rulings.

BPMC’s counsel – Andrew Dhuey – indicated that the Supreme Court may consider the petition in its January 9th Conference.



70 thoughts on “California’s One-Sided Patent Regime: Litigating With Immunity

  1. 70

    Mr. Dhuey,

    A smile came across my face when I read the question concerning Katz. I knew you could not answer it. Even so, it is an unusual case that I heartily recommend for those who may be interested in 11th Amendment jurisprudence.

    Seriously, Congress cannot predicate the waiver of state sovereign immunity under its Article 1 powers…unless that power happens to relate to bankruptcy law. The majority opinion left me fluxomed to the extent it relied upon a “they must have been assuming” test when drafting the Constitution. I can only wonder what “they must have been assuming” when they wrote “exclusive” in the Patent and Copyright Clause. As between the two the latter does seem to me to be just a bit more definitive of what “they must have been thinking”.

  2. 69

    I forgot to mention one more thing: the compliments many here have given me. Thank you, but please know that I deserve only partial credit.

    Our Supreme Court specialists — Andrew Pincus, Dan Himmelfarb and Brian Netter of Mayer Brown — wrote the cert petition, and regardless of what the court does on Jan. 9th, that petition will remain some of the finest legal writing I’ve even seen. I give them my highest recommendation for anyone hiring appellate counsel.

  3. 68

    Thanks for your thoughts, Mr. Slonecker. I am aware that I have not responded to some of your questions, and those of others. These questions touch on privileged litigation strategy decisions, so I’ll have to let them linger up there. I have responded to questions where it’s simply a matter of repeating the positions we have taken in court.

  4. 67

    Mr. Dhuey,

    Being the curious sort that I am, I can only wonder if any patentees have ever moved for a special bill in California and actually had one enacted. If this had ever happened since I began practicing “way back when” I am certain it would have received attention in the PTCJ. I recall not one instance where this has happened in California, much less any other of the states, commonwealths, DC, and territories. The silence is deafening.

    That said, and Rob C’s comments notwithstanding, I continue hewing to the line that in the absence of any meaningful remedy none of the SCOTUS opinions to date have slammed the door shut on patentees because of the 11th Amendment. The majority in Florida Prepaid struck down abrogation of state sovereign immunity by Congress in the basis that the legislation was overbroad, but left the door open for future legisltion more narrowly tailored to demonstrated state actions wherein patentees were left without any effective remedy.

    I mentioned California’s consitutional provisions because they do suggest that within the state there are at least two provisions that may have vitality to the issues presented in your case.

    I likewise mentioned the 5th (as incorporated via the 14th Amendment) and the 14th (Clause 1 for due process, and Clause 5 for Congressional enforcement powers), in large measure due to the apparent lack of an effective remedy under California law. The statement made by the California AG during oral argument before the CAFC underscores this point only too well.

    If “fairness” is an important issue upon which to hand one’s hat, it seems to me that the above certainly lend a measure of credence to the issue.

    Just a final observation that is not involved in this case, I have searched high and low for any journal publication by scholar or practitioner alike asking what I have always believed is a very fundamental question when both states and the federal government participate in the patent acquisition process; to wit, is either a state or the federal government an “inventor” within the meaning of Article 1, Clause 8, Section 8? I have spoken with a few law professors who each had the “gut” reaction “of course they can”, but it was clear in each instance it was a question that none had ever given any prior consideration. To some degree the same can be said of the Lanham Act enacted under Congress’ Commerce Clause power.

    Obviously, the arguments in the cert petition are directed to issues that in large measure are being raised due to prior case law. I believe the invitation for the SG brief demonstrates yours is not an open and shut case, a belief I am confident you share. While the SG brief takes largely contrarian positions on the issues, at least it provides the opportunity for your client to better hone in on the issues in an attempt to secure that one additional vote likely needed for the grant of cert. While by no means a certainty, I do happen to believe that a constant hammering away on the fairness issue, which I would repeat as often as possible, may prove beneficial.

    As I have stated before, I do look forward to reading your reply to the SG brief.

  5. 66

    Thanks, Rob. I actually think the court will grant cert. No, I wouldn’t bet my house on that, but I think that the four Fla. Prepaid/College Savings Bank dissenters are with us, and that they will have a powerful argument to make in conference to the other justices. They need to persuade only one of them. Note that Justice Alito has yet to weigh in on these highly contentious 11th Am. cases.

  6. 65

    I think Mr. Dhuey and Malcom raise good points on this This case is not necessarily the “perfect” case because there is not an underlying statute that expressly calls for abrogation of 11th amendment sovereign immunity in patent cases as there was in Florida Prepaid. A direct comparison to Florida Prepaid is not appropriate, but some propositions from both the Florida Prepaid majority and dissenting opinions should be of concern.

    Without getting into how the 11th Amendment has been the poster child for constitutional conservative judicial activism (i.e. the 11th amendment means more than it actually says), I am curious as to why BPMC dropped its argument that Cent. Virginia Community College v. Katz, 546 US 356 (2006) implcitly overruled Florida Prepaid. Prior to this, you had Seminole Tribe and Florida Prepaid precluding the theory that you could have abrogation of sovereign immunity based on the Article I powers. Yet 2 years ago, we have Justice Stevens finding abrogation by necessity with regard to the bankruptcy clause. Maybe there is not a perfect conflict with Seminole Tribe/Florida Prepaid because there was no discussion on whether federal bankruptcy laws satisfy the Atascadero standard, but the uniformity argument that Justice Stevens talked about in Katz was a carryover from his dissent in Florida Prepaid where he argued that abrogation of sovereign immunity in patent cases is inherently necessary to carry out and execute the federal patent system.

    Second, and even more troubling, was the suggestion by the SCOTUS in Florida Prepaid and later the CAFC in Jacobs Wind v. Florida, 919 F.2d at n.2 that filing common law infringement-type actions in state courts might be a viable alternative. There is currently a split among at least two states on this point. In Jacobs Wind, 626 So.2d 1333 (Fla. 1993), the plaintiff filed a tortious conversion claim in state court after the CAFC affirmed dismissal of the case in federal court on sovereign immunity grounds. The Florida Supreme Court basically ignored the exclusive federal nature of patent law and allowed a verdict against the state to stand because the Court thought it unfair that if the state action was dismissed on sovereign immunity grounds, there would be no available forum for the claim. This notion, it said, violated tenants of the Florida constitution.

    Compare and contrast this with Miracle Boot Puller v. Plastray Corp., 269 N.W.2d 496 (Mich. Ct. App. 1978) In this case, the Michigan Appellate Court tossed a general verdict for the patentee who sued based on tortious conversion of patent rights. The Court held that there was no jurisdiction because the conversion claim that had gone to the jury sounded in patent infringement of which the federal courts had exclusive jurisdiction under 28 USC 1338(a).

    One could argue that the state could have, as CJ Rehnquist suggested in Florida Prepaid, a mechanism for bringing a claim, such as a claims bill (or a court of claims that some states have), but again, arguably, 28 USC 1338 strips these courts of jurisdiction as well because the common law cause of action is inherently federal in nature (i.e. patent infringement – see Hercules v. Minn. State Highway Dept., 337 F.Supp 795 (D. Minn. 1972) and Lemelson v. Ampex Corp., 372 F.Supp. 708, 710 at n. 2 (N.D. Ill. 1974))

    It was suggested earlier that a 14th amendment claim might also be viable. However, the CAFC already knocked this out in State Contracting & Engineering Corp. v. Florida, 258 F.3d 1329 (2001) Here the plaintiff brought a 42 USC 1983 claim for the taking of it patent rights (intangible property) by the state. The CAFC, citing to Quern v. Jordan, 440 US 332 (1979) held that since 42 USC 1983 didn’t contain an express abrogation of sovereign immunity, the patentee could not use it as recourse against the state.

    The SCOTUS and the CAFC have really muddied the waters and have never conclusively stated whether a common law infringement-type state court claim is a viable alternative to a federal infringement action when sovereign immunity is asserted.

    That all being said, the prime question is how voluntary dismissals are treated and from the looks of it, the SG really took BPMC to task over the 6 year statute of limitations running on this and why it took so long to re-file the action. If the court treats each refiling as an insular event, the third filing of the lawsuit doesn’t read on the earlier two. If they are then separate, then CA’s waiver by litigation conduct doesn’t extend. The civil procedure might do this cert. petition in if the SCOTUS is going to stick to its philosophy of selecting and deciding cases on extremely narrow grounds. If they can deny cert. based on the civ. pro. issue, why would they even bother to look at argument number 2 over the fairness or unfairness of a state suing to protect patents while blocking attempts by others to enforce their patents against state infringement.

    One more thing to consider, if you allow form infringement actions against a state agency, based on the astronomical verdicts and settlements we have seen over the past couple years in patent cases, would opening the door to this really be fiscally healthy to the state itself and endanger its ability to function? One might say, well then the state shouldn’t infringe my patent, but on the flip side, if suing states for patent infringement snowballs into a tidal wave down the road, akin to med-mal and other personal injury categories, then guess what happens to your taxes and the ability of the state to provide services to its citizens. Just a thought.

    Ultimately though, I think this issue is likely to be catagorized as a legislative question. The solution either has to be by a constitutional amendment or by another act of congress that passes the scrutiny set forth in Florida Prepaid.

    Mr. Duhey, I wish you luck the best of luck. I share in the sentiment that you have gotten this case to a point not many cases get to. Congratulations whatever the outcome.

  7. 64

    Mr. Slonecker, I believe that there is no state law remedy in California. The state’s attorney said at the CAFC oral argument that she too was unaware of any such remedy.

  8. 63

    “…empty, self-serving hoohaw.”

    Who better to identify the above characteristics than you, Mooney. You forgot “doo doo.”

  9. 62

    Mr. Dhuey,

    You may not be aware that I am admitted to practice in California, even though I now reside in Florida. As a consequence I am well familiar with the provisions of the California Constitution. In the context of state infringement of intangible property, both state (e.g., state trademarks, pre-1978 state copyrights) and federal, I have always been struck by two provisions of the California Constitution that appear to bear upon such intangible property. Two provisions are noteworthy; namely, Article 1, Section 1 (interesting in that it recognizes the acquisition and defense/protection of property is a fundamental right of the people), and Article 1, Section 19 pertaining to “takings” of property and the mandate for “just compensation”.

    The above provisions notwithstanding, I have never been able to locate any state statute that even remotely appears relevant to the taking of intangible property such as by infringement of patent rights. Might you be aware if any such statute even exists within the California Code or its Administrative Regulations, and if so where it can be found?

    Obviously I am asking this question because of Clauses 1 and 5 of the 14th Amendment, as well as the possible application of the 5th Amendment pursuant to the 14th Amendment.

  10. 61

    Now you’re getting somewhere, Mr. Mooney. Yes, it is “fair” to hold that when California files a DJ action on a patent, it waives its immunity with respect to the compulsory counterclaim for infringement.

    Fairness and consistency — that’s the test for the existence and scope of litigation waivers under Lapides. The question in our case concerns the fairness and consistency of California’s overall patent litigation (actual and threatened). It is a question of first impression.

  11. 60

    Thanks, AllSeeingEye. Unfortunately, my contribution on this issue so far is serving it up to the Federal Circuit, only to have the court flatly reject our postition in a precedential decision that will bind all district courts and future CAFC panels. Let’s hope the Supreme Court takes this up next month.

    As for that OSU article, keep in mind that it predates the Supreme Court’s Lapides decision, and that Lapides overruled Ford v. Dep’t of Treasure of Indiana.

  12. 59

    “Finding waiver under the facts of the Biomedical case will do little to disrupt 11th amendment jurisprudence”

    That depends on exactly it is that you think UC has waived and what the relevant facts are that justify that waiver, i.e., your statement is empty, self-serving hoohaw.

    Andrew wrote: “the question of litigation waivers turns on the “judicial need for fairness and consistency”

    If UC had filed for a declaratory judgment of invalidity of a patent in Federal Court, I agree that UC would have waived its 11th amendment immunity with respect to a lawsuit for damages related to the infringement of that particular patent. That’s fair.

  13. 58

    Here is another fascinating article on the waiver-by-litigation doctrine. Since it is not written on a bathroom wall, it may be slightly beyond Mooney’s reading comprehension level.

    link to

    As usual, Mooney’s glib treatment is worthless for informing the debate.

    Finding waiver under the facts of the Biomedical case will do little to disrupt 11th amendment jurisprudence. Regardless of the outcome, the decision will only serve to clarify and solidify the voluntariness doctrine.

    Thank you Mr. Dhuey for your contribution to the law.

  14. 57

    Mr. Mooney, the Solicitor General acknowledged that this issue “is not precisely the same as the constructive-waiver argument rejected in College Savings Bank.” (p.15). You are simply incorrect that the court has already rejected our argument in any other case.

    Of course, the court might very well reject our argument, explictly or implicity. But it has not yet addressed the full scope of state litigation waivers. Your citation “to all of the cases that stand for the proposition that the 11th amendment requires that states can’t be sued for damages in Federal Court” ignores the entire waiver-by-litigaiton doctrine.

    Neither College Savings Bank nor Florida Prepaid concerned litigation waivers, and Lapides held that the question of litigation waivers turns on the “judicial need for fairness and consistency”.

    Will the court agree with our position? We’ll find out Jan. 9th or 12th, but nothing the court has said so far answers our question either way.

  15. 56

    “You are wrong about that, and you thus cite to no decision in response to my question.”

    I would cite to all of the cases that stand for the proposition that the 11th amendment requires that states can’t be sued for damages in Federal Court. Those cases don’t say that States can not sue private entities in Federal Court. In fact, because they contemplate express waiver of immunity (at least), the opposite is true, i.e., the 11th amendment gives states immunity from being sued for damages in Federal Court but lets them sue private entities for damages in those same courts.

    This situation is “unfair” to the private entities, under just about anybody’s definition of “unfair.” It’s why so many of us sat around shaking our heads as we watched modern 11th amendment jurisprudence “evolve” (i.e., progress from some half-baked concept in the back of some law clerk’s mind to a majority opinion of the Supreme Court).

    Of course, it’s not the first time the Constitution would be found to be biased in some way that is not fair. Unfairness does not necessarily mean “bad for the country.”

  16. 55

    Mr. Mooney, the legal term for your response is non-responsive. You claimed that “the Supreme’s have already decided that the ‘unfairness’ [of using the courts to enforce patents while claiming immunity when accused of infringement] is firmly built into the Constitution”. You are wrong about that, and you thus cite to no decision in response to my question.

  17. 52

    Once again, particularly to Mr. Hutz, I would not advocate, nor do I think the court would find, that a single historical instance of asserting a patent by a state should waive all future immmunity defenses in patent cases.

    However, I would say that if a patent in the technical area in question has been asserted by the state, the state cannot then claim immunity in an action arising under the same technology.

  18. 51

    I don’t want to beat the dead horse, Andrew. But if the sort of waiver that you and Lionel are contemplating exists, then the 11th amendment is … a pile of doodoo.

    I think that may in fact be the case but I don’t think Scalia agrees. The 11th amendment is his baby.

  19. 50

    Mr. Mooney, Mr. Hutz is referring to the unfairness of a state’s simultaneous enforcement of its patents in federal court and assertion of immunity in those same courts when accused of infringement. Can you point me to language in any Supreme Court opinion holding that this particular unfairness is “firmly built into the Constitution”? Again, we’re talking about a state’s affirmative patent litigation.

  20. 49

    As bierbelly noted, Lionel, the Supreme’s have already decided that the “unfairness” you are referring to is firmly built into the Constitution. What Clarence and Antonin recommend is calling your congressperson to pass appropriate legislation, or amend the Constitution to fix the problem.

    Should be easy, right?

  21. 48

    In response to the Solicitor, how about just once as plaintiff. If a state or a state entity has ever used the courts to enforce a patent that it owns or to which it is the exclusive licensee, then it has forever waived it’s right to immunity. Either that or States should not be allowed to own or enforce patents. One or the other, but the current system is patently unfair.

  22. 47

    IMO, this group of “strict constructionists” and “states rights advocates” would die before they’d agree that CA has waived it’s 11th Amendment immunity from suit.

  23. 45

    Lapides is discussed at length in the Petitioner’s briefs to the Supreme Court. It should likewise receive attention in its reply brief responsive to the SG’s opinion.

  24. 44

    Dear AllSeeingEye,

    I’ll bet Mr. Dhuey will enjoy reading the
    “Lapides v Board of Regents of University System of Georgia” case on the link directly above when he wakes up.

    * * * * *

    Incidentally, this California Court webpage is stunningly beautiful with its 3-D effect.

    While I’m at it, Professor Crouch, your new banner is pleasant but wanting for a graphic artist’s professional make-over.

    And this “Next,” “Next” … stuff is cumbersome at best. Didn’t you say you’d do-away with multiple pages for one thread?

    I’ve been meaning to ask, what is the lag time before a particular thread is Patently-O searchable?

  25. 42

    The following link has a case on point.


    Worthless jokes notwithstanding, it appears that 11th amendment immunity is alive and well and subject to waiver based on voluntary conduct of the party asserting it. No special facts required.

  26. 41

    “If there was such a thing as a “general waiver” by virtue of UC’s actions, then 11th amendment immunity is a worthless joke.”

    No it isn’t. Your logic is a pile of worthless crap.

    Immunity is like a privilege ~ a defensive shield if you will. Well established waiver principles dictate that when you try to use defensive shields as offensive shields, they should be taken away.

  27. 39

    Mr. Slonecker, I hope so. Even the most ardent federalist should be troubled by what California is doing with its sovereign immunity in patent cases. I think the authors of the Eleventh Amendment would never have imagined a state’s operation of a patent litigation business, housed in the federal judiciary.

  28. 38

    Mr. Dhuey,

    If I understand what Judge Gajarsa was told during argument before the CAFC, it would appear that Florida Prepaid would not need to be overruled. Rather, and as Florida Prepaid recognizes, the 14th Amendment does retain vitality, notwithstanding the 11th Amendment, when a state fails to comply with due process by providing an effective state remedy. Of course the state can always say that special bills can be introduced in Sacramento, but why am I left with the conviction that the phrase “snowball’s chance…” is almost certainly the result under your client’s circumstances?

    As I noted earlier, I do look forward to reading your reply brief to what the SG has posited. Given what Scalia wrote in the majority opinion concerning the absence of an effective state remedy, perhaps even he might find your client’s situation troubling…especially if FPP remains untouched.

  29. 37

    “Mooney, I don’t see how it is possible for “better” facts to come along on the second question (general waiver in patent cases).”

    With respect to this general waiver question, I just can’t see the Supremes addressing this. At least not *these* Supremes. If there was such a thing as a “general waiver” by virtue of UC’s actions, then 11th amendment immunity is a worthless joke. Frankly, I think 11th amendment immunity *IS* a joke. But Scalia certainly didn’t think so when he or one of his clerks thunk it up over Thanksgiving dinner a few years back. He thought it was very real and if it could be “generally” waived merely by the state regularly asserting itself in Federal Court, then I don’t see why he or anyone else would have bothered.

  30. 36

    TJ, we document in our petition how often this issue recurs. The Chamber of Commerce makes the same point. If the CAFC decision stands, this question will probably not recur in litigation, but that would simply be because the CAFC settled the issue, and there would be no point for a patentee to raise it again.

  31. 35

    Mr. Slonecker, Judge Gajarsa posed that question to the state’s attorney at oral argument. She was unaware of any such remedy. Likewise, I am unaware of any such remedy.

  32. 34

    Mr. Mooney, I don’t see how it is possible for “better” facts to come along on the second question (general waiver in patent cases). California is not only the most litigious state in patent cases, it is also arguably more aggressively litigious in patent cases than any entity, public or private.

    As I said above, why would a patentee raise the general waiver issue in a future case if the court denies cert. in our case? The CAFC decision here rejects this argument completely, regardless of how many patent cases a state files. This decision currently binds all district courts and future CAFC panels. So, it is hard to imagine why a patentee would go to the expense of litigating this issue, when the only hope of success would rest with a cert. petition repeating the same argument we are making.

  33. 33

    I don’t think Labcorp was a particularly good cert. candidate for the obvious reason that the question presented was rather clearly defaulted in the lower court. Procedural default is one of those areas where each case pits a sympathetic plaintiff against a harsh result, but if you make too many exceptions then chaos will result.

    As for whether BPMC is a good set of facts, it is as good a set as any other for the second question presented. Patentee sues state and notes that state university has been suing lots of other people; which happens all the time. The problem for BPMC is that they have to show two things: (1) this is an important and recurring question, and (2) this is the best case to decide the question. There is an inherent tension between saying that the issue will recur and saying that nobody will ever petition for cert. again. Not an irreconcilable tension, but a tension nonetheless.

  34. 32

    Dear Mr. Moaney,

    “In whose interest is it to increase the liability of the Universities to patent lawsuits?”

    The inventors.

    Why the heck should Caleefourkneeah or any other state be able to steal anyone’s intellectual property? It is a farkin’ legal loop hole that needs to be plugged. And please, don’t shoot my whte bunny.

    With all due respect, you Just do not understand Intellectual property Rights, never did. You have a similar defective mental attitude as the asswholes who have no freckin’ idea how to manage the PTO. No offense, of course. What’s new and funny?

  35. 31

    Mr. Mooney,

    Concur, but it is useful to bear in mind that due process per the 14th Amendment is likewise quite pertinent, as the majority in Florida Prepaid so noted.

  36. 30

    Did I hear your crap detector explode again? Yes!, yes I did. Go have a drink, suck on a carrot and recant, recant till you see pigs flying — and don’t shoot any bunnies.

  37. 29

    “A state agency knowingly infringes a private party patent, but then uses the shield conferred by the 11th Amendment to say “So what? We are free from suit, so perhaps you should go to Malibu or some other beach city and ‘pound sand’.”

    Uh, yes, but that’s what 11th immunity means. We’re well beyond that point. The issue is what facts are required to waive the immunity. One way is express waiver. The other way is implied waiver. If UC had filed a declaratory judgment act against the patentee and then settled, and then later violated the settelement and claimed immunity, then we’d have some good facts.

    That didn’t happen here.

  38. 28

    “Why the heck should Caleefourkneeah or any other state be able to steal anyone’s intellectual property?”

    Stealing. LOL. As if the UC system is selling someone else’s patented product for a profit.

    I like the public schools and universities to be safe from patent trolls. It’s a good thing. It’d be nice if we all were safe from patents asserted by non-practicing entities. It’d be a net benefit to the economy too.

    Listen closely for that flushing sound, JAOI. You don’t want to be surprised when the water rises and there are no more logs to grab onto.

  39. 27

    Mr. Mooney,

    In my view the facts in this case are just fine. A state agency knowingly infringes a private party patent, but then uses the shield conferred by the 11th Amendment to say “So what? We are free from suit, so perhaps you should go to Malibu or some other beach city and ‘pound sand’.” I have seen virtually identical situations play out in matters between the USG and a private party, with the USG saying “Yes, we have waived some immunity. It is just that we have not waived immunity you need. We hear that California tells parties such as yourself to “pound sand”, and have elected to adopt that retort as well.”

    The problem here is in my view strictly one of law, and presents a situation where the plaintiff hopes via its cert petition and reponse to the SG brief to sway one additional justice to join ranks with the 4 who dissented in Florida Prepaid and College Savings to grant cert. My targeted justices would of course be Roberts and Alito.

  40. 26

    “In whose interest is it to increase the liability of the Universities to patent lawsuits?”

    The inventors.

    Why the heck should Caleefourkneeah or any other state be able to steal anyone’s intellectual property? It is a farkin’ legal loop hole that needs to be plugged.

  41. 25

    “Indeed, this is probably the one and only opportunity for the Supreme Court to decide the issue.”

    What? As we discussed earlier, the facts could be better for the petitioner (i.e., more offensive to the Supreme’s sensibilities). Why do you believe those better facts will never arise? If they will never arise, perhaps that is another good reason for the Supreme’s to leave the law as is.

    Maybe I’m mis-remembering these 11th amendment cases, but wasn’t this sort of thing contemplated and didn’t the Supremes suggest that States could change their laws to fix it? It’s interesting that most Californians don’t seem terribly upset that their public universities have this “advantage.” In whose interest is it to increase the liability of the Universities to patent lawsuits?

  42. 24

    Obviously, the word “like” should read “link”. I do not lay claim to being a proficient typist.

  43. 23

    Mr. Dhuey,

    I look forward to reading it in due course. Perhaps when filed you may be able to provide a like at this site.

    BTW, and merely as a matter of personal education and interest in government/private party disputes under our patent laws, does California provide under these circumstances a remedy consistent with the due process principles set forth in Clause 1 of the 14th Amendment? Yes, I am familiar with the jurisdiction issue associated with Title 28, but for the purposes of my question I am placing it to the side.

    I ask this in view of the dicta in the Florida Prepaid majority opinion suggesting that a cause of action might accrue as a constitutional violation should a state fail to provide an effective remedy under its state laws.

  44. 21

    TJ, I think the problem is that the SG is looking to pick and choose the best cases to create the law they’re looking to implement. Metabolite v. Labcorp was a good candidate to take on the “thinking step” patentability issue, but nothing significant happened, thus no material change to the patent law system. Now, we have a case where the Cali gov’t is enforcing their patents, but hiding under 11th Amendment immunities. Again, the SG claimed this was not the right case to create this kind of law, noting that the issue is really a problem. I can think of a few more examples of this off the top of my head.

    Pardon the baseball analogy, but it’s unfortunate that the courts are looking for a slow pitch down the middle to assert the law they wish to implement. Perfect cases only come once in a while, and we are racking up issues that need to be addressed, and the courts keep going silent. This is not justice — not for the litigants, not for the patent law system, and not for the country. Stop looking for the perfect cases, and make the wronged litigants whole by hearing cases where there has been an injustice done at the lower courts, because by being SILENT, you are creating precedent and BAD LAW. Just stop it.

  45. 20

    Mr. Dhuey,

    As a matter or curiosity, is there precedent for filing a supplemental brief by the Petitioner to address the points raised by the SG?

  46. 19

    YOYO, let me clarify: the CAFC decision in this case binds all district courts in patent cases. The court decided this as a matter of Federal Circuit law, and that is binding precedent on district courts when they hear patent cases.

  47. 18

    “Mooney’s taking the safe bet”

    …and this is surprising why? Who could have predicted such a pile of garbage.

  48. 16

    “Regular and voluntary” invocation of federal jurisdiction is simply the basis for the broad theory and would not IMO be the appropriate test. Therefore, the SG’s notion that the issue is unworkable is specious.

    I would say that the proper rule should be ANY voluntary invocation of federal jurisdiction, limited to a particular matter, e.g. a particular patent or particular dispute arising under the same or related patents where the State was voluntarily invoking jurisdiction, should waive immunity as to that particular matter only.

  49. 15


    nicely put – but a denial to hear does not mean I’ve heard and I refuse to say anything.

    While the effects may be similar, the meaning is truly different.

  50. 14

    West Coast Guy, I agree with you in general. But I also believe that the circumstances of this case are such that the grant or denial will be based on the justices’ views of the merits. There is no serious dispute about the importance of this case, and since the CAFC decision will, if it stands, bind all district courts, there is no reason for the court to let this issue percolate. Indeed, this is probably the one and only opportunity for the Supreme Court to decide the issue. If they deny cert., which patentee will be willing to endure defeat at both the district court and the CAFC, simply to have a chance to raise this same issue in another cert. petition?

    I think there is every reason to believe that the grant/cert decision here will be based solely on the court’s agreement or disagreement with us on the merits.

  51. 13

    Andrew Dhuey,

    “I am grateful that win or lose, the justices themselves will now consider this issue on the merits.”

    No. A denial of cert is NOT a review on the merits. I will agree with you, however, if you mean to say that at least the USSC will have the opportunity to hear arguments from a person (here, the SG) other than the parties themselves.

    Hats off to you for having drawn your matter to the Supreme’s attention and for receiving the SG’s input.

  52. 12

    I can’t dispute that it is the safe bet, statistically speaking. But I’m not playing this according to the odds. I explained my reasoning in the previous threads.

    As others have noted, Andrew has at least moved the football into field goal position. Unfortunately, I think Lucy van Pelt is the placeholder.

  53. 11

    Dennis, I have to disagree with you quite strongly here. First, what are the “several” patent cases that the Court granted over the SG’s recommendation of denial? I can only think of Labcorp, which they then dismissed as improvidently granted. Hardly an experience they would want to repeat.

    Second, the brief is quite short as you point out. But why is that a good sign? A short brief by the SG means they see nothing important enough to write at length about.

    Third, the SG’s brief does not address many underlying constitutional issues because they are all foreclosed by Florida Prepaid; which has always been the big problem with this case. And there just doesn’t appear to be a fifth vote to overrule that case.

  54. 10

    It’ll be interesting to see what happens to this.

    * Malcolm Mooney’s taking the safe bet, but that says very little about the cert-worthiness of the issue. Except in the rarest of circumstances, even the best cert petitions have a less than 50% chance of being granted.

    * Dennis is right that the brief is cursory and doesn’t necessarily kill the petition’s chances, but it’s a setback at the very least.

    * Andrew Dhuey is probably right about when the Court will consider the petition. The last distribution of briefs for the December 12 conference has already happened, and January 9 is the next conference on the Court’s schedule. link to

  55. 9

    “Keep in mind that this particular aspect of state immunity has implications well beyond patent law.”

    Actually, that is exactly why cert will be denied. The patentee’s case just isn’t compelling enough to warrant the Supreme’s attention. It’s not as if they don’t have any other cases with “broad implications” on their docket.

    The trend I’m watching for is for liberals to increasingly rely on Rehnquist-era Commerce Clause jurisprudence as a shield to block or kill federal legislation aimed at promoting allegedly “moral” behavior.

    Also, after Obama’s appointments, it will be a great pleasure listening to Scalia whine again about he is going to quit because the Court is so liberal. LOL!!!!!!!

  56. 8

    Thanks, EG. The SG agrees that this issue is “undeniably important”, but disagrees with us on the merits. I am grateful that win or lose, the justices themselves will now consider this issue on the merits.

  57. 7

    OK, I’m a contrarian by nature – I think cert will be granted. Keep in mind that this particular aspect of state immunity has implications well beyond patent law. So I don’t think SCOTUS will care that the petition is by a patentee looking to enforce a patent.

  58. 6

    Given that the SG has thrown very “cold water” on granting this petition for cert, that makes for a very uphill battle. It might be different if it was the alleged infringer who was asking for cert. But given that this petition is by the patentee, SCOTUS isn’t generally willing to get involved. (With very rare exception, SCOTUS doesn’t like patentees.) The only exception I can recall recently is Festo, and that was because of what SCOTUS viewed as a too rigid an application of PHE, which, as KSR International has shown, SCOTUS doesn’t like “rigid rules.” (Another another sensitive area with SCOTUS.) Sorry Andrew, but that’s how I set it. But you’re still to be commended for getting this petition this far.

  59. 5

    I’m going to be on the record that D should stay right where he is and continue his fine blogging so that I may partake. He could probably charge like 1$ to get in and be able to quit his day job.

  60. 2

    Dennis, I would like to go on record as supporting your nomination to the Supreme Court of the United States.

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