State Immunity

  • BASICS: State cannot be sued for patent infringement absent its consent. 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 cannot be abrogated by Congress unless Congress finds that State fails to provide adequate remedies to patent owners for infringement. Florida Prepaid (U.S. 06/23/1999). “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 Cir. 12/09/16) (non-precedential) (aff’g dismissal of complaint).
  • State Officials Who Personally Engage In Patent Infringement May Be Sued For Injunction: However, 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).
  • Trial Soveign Immunity Does Not Apply 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 property drops out; substantial differences from Fed. R. Civ. P.)
  • TIPS: