A plucky Berkeley solo who’s been trying and trying to convince at least one court that it ain’t fair that the state of California can sue for patent infringement, but not be sued for the same, may be at the end of the road.
Andy Dhuey, who represents Biomedical Patent Management Corp., got news today that the solicitor general doesn’t think the U.S. Supreme Court should take his case.
But he still looks on the bright side, after the jump.
Dhuey’s client lost a patent infringement fight against the state of California in the trial court and on appeal when attorneys for the state argued that California couldn't be sued because of 11th Amendment sovereign immunity. Biomedical alleged that the state’s health department was infringing on its patented method for screening birth defects.
Dhuey is asking the U.S. Supreme Court to consider whether states should be allowed to use the courts to enforce patents -- as the state's universities regularly do -- yet be immune from being sued for infringement. The high court didn’t reject the petition for cert out of hand, and asked the solicitor general to weigh in.
In a brief (.pdf) today, the SG did acknowledge that Dhuey was raising a good point: “whether a State’s regular and voluntary participation in federal-court patent litigation broadly waives its Eleventh Amendment immunity from all patent actions is undeniably important,” Gregory Garre wrote. But Garre didn’t think Dhuey’s arguments held much water, writing that they were less convincing than two previous -- and failed -- attempts to throw out states’ sovereign immunity in similar scenarios.
Dhuey, who’s spent the last 13 years working on some iteration of the case, was obviously disappointed. Still, he found a silver lining.
“It’s actually fairly helpful,” Dhuey said. “If they’re going to recommend a denial, this is about as good a denial [as] you can get.”
Over at the California AG’s office, Karin Schwartz applauded the decision. “I don’t believe the state is abusing the courts,” she told Legal Pad.
— Zusha Elinson
It's good to be the king, but then again it's not good to be crushed after 13 years of working on this project. The question of whether a state which volunteers to participate in a federal court patent action waives its 11th amendment immunity is definitely a good question, but in my opinion it still comes down to be a constitutional law question which should always win, however unfair.
That being said, it made sense to me that it would have been good law to apply the "same parties, same cause of action" distinction (although they typically deal with res judicata and claim preclusion) to preclude the State from hiding behind 11th Amendment immunity, especially when they are the ones that initiated the suit by enforcing their patents. As far as I understood, this was not a new lawsuit, but a countersuit. The government should have been held to answer for their actions because they voluntarily entered into the courts to initiate the action which precipitated this one.
Then again, there were other factors in play. Maybe we'll see some good law come from a future case on this issue.
Posted by: Robert Z. Cashman | December 03, 2008 at 02:07 PM