State Immunity from Patent Infringement: Bargaining for Grant Money

In 2000, Todd Dickinson testified before Congress that the state immunity from patent infringement was unfair – especially because states are such major players in the patent system. Since then the situation has become even more dramatic. States and their entities (largely university systems) have obtained thousands of patents and have recovered hundreds of millions of dollars in royalties.

In his testimony, the then PTO director suggested what he saw as a “reasonable and equitable approach” to condition the ability of state institutions to obtain federal protection of intellectual property on their waive of sovereign immunity for patent infringement.

“A legislative solution which elicits state waiver of sovereign immunity in exchange for the right to own federally-protected intellectual property must respect, and be in harmony with, the commercialization goals of the Bayh-Dole legislation.”

Clearly, this type of activity is anti-federalist, but it is not far afield from current practices in other areas of government.


Supreme Court Patent Update

Completed Cases: The Supreme Court has denied certiorari of two pending appeals: BPMC v. California and Rattler Tools v. Bilco. In BPMC, the patentee had challenged the Western state’s defense of sovereign immunity. In Rattler Tools, the appeal challenged a non-precedential claim construction opinion.

Upcoming Case: In a recently filed petition, 800 Adept has asked the Supreme Court to build on its 1995 Markman decision and consider “whether a district judge’s construction of a patent claim is ever entitled to deference upon appellate review, or, instead, are all such claim constructions reviewable only de novo, as the Federal Circuit has, over many dissenting opinions, held?” In this case, the Federal Circuit had reversed the lower court’s claim construction and – as a consequence – also reversed the jury verdict of infringement. [Link]. FTC v. Rambus is the most likely candidate of patent cases in the petition stage. That case involves the activities of a patentee during a standard setting process. In a related case, well respected Federal Judge Sue Robinson held that Rambus could not enforce twelve of its patents against Micron as a penalty for litigation misconduct. [Link]