41 thoughts on “Two Question Sovereign Immunity Survey

  1. 8

    “The argument is that 101 is not an affirmative defense and not subject to any waiver.”

    But it seems to me that 101 is an ordinary defense, that at least ought to be able to be asserted by the defendant. However, you understand the 101 line of cases, it is clear that a defendant can bring up 101 as a defense to an assertion of patent infringement, as has been done many times since Mayo and Alice.

  2. 7

    Dennis did you see this one:

    “In January 2018, a Shenzhen court outpaced a federal court in San Francisco, ruling for Huawei and issuing an order blocking Samsung’s Chinese affiliates from manufacturing and selling 4G LTE smartphones in China. A judge hearing the parallel U.S. case in April ordered Huawei not to enforce the Shenzhen court’s ban.” Interesting that US Court can order a party to not enforce another courts Judgment. Extraterritoriality? From the Reuters story today.

    link to reuters.com

  3. 6

    Poorly formulated poll. Are we supposed to answer these questions descriptively, i.e. what we think the law is, or prescriptively, i.e. what we think the law ought to be? And when you say a 101 challenge, do you mean in the same court proceeding in which the patent is asserted by the university, or do you mean in an IPR or other challenge before the PTO? And what if, like David Hrcik, we think 101 challenges are not legally available, despite anything the English majors on the supreme court say?

    1. 6.1

      The poll is quick and dirty and can provide only a “feel” with ZERO accuracy as to either DEScriptive or PREscriptive notions.

      Not only can I choose to vote multiple times, in order to “see” any results, I have to vote at least twice.

      1. 6.1.1

        Nevertheless, the results of the poll will be enshrined as law. Historians can debate the merits of the process afterwards.


            That’s how sarcasm works in my mind. I’m responding more to A-mans comment than yours. Look at the last question he asks! I’ll leave my answer to David Hricek’s limited imagination.


              I’m responding more to A-mans comment than yours

              Take better care in your posts then, please (hint: don’t post like Les ).

  4. 4

    I wonder if the university’s acceptance of and exercise of the rights conferred by the federal patent grant wouldn’t constitute waiver of state sovereign immunity as to challenges to the scope and/or validity of that specific grant. This is a different question than if someone else sues the university for infringement. But when the university chooses to apply for and receive the federal grant of patent rights (a federal market regulation), and then chooses to exercise those exclusive rights (particularly in federal courts), it does seem, at the very least, to be an implicit waiver of any immunity (if any existed) as to examining the nature of the federal patent rights being asserted, including validity challenges. I didn’t see anything in your question limiting this to one of USPTO review or court review, so I’m responding as to at least court review. I think it may be an entirely different question if you’re asking about whether the university’s patents can be challenged absent their assertion (infringement action), or threatened assertion (DJ basis), by the university (Question 2). (Hunching down, prepared to be flamed by this forum for my ignorance.)

    1. 4.1

      Great point.

      Getting a patent granted by the federal government should itself be a waiver. Why get a patent if not to at least threaten enforcement in federal court.

      This should extend to DJ actions as well because if there is standing for a DJ action, ie imminent threat of enforcement by the state, this should also constitute a waiver. Would be bad faith for the state to threaten enforcement on one hand and then argue immunity from suit on the other on the ground that they did not intend to enforce in federal court (where else would they enforce it?)

      1. 4.1.1

        I think you may benefit from listening to the oral argument or reading the briefing.

        The state acknowledged filing suit waives affirmative defenses or compulsory counterclaims.

        The argument is that 101 is not an affirmative defense and not subject to any waiver.

        Fairness/bad faith isn’t part of the sovereign analysis. As acknowledged by the state – sovereign immunity is always unfair.


          Not bad faith as in unfair—a bad faith argument in that the defense would only arise when there is standing for a DJ action (ie threat of suit BY the state in federal court).

          Standing for a DJ action should be sufficient to also create a waiver.


            You missed the point being provided by Cosmo (it is the same one outright dismissed by Greg in his very first post on this topic) — venture over to some of the archives on the Hricik side of the blog.


              Well that is a collateral issue. And courts are treating 101 as a defense for other purposes, so until that changes, sovereign immunity can’t be based on that argument.


                There are certainly parallel tracks in the cross-hairs here (whether 101 falls under 282 is indeed a separable matter as to the entire “Sovereign immunity” question) – which is my point at 10:05 AM below).


                And courts are treating 101 as a defense for other purposes,

                Certainly, they are, and the court here says as much.

                But their saying it begs the issue in the first place — as the Hricik side of the blog has made its case; and the mere fact that the courts may be acting improperly is not a proper legal argument for the propriety of the action in the first place.

                This is a bit like saying “the score board says” when the larger issue is whether or not what the score board says has any (proper) meaning BECAUSE you first have to ascertain whether that score board is broken or not.

                What is ON the scoreboard cannot help you with that larger question.


            Standing for a DJ action should be sufficient to also create a waiver.

            The whole point of sovereign immunity is that there are circumstances that would open you or I to a lawsuit, but which do not open the sovereign to a lawsuit. That is what sovereign immunity is. There is not such thing as a circumstance that “creates” a waiver per se. There is a waiver if the sovereign waives the immunity, and not otherwise.

            It seems to me that what you mean above is simply that there should not be sovereign immunity. This is a fine and tenable position, but it is not a “waiver” of sovereign immunity. It is the negation of sovereign immunity.


              This entire argument is a non sequitir. You are saying there is a waiver if there is a waiver.

              Well what constitutes a waiver? Filing suit in federal court does, what else?

              Isn’t it an open question?


                His argument is different than how you are portraying it: waiver and negation are two different things.


                Isn’t it an open question?

                No, it is not. It was settled in College Savings Bank v. Florida Prepaid Bd., 527 U.S. 666, 670 (1999) (“[W]e have recognized only two circumstances in which an individual may sue a State. First, Congress may authorize such a suit in the exercise of its power to enforce the Fourteenth Amendment… Second, a State may waive its sovereign immunity by consenting to suit. This case turns on whether either of these two circumstances is present”).

                In Florida Prepaid the court concluded that seeking a TM registration does not amount to a consent to be suit relative to that TM. Mutatis mutandis, the same applies to patents.


                You are saying there is a waiver if there is a waiver.

                Well, yeah. The state sovereign waives immunity if the sovereign chooses to waive immunity, and does not waive immunity if the state sovereign does not choose to waive immunity. Somehow, this does not seem like a particularly startling or esoteric assertion to me.

                Incidentally, this is an important distinction between states as sovereigns and tribes as sovereigns. Congress can waive immunity for tribal sovereigns if Congress wishes. By contrast, Congress can only waive state sovereign immunity against the state’s will if the suit relates to a right arising under the XIV amendment (which, as the name would imply, came after and partially abrogated the XI amendment).

                In other words, unless we are talking about a right under the XIV amendment, there is no such thing as an implied waiver of state sovereign immunity. The state must explicitly waive, or else there is no waiver.

  5. 3

    Seems like a basic sword and shield issue. You gets a patent, you takes your chances, just like everyone else. Otherwise why bother with the form of a patent at all?

    1. 3.1

      This sort of misses the point of sovereign immunity. We do not treat the sovereign as special because there is some policy advantage to doing so. We treat the sovereign as special because the sovereign demands to be treated as special, and the sovereign’s demands get taken seriously (as the great Mel Brooks put it, “It’s good to be the king”).

      Sure, the fair thing would be to say that the sovereign’s patents are susceptible to DJ actions just like anyone else’s, but sovereign immunity is not about fairness. There are small children—sick with leukemia because of nuclear fallout from the sovereign’s missile tests—whose tort suits for compensation get tossed out on a demurrer. It does not get less fair than that. Compared to that, the insusceptibility of a sovereign’s patents to DJ challenge is rather small beer indeed. “Fair” just does not come into it.

      1. 3.1.1

        It’s already established that immunity can be at least partially waived in certain circumstances. It’s not an absolute right and the issue of immunity as it relates to patent infringement wasn’t seriously contemplated until relatively recently.

      2. 3.1.2

        Greg, sovereign immunity sort of misses the point of obtaining a patent.

        Why bother? Just use any invention you want, and prevent anyone from using whatever invention you want, because it’s good to be the king. Set forth the inventions you are taking/preventing in statue or regulation and call it a day.

        Why go to the trouble of using the patent office at all?


          I am afraid I do not quite follow what you mean to say here, Martin. How, except by patents, can the state of Florida stop someone in (e.g.) New Hampshire from using an invention made by a Univ of Florida scientist?


            Greg that’s my point. Florida’s sovereign is not the king of New Hampshire, so in effect, in the matter of inventions, they are not the king at all. The United States is the king when it comes to protecting inventions.


              … the Franchisor of the Public Franchise property right is the government at the Federal level.


                … note as well, that the Sovereign of the (individual) State is -still- not the originator of the patent property, as it still takes a real person (and not a juristic person) to be that originating inventor.

                This necessarily means that any property rights holder that happens to be a Sovereign has only acquired a particular property from the originating source, and can only obtain the sticks in the bundle of that property right that that originating source may have had.

                1. ..which leads to the point that answering any “Sovereign” question will NOT be based on patent law or the patent clause — with the concomitant realization that any answer to the “Sovereign” question will necessarily impact ALL instances of Sovereign immunity.

                  This facet screams for treading carefully – much more so than the typical “patents are bad” meme may invoke.


              The United States is the king when it comes to protecting inventions.

              Fine. And the King has chosen (XI amendment) to make the 50 co-sovereign states immune from lawsuit. Once again, this is not because such is good public policy, but simply because sovereign’s look out for one another (just like the Court of St. James was very happy to take in French royalty and Russian royalty after the respective revolutions in those foreign sovereignties).

              Fairness just does not come into it. The whole thing is a rotten bargain among potentates, but that does not make it any less real and binding. Attempts to imply a “waiver” from the fact that the patent that the sovereign has acquired was issued to a non-sovereign inventor who would be otherwise subject to DJ suit is not going to get you anywhere. College Savings Bank v. Florida Prepaid Bd., 527 U.S. 666, 687 (1999) (“[W]here the constitutionally guaranteed protection of the States’ sovereign immunity is involved, the point of coercion is automatically passed—and the voluntariness of waiver destroyed—when what is attached to the refusal to waive is the exclusion of the State from otherwise lawful activity”).


          Well, for one thing, a patent gives you nationwide rights. If you are a State (or a State university) at most you can give yourself exclusive rights in your own state. And, for that matter, under the Sears-Compco cases, states cannot grant patents. So you could not even exclude others within your own borders.

      3. 3.1.3

        Not sure if that’s right. Sure, fairness doesn’t come into play, but isn’t sovereign immunity really to protect states FROM suits for damages or an injunction in federal court by a private citizen?

        Is it really supposed to allow a state to assert a right AGAINST the private citizen in federal court while allowing the state to be immune from defenses?


          Is it really supposed to allow a state to assert a right AGAINST the private citizen in federal court while allowing the state to be immune from defenses?

          Definitely not. That is why #3.1 specifies DJ actions.

  6. 2

    It seems everyone knows the correct answers to the above questions but the states still get their immunity on the 2nd question.

  7. 1

    I am kind of surprised at how far of a lead “no” has right now on the second question. When I check the status at the n=80 point, “no” on the second question has 77.5% to 17.5% for “yes.”

    1. 1.1

      Maybe that reflects a “personhood” view…?

      IF you are going to have property like a person has property (be you a juristic person or otherwise), then you should be ready to have that property treated as property regardless of your “entity” status.

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