U.S. Supreme Court Seeks Advice on State Rights in Patent Suits
On Monday, the U.S. Supreme Court asked the U.S. solicitor general for advice on a case that challenges the legal doctrine that exempts state agencies, such as the University of California, from patent infringement lawsuits by private companies but permits the agencies to bring patent lawsuits, the San Francisco Chronicle reports.
The plaintiff in the case, Biomedical Patent Management, is requesting that the Supreme Court throw out California's immunity to patent infringement suits because UC continually pursues damages and settlements in federal courts for violations of its patents by the private sector.
The argument was rejected by a San Francisco trial court judge and a federal appellate court, which cited prior Supreme Court rulings upholding states' immunity from federal lawsuits.
After hearing from the solicitor general, the Supreme Court could decide to hear the case or decline to review it.
Under the 11th Amendment of the U.S. Constitution, state agencies are protected from being sued in federal court, so patent holders cannot seek penalties against them for the unauthorized use of original inventions, such as biomedical techniques or software.
However, the agencies also defend their patents in federal courts, prompting the U.S. Chamber of Commerce to file a friend-of-the-court brief asking the Supreme Court to review the issue.
Andrew Dhuey, an attorney for the plaintiff, said the Supreme Court's request for advice from the solicitor general is "a very positive development."
Karin Schwartz -- supervising deputy attorney general, who represents California in the case -- said the request for advice might only mean that a few justices want additional information.
Schwartz said Biomedical Patent Management is attempting to pull the UC system into a narrower dispute with the state Department of Health Care Services, which she said does not have patents and is rarely involved in patent litigation (Tansey, San Francisco Chronicle, 4/22).