States Win Two 11th Amendment Immunity Dismissals

Tegic v. U.Texas (Fed. Cir. 2006)

Tegic sued UT in district court in the state of Washington for a declaratory judgment of patent invalidity and unenforceability.  UT had previously sued dozens of Tegic’s cellular phone companies for infringement based on Tegic’s underlying predictive text software. That lawsuit is ongoing.

Despite UT’s participation in similar litigation, the CAFC found that UT was protected from Tegic under 11th Amendment state immunity, and that the similar litigation did not waive such immunity. Particularly of note, the court found that (1) the suit in Texas does not waive immunity to suit in another state; (2) the “customer suit exception” cannot be used to override 11th Amendment immunity; and (3) UT’s issuance of a covenant not to sue Tegic is not a market entry.

The CAFC suggested that Tegic attempt to intervene in the Texas case — of course Tegic’s reason for filing a DJ action in Washington was to get the case out of Texas. . .

Pennington Seed v. Produce Exchange No. 299 and Univ. of Arkansas (Fed. Cir. 2006).

Pennington sued UofA for infringement of patent No. 6,111,170, which claims a new variety of fescue grass. Pennington argued that 11th Amendment immunity here would violate due process because the state of Arkansas provided no other adequate mechanism for pursuing claims against the state.  The CAFC disagreed, citing Florida Prepaid for the proposition that abrogation of state immunity requires a specific abrogation by Congress based on a finding that the available Arkansas procedures are inadequate. Congress has made no such finding.

Pennington also sued university officials in their official capacity.  The CAFC agreed that these persons were immune from a suit for past monetary damages based on actions in their official capacity. In addition, for an injunction to be viable, there must be a direct nexus between the officials and the alleged infringement.  There was none here. Immunity affirmed.

Comments

[Josef Ustenko]

Quite frankly, I think this is pretty sick. I think Congress should include some sort of immunity waiver so that these state institutions (who act as market participants) do not get 11th amendment protection.

This is nearly tantamount to a patent version of the Kelo v. City of New London (5th amendment takings) case.

JU

[Mobile Phones]

JU seems absolutely right. It seems fairly clear that this immunity was never meant to be used in this particular way. I’m not especially surprised that UA would have been involved in such a case, though. I’m a proud graduate of that institution, class of 89, but they tend to be a litigious bunch, particularly when it involves proprietary rights. They’ve been famously stingy about allowing use of their school mascot, the razorback. Several years back, they sued a local minor league hockey franchise that was attempting to get started in the capital Little Rock. Attempting to capitalize on the state’s rabid Razorback fans, the team settled on “Razorblades” as a name. Now granted, the “Razor” half does seem to reference the Razorbacks, and was all but certainly deliberate, it seems somewhat over zealous to insist that it be changed. In fact, that’s exactly what UA insisted, and in the end they won.