Read our latest coverage of patent law and intellectual property issues, from Silicon Valley to the U.S. Supreme Court.
Even Judge Patel sympathized with BPMC’s sentiment, if not its legal arguments, in her June 2006 order dismissing the lawsuit.
“The court is indeed troubled by the University of California’s ability to reap the benefits of a patent system without being exposed to liability for infringement,” she wrote. “Similarly situated private universities enjoy no such advantage.”
BPMC had argued that because the state had waived its sovereign immunity by intervening in a previous case over the same patent that involved the same parties (it was dismissed without prejudice), it had effectively waived that right in the current case. The appeals court disagreed, saying that waiving immunity in one case doesn’t generally extend to a separate lawsuit.
BPMC also advanced the argument that because the state is engaged in filing enforcement actions of its own, immunity should be waived. The appeals court rejected that argument, relying on the U.S. Supreme Court decision in College Savings Bank v. Florida Prepaid Postsecondary Education, which held that participating in the federal patent system does not cost a state its immunity.
Stanford Law School professor Mark Lemley, who specializes in IP law, said the Supreme Court is where the problem started.
“The fact that states can sue for patent infringement but are immune from being sued by others is a travesty of justice that should have been remedied long ago,” said Lemley in an e-mail. “But it’s the Supreme Court’s travesty � the Federal Circuit decision was just following the Supreme Court’s rule.”
Dhuey said that the Supreme Court decision shouldn’t be taken so broadly and that he’ll make an argument that “principles of fairness and consistency discussed in Lapides v. Board of Regents should apply to California’s overall patent litigation conduct.” But several IP lawyers said they would have a hard time seeing the top court taking the case.
“The U.S. Supreme Court has shown an increasing interest in reviewing controversial patent cases,” said Henry Bunsow, a veteran IP litigator at Howrey. “But the concept of 11th Amendment sovereign immunity is not something that the court is likely to be interested in.”
, 527 U.S. 666
