BASICS: States are immune from lawsuits in state courts, absent waiver. Also, state cannot be sued in federal court (and thus, anywhere) for patent infringement by anyone, absent its consent under the Eleventh Amendment (“The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of another state, or by citizens or subjects of any foreign state.”) Immunity of States from suit in federal court cannot be abrogated by Congress except “as remedial or preventive legislation aimed at securing the protections of the Fourteenth Amendment [Due Process clause] for patent owners,” and Congress finds that the State fails to provide adequate remedies to patent owners for infringement. Florida Prepaid (U.S. 06/23/1999) (5-4) (35 U.S.C. § 296(a) abrogating State immunity is unconstitutional); Allen (U.S. 03/23/2020) (extending Florida Prepaid to copyright infringement lawsuits). As a matter of common law, “Indian tribes possess ‘inherent sovereign immunity,’ and suits against them are generally barred ‘absent a clear waiver by the tribe or congressional abrogation,” but this does not extend to actions brought by the federal government.” Saint Regis Mohawk Tribe (Fed. Cir. 07/20/18). See also Foreign Sovereign Immunities Act, 28 U.S.C. § 1602 et seq.; Genetic Veterinary (Fed. Cir. 08/09/19) (aff’g jurisdiction over foreign university under commercial activity exception).
Waiver Of Eleventh Amendment Immunity Must Be Express And Unambiguous: “The ‘test for determining whether a [s]tate has waived its immunity from federal-court jurisdiction is a stringent one’ [and] ‘a waiver of sovereign immunity ‘must be unequivocally expressed.’” Peralta (Fed. Cir. 12/09/16) (non-precedential) (aff’g dismissal of complaint); Port Authority (U.S. 04/30/1990) (statute providing general consent to lawsuit, closely coupled with venue provision mentioning state and federal courts (“venue . . . shall be laid within a county or judicial district, established by one of said States or by the United States,….”) sufficient to waive Eleventh Amendment waiver of immunity from being sued in federal court). A state waives its Eleventh Amendment immunity for all compulsory counterclaims when it voluntarily appears in federal court. Regents of Univ. New Mexico (Fed. Cir. 02/28/03); but seeBiomedical Patent (Fed. Cir. 10/23/07) (waiver of immunity upon intervening in earlier action did not extend to later action). May be waived by contract. Baum Research (Fed. Cir. 10/10/07) (following contract provision waived University’s Eleventh Amendment immunity: “This Agreement will be construed, interpreted and applied according to the laws of the State of Michigan and all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan.”) A state’s waiver must be accomplished by someone to whom that power is granted under state law. Ford Motor (U.S. 01/08/1945).
Ex Parte Young Permits Injunction Against State’s Ongoing Infringements: Ex parte Young authorizes actions against state officers for prospective equitable relief from ongoing violations of federal law. Verizon Maryland (U.S. 05/20/2002). Under the Ex Parte Young doctrine, a patent owner may sue state officials who personally engage in patent infringement, for prospective injunctive relief, only. Pennington Seed (Fed. Cir. 08/09/06). And patent owner may sue state officials for acting in their individual capacities to infringe a patent. Peralta (Fed. Cir. 12/09/16) (aff’g dismissal of complaint for failure to sufficiently state claim that officials were acting in their personal capacity).
State Sovereign Immunity Bars FRCP 19(a)(2) Coercive Joinder: Gensetix (Fed. Cir. 07/24/20) (2-1) (aff’g that State University patent owner that granted plaintiff exclusive license but not all substantial rights in patent, and agreed to cooperate in enforcement, but provided that it was not waiving its sovereign immunity, was shielded by 11th Amendment from being joined as party to the infringement action, but rev’g district court for then dismissing the action.)
Trial Sovereign Immunity Does Not Extend To PTAB Trial Proceedings: Tribal sovereign immunity does not bar IPR proceeding against patent owned by tribe because “IPR is more like an agency enforcement action than a civil suit brought by a private party.” Saint Regis Mohawk Tribe (Fed. Cir. 07/20/18) (citing Director’s complete discretion in deciding whether to institute review; Director can continue even if private party drops out; substantial differences from Fed. R. Civ. P.).
State Sovereign Immunity Does Not Extend To PTAB Trial Proceedings: “The differences between tribal and state sovereign immunity do not warrant a departure from the reasoning in Saint Regis.” Regents of the Univ. of Minn. (Fed. Cir. 06/14/19) (additional review of entire panel asserting that IPR proceedings are “in rem” proceedings to which state sovereign immunity does not apply). SeeUpper Skagit Indian Tribe (U.S. 05/21/2019) (remanding to State court whether tribe enjoys “immunity from actions involving immovable property located in the territory of another sovereign”).
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