In an order yesterday, the Supreme Court asked the Solicitor General's office to file a brief providing the government's views on whether it should grant certiorari in Biomedical Patent Management Corp. v. California Department of Health Services (No. 07-956).  We previously blogged about the Federal Circuit's decision in this post.  The case deals with whether state agencies waive their Eleventh Amendment immunity from suit by actively enforcing their own patents.  Specifically, the questions presented in the petition are:

1. Whether a state's waiver of Eleventh Amendment immunity in one action extends to a subsequent action involving the same parties and the same underlying transaction or occurrence.
2. Whether a state waives its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.

The last time the Court sought the Solicitor General's views on whether certiorari should be granted in patent case, the Solicitor General recommending granting certiorari.  That case was Quanta Computer Inc. v. LG Electronics, Inc., which was argued in January, with a decision still pending.  There is no specific timeframe for the Solicitor General's brief to be filed, but this case may be another to watch given the Court's recent interest in patent law.

Click below for links to the petition for certiorari and related filings.

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In a decision Tuesday, the Federal Circuit affirmed a district court's decision that a state had not waived its Eleventh Amendment sovereign immunity.  The state had intervened in an earlier, related action, but that action was subsequently dismissed for improper venue.  The court held that while the state waived its immunity in the first suit by intervening, the waiver did not apply to the subsequent lawsuit, even though it involved the same patent. 

This was because there was insufficient unfairness to the non-state party to warrant applying the waiver to the second suit, and, while the state's position was arguably contrary to its earlier position, an intervening change in the law (the Supreme Court's Florida Prepaid decision that held the Patent and Plant Variety Protection Remedy Clarification Act could not constitutionally abrogate states' immunity from patent infringement lawsuits) prevented it from being "clearly inconsistent," preventing application of judicial estoppel.

More detail of Biomedical Patent Mgmt. Corp, v. California Dep't of Health Servs. after the jump.

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In a decision yesterday, the Federal Circuit held that a state university had waived its Eleventh Amendment immunity from suit.  The university entered into an agreement with a "governing law" provision that stated that "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."

The court held that this provision "unequivocally expressed" the university's intent to waive its immunity to suit, and held that the suit could proceed.

More detail of Baum Research & Dev. Co. v. Univ. of Mass. after the jump.

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The Federal Circuit ruled today that a contractor working for the government was entitled to immunity from a patent infringement suit under 28 U.S.C. § 1498(a). The contractor was hired to clean up various sites contaminated by hazardous waste, and the terms of the contract required the contractor to use a particular method to perform the cleanup. This method was patented, and the patent holder sued. The Federal Circuit affirmed the lower court's grant of summary judgment, finding that § 1498(a) immunity applied, and the patent holder's remedy was instead against the Government in the Court of Claims.

More details of the case after the jump.

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