Filewrapper® | A patent, trademark, and copyright law blog - Immunity

United States did not waive immunity for copyright infringement claim brought by prisoner

Thu, 05 Feb 2009 17:05:00-0500

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context. The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b). As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

More detail of Walton v. United States after the jump.

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Federal Circuit addresses scope of immunity waiver for copyright and DMCA claims

Sun, 27 Jul 2008 22:27:00-0500

In a decision Friday, the Federal Circuit affirmed a decision from the United States Court of Federal Claims dismissing a copyright holder's claims for lack of jurisdiction on the ground that the Government had not waived sovereign immunity. The suit arose from alleged copyright infringement and an alleged violation of the Digital Millennium Copyright Act of 1998 (DMCA).

The Federal Circuit found that the CFC's decision did not contain any reversible legal error in determining that there was no waiver of sovereignty in either the copyright infringement claim or the claim of a violation of the DMCA. Specifically, the court held that because the author of the copyrighted software was, by virtue of his employment in the Air Force's Manpower User Group, in a position to "order, influence, or induce use" of the software by the Government, thereby placing the suit outside the scope of waiver provided in 28 U.S.C. § 1498(b). Further, the government has not waived immunity for DMCA claims. As a result, the court affirmed the dismissal of the case.

More regarding Blueport Co. v. United States after the jump.

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Supreme Court asks for government's view on whether it should hear sovereign immunity waiver case

Tue, 22 Apr 2008 09:17:00-0500

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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Waiver of immunity in earlier case does not operate as waiver in later case involving same patent

Thu, 25 Oct 2007 07:59:00-0500

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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Agreement to "submit to jurisdiction" is waiver of 11th Amendment immunity by state university

Thu, 11 Oct 2007 11:45:00-0500

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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Government contractor entitled to patent infringement immunity

Wed, 21 Feb 2007 11:21:00-0500

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. [More]

University Can't Have Its Cake and Eat It Too&Immunity Negated

Thu, 25 Jan 2007 16:29:00-0500

The University of Missouri's waived its constitutional immunity under the Eleventh Amendment when it fully participated in an interference action against Vas-Cath, Inc. A Vas-Cath patent had issued while the University's application, although filed before the Vas-Cath application, was still pending. The University invoked the procedures to institute an interference between the University's pending application and Vas-Cath's issued patent. The University amended its application by copying into its application all nineteen claims from the Vas-Cath patent, as practice permits. After a six-year interference proceeding, the PTO awarded priority to the University, granting the nineteen Vas-Cath claims to the University and holding that Vas-Cath was not entitled to the patent that it had been issued. Vas-Cath appealed. The University moved to transfer the case to the Western District of Missouri pursuant to 28 U.S.C. § 1406(a) and then asserted Eleventh Amendment immunity from suit in federal court. On this ground, the district courted granted the University's motion to dismiss. Vas-Cath appealed the dismissal. The Federal Circuit reversed the dismissal and remanded to the district court for further proceedings. By participating in the PTO interference, the Federal Circuit concluded that because judicial review of PTO adjudication is established by statute, the interference proceeding is a multi-part action with appeal as of right. The Court further stated that the appeal is not a new claim, but an authorized phase of the interference proceeding that is conducted by the PTO and is subject to judicial review. Thus, the University waived any potential immunity as to the interference contest in the PTO. To read the full decision in Vas-Cath, Inc. v. Curators of the Univ. of Mo., click here.