Patent Law

Biomedical Patent Management Corp. (BPMC) v. California Department of Health Services (on petition for certiorari)

BPMC's patent infringement lawsuit against the California was dismissed after the state asserted immunity under the Eleventh Amendment of the US Constitution – a decision affirmed by the Federal Circuit. In its petition for certiorari, BPMC argues that the State has waived its immunity. BPMC presents two separate theories of waiver – one narrow and one broad. The narrow waiver theory focuses on the facts of this particular dispute – that California had previously voluntarily been a litigant in a case involving the same parties, same patent, and same infringing actions. The prior case was dismissed and then re-filed, but the state refused to participate in the second coming. The broader and more interesting waiver theory focuses on California's deep and continued involvement in the patent system as a patent applicant, patent holder, patent plaintiff, and patent licensor. Particularly notable for this case is California's extensive use of the Federal Courts to sue infringers. As posed by BPMC, the broad waiver question is: "Whether or in which circumstances a State may waive its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights."

Before granting certiorari in patent cases, the Court often asks the Solicitor General to provide the US Government's views on the petition. In a recent filing, the Solicitor General recommended that the petition for certiorari be denied. On the narrow waiver question, the Solicitor sees the facts as too narrow to warrant Supreme Court attention. The SG sees the broader question as "undeniably important." However, the Solicitor sees the proposed focus on whether a state has "regularly and voluntarily invoked federal jurisdiction to enforce its own patent rights" as "unworkable."

The Solicitor also notes that most of the issues were resolved by Florida Prepaid cases. Although well written, the Solicitor's brief is just that – brief.

There are several reasons why I do not believe that the SG's opinion seriously diminishes the chances of being granted certiorari. First, many of the patent cases in the past decade were granted certiorari despite a SG recommendation against the grant. Second, the Supreme Court has already shown interest in the case by asking for the SG's recommendation, and the SG recognizes that the issue is important. Third, the SG's arguments of unworkability and lack of clarity are rather weak. The brief is just that – brief – and does not address many underlying constitutional issues. Fourth, the Supreme Court has already focused on this issue and has experience. However – as the SG notes, the issue raised by BPMC is not directly covered by the court's prior rulings.

BPMC's counsel – Andrew Dhuey – indicated that the Supreme Court may consider the petition in its January 9^th Conference.

Notes:

• File Attachment: SG Brief (100 KB)
• Cato Editorial
• Federal Circuit Decision
• Filings