American University Law Review
August, 1998
THE SCOPE OF ELEVENTH AMENDMENT IMMUNITY FROM SUITS ARISING UNDER PATENT LAW AFTER SEMINOLE TRIBE V. FLORIDA
Kristen Healey*
INTRODUCTION
Prior to the Patent and Plant Variety Protection Remedy Clarification Act ("PPVPRCA"), the Eleventh Amendment afforded states immunity from actions arising under the federal patent laws. A patent holder had no remedy if a state infringed or otherwise violated his patent because such actions fall exclusively under federal jurisdiction and cannot be tried in state court. Nor could a patent holder sue a state for infringement in federal court because, under the Eleventh Amendment, states are considered sovereign entities within the federal system and generally cannot be sued by individuals in the federal court system.
In 1992, Congress attempted to rectify this problem by enacting the PPVPRCA to abrogate state immunity from federal patent suits. Using the Supreme Court's judicial interpretation of Eleventh Amendment immunity as a guide, Congress expressed its intention to extend federal jurisdiction over states in "unmistakably clear" language: "Any State . . . shall not be immune, . . . from suit in Federal court by any person, . . . for infringement of a patent . . . or for any other violation under [the patent] title." Congress attempted to create a uniform system in which citizens, states, and the Federal Government are similarly situated under the patent laws. Congress felt that such uniformity was essential to fulfill its constitutional obligation to promote innovation and protect the rights of patent owners.
Despite Congress' attempt to abrogate Eleventh Amendment immunity from patent suits, the Supreme Court's recent decision in Seminole Tribe v. Florida has renewed the debate about the extent to which states are immune from such challenges. In Seminole Tribe, the Court held that, notwithstanding its grant of broad powers to regulate interstate commerce, the Commerce Clause does not permit Congress to abrogate state immunity. After Seminole Tribe, a state's broad immunity can be limited only under a few narrow exceptions, two of which are discussed in this Comment. First, a state may waive its immunity, either expressly or under the doctrine of implied waiver. A state expressly waives its sovereign immunity if it specifically consents to suit in federal court. Under the doctrine of implied waiver, a state constructively waives its Eleventh Amendment immunity if it accepts federal funding or participates in a federally regulated activity, and Congress explicitly has conditioned such funding or participation on the state waiving its immunity. Second, Congress may abrogate state immunity to enforce the substantive guarantees of the Fourteenth Amendment, but only if its intent to abrogate immunity is made in "unmistakably clear language." Despite the PPVPRCA, the Seminole Tribe decision suggests that states once again may be immune from suits arising under the patent code, potentially leaving those with patent actions against states without any recourse.
This Comment examines state immunity from patent suits in light of the Supreme Court's reexpansion of Eleventh Amendment immunity in Seminole Tribe. It addresses whether Congress has the power to abrogate a state's Eleventh Amendment immunity from suits arising under the federal patent laws, or, in the alternative, whether a state has constructively waived its immunity from patent suits by participating in and benefiting from the patent process. Part I briefly summarizes the origin of the Eleventh Amendment and several of the judicial decisions that have expanded and restricted the scope of state immunity from suits in federal court. Part II discusses Congress' abrogation of state immunity from patent suits and the judicial decisions permitting this abrogation that preceded the Seminole Tribe decision. Part III considers the reaction among federal courts to the Seminole Tribe decision. To illustrate the effect of Seminole Tribe, Part III discusses a lawsuit in which a state university claimed immunity from suit when a corporation moved for a declaratory judgment that a patent owned by the university was invalid, and therefore, not infringed. This section suggests that Congress should be allowed to abrogate state immunity from all suits arising under the federal patent laws, or alternatively, that the federal courts should treat a state's participation in the patent process as a constructive waiver of its immunity. Finally, Part IV concludes that the federal courts should clarify the limitations on state immunity under the doctrines of abrogation and implied waiver. Only by clarifying these doctrines and allowing Congress to abrogate state immunity from patent suits will courts ultimately hold states accountable for violating federal patent laws. If courts allow states to infringe patents and enforce invalid patents against alleged infringers, the promotion of the progress of science will suffer and congressional intent will be ignored.
* Federal Circuit Editor, The American University Law Review, Volume 48; J.D. Candidate, 1999, American University, Washington College of Law; B.A., 1991, Brown University.
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