Sovereign Immunity in Patent Law

Sovereign Immunity and Patent Law: Closing the Immunity Hole with Congressional Spending Power

Abstract

Sovereign immunity of states is a central principle in the federalist system. However, sovereign immunity causes serious inequities when applied to certain areas of the law. One of these areas is patent law, resulting in a system in which states can sue, but not be sued, for patent infringement. There are relatively limited avenues that can be taken to overcome state sovereign immunity.

Table of Contents

Introduction

I. Background on Patent Law and Sovereign Immunity

A. Application of Sovereign Immunity in Patent Law Poses Several Problems.

B. From the Perspective of States, Application of Sovereign Immunity in Patent Law Presents Benefits.

II. Background on the Law of Sovereign Immunity For States and Tribes

A. Tribal Immunity

B. State Sovereign Immunity

1. State Immunity From Article III Court Litigation

a. Congressional Abrogation and the PRCA……………………………………………..12

b. State Waiver of Sovereign Immunity…………………………………………..……..13

c. Ex Parte Young Doctrine……………………………………………………….……..14

2. State Immunity from Administrative Court Proceedings

III. Solution

A. The Terms of the Proposed Conditional Waiver Legislation

B. The Proposed Legislation is Constitutional…………………………20

1. The Proposed Legislation is Constitutional under Congress’ Spending Power

2. The Proposed Legislation is also Constitutional under the NFIB Case

C. A Damages Cap is a Critical Provision of the Proposed Legislation

D. The Proposed Legislation Offers Several Benefits Over Other Alternatives

Conclusion

Introduction

Companies have recently tried to take advantage of sovereign immunity by selling patents to sovereign entities in exchange for claims of sovereign immunity to avoid patent challenges. In mid-2017, a large drug company sold a portfolio of valuable drug patents to a Native American tribe.[1] Essentially, the drug company paid the tribe millions of dollars to take control of its patents to exploit the tribe’s sovereign immunity in order to protect its patents from outside challenges.[2] The possible effects of this deal highlight the problem with sovereign immunity in the current patent system—tribes and states can avoid challenges to patents they own and avoid liability for infringing patents owned by others. It is easy to see how this inequality in application of the laws is fundamentally unfair to those unable to claim sovereign immunity.

The use of sovereign immunity allows states and Indian tribes to take advantage of the benefits of the patent system without being subject to the negative aspects.[3] This Note offers a solution that addresses the problem of sovereign immunity in patent law in a manner that is beneficial to patent law and the individuals participating in the patent system, while also respecting the interests of the sovereign entities.

A solution to solve this problem should both protect the rights of patents owners to enforce their patents, while considering the interests of the sovereign entities. In order to best achieve this objective, Congress should condition a state’s receipt of research related funds upon the state’s waiver of its sovereign immunity in both district court patent litigations and United States Patent and Trademark Office (“USPTO”) proceedings. To limit the states’ (and thus the public’s) potential liability, the damages awarded to plaintiffs suing states for patent infringement should be statutorily capped.

The explanations of the problem and the proposed solution are laid out in three parts. Part I discusses the background of patent law, how sovereign immunity affects patent law, and the problems with the current system. Part II outlines the law of sovereign immunity for both states and tribes. Part III then offers a solution that addresses the problem of sovereign immunity in patent law while considering the interests of both the individuals participating in the patent system and the sovereign entities.

I. Background on Patent Law and Sovereign Immunity

A patent grants the holder the exclusive right to make, use, or sell his invention.[4] A patent holder can exercise her right to exclude by initiating an infringement suit in federal court.[5] In some cases, a party seeking to ensure that it will not infringe a patent may preemptively sue a patent owner to receive a declaratory judgment that a patent is not infringed, invalid, or unenforceable.[6] Federal courts have exclusive subject matter jurisdiction over patent disputes.[7] Certain entities, specifically states and Native American Tribes, are generally immune from suit in federal courts.[8] Thus, absent mitigating circumstances (i.e. abrogation[9] or waiver[10]), a sovereign entity cannot be sued for patent infringement in federal courts, nor can a declaratory judgment action be brought against them.[11] For similar reasons, outlined below, sovereign entities that are patentees are also immune from challenges to those patents with the USPTO.[12]

The system of USPTO challenges has seen change in recent years.[13] The America Invents Act[14] was enacted in 2012 and instituted new post-grant proceedings within the USPTO that allow the Patent Trial and Appeal Board (“PTAB”)[15] to review granted patents.[16] The most popular of these is the inter partes review (“IPR”). An IPR[17] is a patent review conducted by the PTAB in which a third party can request review of an issued patent by administrative law judges.[18] After enactment of the AIA, IPRs have become a very popular alternative to challenging a patent in a district court suit, and in many cases are filed in response to a district court infringement claim.[19]

A. Application of Sovereign Immunity in Patent Law Poses Several Problems.

Companies have recently tried to take advantage of sovereign immunity by selling patents in exchange for claims of sovereign immunity to avoid patent challenges. In mid-2017, drug company Allergan sold a portfolio of valuable drug patents to New York’s Saint Regis Mohawk Tribe.[20] “Under the deal, which involves the dry-eye drug Restasis, Allergan will pay the tribe $13.75 million . . . The tribe will lease the patents back to Allergan, and will receive $15 million in annual royalties as long as the patents remain valid.”[21] The idea behind the deal was that the tribe could exercise its tribal immunity to avoid challenges to the patents at the USPTO.[22] “Because Allergan is paying to license patents it recently owned, the deal has been widely criticized as an attempted end-run around the PTAB.”[23] While this is the only deal of this type so far, it is possible for this deal to spark more deals with tribes or even states. This ‘selling’ of sovereign immunity caused a stir in the world of patent law and is not in line with the original purpose of sovereign immunity.[24] It essentially gives patent holders the ability to pay to avoid USPTO patent challenges.

Thus, sovereign immunity in patent cases raises significant fairness issues. A patent is really a quid pro quo between the patent holder and the public; the patent monopoly “is conditioned on the creation and public disclosure of a new and useful invention.”[25] By invoking sovereign immunity, States can take advantage of the inventor’s disclosure without having to respect the patent owner’s monopoly. In addition to the fundamental fairness problems, sovereign immunity raises several additional concerns specific to patent law. For example, immunity gives states an advantage in litigation that they do participate in, because it allows the state to have control over how and in what courts patents are challenged.[26]

State immunity can also cause inequities in bargaining power in licensing disputes between states and individual patent owners, because the state knows that if the parties cannot reach a licensing agreement and the patent owner subsequently sues the state for infringement, the state could simply have the suit dismissed.[27] In addition, Karl Manheim, a professor at Loyola Law School, has noted that state sovereign immunity can also contribute to the possibility of inventors being incentivized to forgo patent applications and instead keep their inventions as trade secrets, a decision that negatively impacts the public through the inventor’s lack of public disclosure of his invention.[28]

In the area of USPTO post-grant proceedings, sovereign immunity can frustrate the intent of these patent review systems, which were created to remove patents that should not have been granted.[29] It is important to maintain this intent because removing bad patents from the system ensures the public receives its end of the patent bargain – disclosure of the new useful technology behind a novel invention.[30]

B. From the Perspective of States, Application of Sovereign Immunity in Patent Law Presents Benefits.

Application of sovereign immunity in patent cases is advantageous for states because claiming sovereign immunity allows states to avoid suits that may result in large judgments, which could cause serious budgeting problems.[31] Further, it saves states the cost of litigation —litigating a case may cost a state several million dollars, even if it wins.[32]

In the 2017 Patent Litigation Study conducted by PWC, the 2016 median damages award in patent suits was $6.1 million.[33] The overall median award in the last 20 years is $5.8 million.[34]The average cost of a patent litigation suit is correlated with the amount of money at risk in the case; the higher the stakes of the case, the more money it will cost to litigate on average.[35] According to a 2015 survey conducted by the American Intellectual Property Law Association, the average cost for a case worth between $1 million and $10 million was $2 million, between $10 million and $25 million was $3.1 million, and over $25 million was $5 million.[36] Thus, even a winning case will cost a state a few million dollars, and in a worst case scenario, a losing case may cost several hundred million dollars.[37]

It is also relevant to compare this level of potential liability with the budget of the state and its ability to cover such an award without causing harm to the state’s general public. First, in 2016, the success rate of patentees in litigation was only 33 percent; in other words, on average, a state accused of patent infringement would win two out of every three cases.[38] Thus, the likelihood of several plaintiffs being successful on large judgments against a state in a short period of time is relatively low. A smaller state, for example, South Dakota, may have a comparatively small budget, but because of the lower presence of state actors possibly infringing would likely be subject to fewer infringement suits. South Dakota’s budget for 2016 was $1.4 billion; thus a $20 million lawsuit would account for 1.4 percent of the state’s budget.[39] Whereas to a larger state, such as California, which has a $126 billion budget for 2017-18, such a lawsuit would only represent 0.016 percent of the state budget.[40] While there is clearly a difference in the impact of a single judgment on states of differing size and budget, the difference in the potential number of suits the states may face (and thus total liability) offsets the higher budget percentages that the smaller states would face. However, states still have a valid concern that subjecting themselves to patent litigation could cost them large amounts of money that would drastically affect their budgets. Similar types of economic concerns have been assuaged in other context through the use of damages caps.[41] A lack of sovereign immunity accompanied by a damages cap would allow a plaintiff to still bring her case and prevail but would limit the total liability that a state may face for that case.

II. Background on the Law of Sovereign Immunity For States and Tribes

There are two chief entities within the United States that can claim sovereign immunity from federal court suits: Native American Tribes and states. The law governing each of these immunities is unique and must be examined individually to grasp how each type of immunity may be overcome and how its effects on the patent system may be mitigated.

A. Tribal Immunity

Unlike state sovereign immunity, the Constitution does not expressly provide for Tribal immunity.[42] Congress has the power to abrogate tribal immunity in any area that it deems necessary.[43] “[W]e distinguished state sovereign immunity from tribal sovereign immunity, as tribes were not at the Constitutional Convention. They were thus not parties to the ‘mutuality of … concession’ that ‘makes the States’ surrender of immunity from suit by sister States plausible.’”[44]

Given the recent media attention of the Allergan / Saint Regis Mohawk Tribe patent deal[45], Congress has recognized the issue with tribal sovereign immunity in patent law and has taken action to remedy the problem. Senator Claire McCaskill has sponsored a Senate bill “to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents.”[46] While this bill only focuses on abrogation for IPRs, Congress has power to abrogate tribal sovereign immunity and thus could easily amend it to include infringement suits in district court if that were to become a problem in the future. Therefore, the remainder of this note will focus state sovereign immunity.

B. State Sovereign Immunity

For ease of understanding, state sovereign immunity can be separated into two main categories: immunity from litigation in Article III courts and immunity from administrative courts. The law for each category of immunity differs in its application, thus each category will be discussed separately.

1. State Immunity From Article III Court Litigation

The Eleventh Amendment to the United States Constitution provides that “[t]he Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one on the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”[47] “[T]he Eleventh Amendment does not define the scope of the States’ sovereign immunity; it is but one particular exemplification of that immunity.”[48] The Supreme court has interpreted the Eleventh Amendment “to stand not so much for what it says, but for the presupposition . . . which it confirms.”[49] “That presupposition, first observed over a century ago. . . has two parts: first, that each State is a sovereign entity in our federal system; and second, that [i]t is inherent in the nature of sovereignty not to be amenable to the suit of an individual without its consent.”[50]

State sovereign immunity can apply to more entities than the just the state itself, but what entities can claim sovereign immunity is not clearly settled law.[51] The courts take into account several factors when determining if an entity can successfully claim a state’s sovereign immunity, including the powers of the entity, its ability to contract or sue, its degree of autonomy, and whether the state will pay for any recovery against it.[52] State universities, common state actors infringing patents, are typically able to claim state sovereign immunity.[53]

State sovereign immunity can be overcome only under certain circumstances, including Congressional abrogation, state waiver, and use of the Ex Parte Young doctrine. Each of these ideas and their respective applications to patent law will be discussed in turn.

a. Congressional Abrogation and the PRCA

The Supreme Court outlined the two-part test for proper Congressional abrogation of state sovereign immunity in Seminole Tribe of Florida v. Florida.[54] First, the court will ask “whether Congress has ‘unequivocally expresse[d] its intent to abrogate the immunity.”[55] Second, the Court will determine “whether Congress has acted ‘pursuant to a valid exercise of power.’”[56] In the mid-1990s, Congress attempted to abrogate via statute sovereign immunity for patent suits by passing the Patent and Plant Variety Protection Remedy Clarification Act (“PRCA”).[57] However, the Supreme Court struck down the PRCA in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank[58]for failing the second part of the abrogation test. [59] Congress later reattempted a similar abrogation statute in the early 2000s, the Intellectual Property Protection Restoration Act of 2003, but the bill never made it through the committee stage.[60] This proposal would have conditioned future intellectual property rights upon a state’s waiver of its sovereign immunity for “any infringement of intellectual property protected under Federal law.”[61] The constitutionality of such proposals is questionable after the Florida Prepaid decision.[62]

b. State Waiver of Sovereign Immunity

Alternatively, if Congress does not or cannot abrogate state sovereign immunity, the state may waive its right to claim sovereign immunity. “[I]f a State waives its immunity and consents to suit in federal court, the Eleventh Amendment does not bar the action.”[63] The Supreme Court has held that a state has waived its immunity only when stated expressly or “by such overwhelming implication from the text as [will] leave no room for any other reasonable construction.”[64] The test for a state’s waiver of sovereign immunity is a high bar to meet.[65] The Court will find a waver “either if the State voluntarily invokes our jurisdiction, or else if the State makes a ‘clear declaration’ that it intends to submit itself to our jurisdiction.”[66]

In some cases, a ‘constructive waiver’ theory—an implication that the state has waived its rights through its actions—has been asserted, but the Supreme Court has limited its application to sovereign immunity.[67] For example, “[t]he court properly recognized that the mere receipt of federal funds cannot establish that a State has consented to suit in federal court.”[68] Likewise, a state’s participation in a federally regulated activity is not enough to form a constructive waiver because the state’s consent to the waiver cannot be assumed.[69]

c. Ex Parte Young Doctrine

The third way in which state sovereign immunity may be overcome is by invocation of the Ex Parte Young doctrine.[70] The Ex Parte Young doctrine stems from a 1908 Supreme Court case.[71] This exception to sovereign immunity law allows a plaintiff to overcome Eleventh Amendment rule by suing a state official “in his or her individual capacity, to enjoin him or her from violating either federal law or the Constitution.”[72] “Ex Parte Young only applies when suing a state officer for prospective, injunctive relief.”[73] Thus, through application of the Ex Parte Young doctrine, even if a plaintiff can win the suit against the state official, the plaintiff cannot receive an award of damages.[74]

In patent cases, this is problematic for two reasons. First, after the Supreme Court’s decision in Ebay v. Mercexchange ordering a more stringent injunction analysis, even if the patentee wins on the infringement claim, injunctions are no longer essentially a guarantee.[75] Second, a damages award may be the only reasonable remedy for the plaintiff and “the threat of a damages award may be the only effective deterrent to a defendant’s willful violation of federal law.”[76] While it is also true that the individual actor may be personally liable for damages, it is likely that the individual does not have sufficient funds to pay for an infringement damages award.[77] Thus, while offering a potential remedy to state infringement of patents, the Ex Parte Young doctrine is not the most effective solution to the issue of sovereign immunity in patent law because it does not offer the potential for lucrative damage awards. [78]

2. State Immunity from Administrative Court Proceedings

Whether sovereign immunity applies to administrative court proceedings depends on the nature of the specific proceeding at issue.[79] “In Federal Maritime Comm’n v. South Carolina State Ports Authority, the Court drew analogy between some agency proceedings and civil litigation, in that case to preserve the immunity of the non-consenting state in the agency proceeding.”[80] There is little law on how this standard applies to USPTO proceedings. In Vas-Cath, Inc. v. Curators of University of Missouri[81], the Court of Appeals for the Federal Circuit found that Pre-AIA interferences[82] conducted by the USPTO were sufficiently like trials for sovereign immunity to apply, but decided that immunity did not apply in this case because the state entity had “invoked and participated in these proceedings with no claim of immunity.”[83]

More recently, in 2017, the Patent Trial and Appeals Board (“PTAB”) held in three separate instances that under the Federal Maritime standard, the AIA inter partes review (“IPR”) process is sufficiently like court litigation for sovereign immunity to apply.[84] In Covidien LP v. University of Florida Research Foundation[85], the first of the IPR decisions, the PTAB compared the filing/pleading process, discovery process, and role of judges, among other things, in IPRs with those in civil litigation. The panel “conclude[d] that the considerable resemblance between the two is sufficient to implicate the immunity afforded to the States by the Eleventh Amendment.”[86] Two subsequent PTAB panels, while not bound by this analysis, found it persuasive and incorporated it into their decisions in NeoChord, Inc. v. University of Marlyand, Baltimore[87] and Reactive Surfaces Ltd., LLP v. Toyota Motor Corporation.[88] The Court of Appeals for the Federal Circuit does not review the PTAB’s decisions on whether to institute an IPR proceeding, thus even if these decisions are incorrect under the law, they are unlikely to change without Congressional action.[89]

III. Solution

In order to solve this problem with state sovereign immunity and patent law, Congress should enact a statute that conditions future state receipt of federal research funds upon the state’s waiver of its sovereign immunity in patent suits.[90] This waiver should explicitly apply to both district court litigation and to all USPTO proceedings. In addition to the conditional waiver provision, the new statute should also contain a cap on damages awards to plaintiffs prevailing in a patent infringement suit against a state.

A. The Terms of the Proposed Conditional Waiver Legislation

The proposed legislation would require that the state’s sovereign immunity waiver apply to all patent related cases, whether before federal court or before the United States Patent and Trademark Office. The research funds conditioned upon the waiver should be those granted to state controlled agencies / universities. For example, federal funds being provided by Congress to a private university within a state would not be withheld if the state were to decline to waive its sovereign immunity for patent cases.

The new provision should be conditioned to be effective for a specific length of time, for example two years. Limiting the provision in time will allow states to reevaluate their decision to either waive their sovereign immunity or to forgo the federal research funds. This will also permit states to enact the sovereign immunity waiver for a limited period of time. This initial limited time period will allow states to essentially undergo a trial period for the waiver where they may determine how many suits will actually be filed against them and the associated costs. Furthermore, this limited time period makes the proposal minimally coercive[91] because the state is not forced into agreeing to a long term deal, but rather is given the opportunity to make a decision, then reevaluate it on a shorter term basis.

The proposal also limits a state’s sovereign immunity waiver to causes of action that occur after the institution of the state’s waiver. This provision is designed to shield states from liability from actions that they may have taken in the past, but would not take in the future given the immunity waiver. Lastly, the proposal includes a damages cap discussed in detail later.[92]

A sample of the proposed legislation is:

SECTION 1: CONDITIONAL WAIVER OF SOVEREIGN IMMUNITY

DEFINITIONS

1. “Patent-related matters” include but are not limited to: patent infringement suits, patent-related declaratory judgment actions, USPTO post-grant proceedings, interferences, derivation proceedings, etc.

2. IN GENERAL—Any state wishing to receive any future Congressional allocations for any federally sponsored research funding to any state agency or institution must effectively waive its right to claim sovereign immunity in all patent-related matters in both federal court and within the United States Patent and Trademark Office (“USPTO”).
3. TIMING—A state that chooses to waive its sovereign immunity for this purpose shall be subject to suit only for causes of action that occur after the effective date of the waiver and shall be liable only for damages incurred after that date.
4. DAMAGES LIMITATION—Any state that is found to have committed patent infringement in federal court shall not be ordered to pay more than $15,000,000.00 in damages in any one case.

B. The Proposed Legislation is Constitutional

Two relatively recent major Supreme Court cases have inspected the circumstances in which Congress may exercise its Constitutional spending power.[93] Application of the law from these cases to the proposal here will shed light on the Constitutionality of such a spending proposal.

1. The Proposed Legislation is Constitutional under Congress’ Spending Power

In South Dakota v. Dole,[94] the Supreme Court outlined five factors for courts to consider when evaluating the Constitutionality of a spending statute.[95] First, the statute “must be in pursuit of ‘the general welfare.’”[96] A statute such as the proposed legislation serves the “general welfare” by encouraging innovation and invention by ensuring that patent owners are able to enforce their patents and protect their rights.[97] Furthermore, the general welfare factor is a low bar to meet because on this point the court will “defer substantially” to the decision of Congress.[98]

The second factor is that the law be a clear, unambiguous statement.[99] Therefore, it must be clear that a state must waive its sovereign immunity with respect to patent suits and USPTO proceedings in order to receive federally granted research funds. While this factor truly depends on how the law is drafted, it would not be a difficult bar to meet.[100] Any state official reading the proposed legislation would understand that the state must choose between sovereign immunity in patent cases and federal research funds, thus the law would easily survive the clear statement requirement.

The third Dole factor, germaneness, is a slightly more difficult factor to analyze.[101] The thrust of the inquiry here is whether the waiver of sovereign immunity is unrelated to the national interest of the program.[102] The waiver of sovereign immunity in patent cases is related to research funds because states (especially through state universities) can use these research funds to develop new technologies which it can patent and from which it can generate great revenue.[103] Waiver by the entire state is no less germane than the university centered approach that other writers have taken because ultimately, the state will benefit from the money because the state owns the University.[104] Thus, the proposed legislation also satisfies the Dole germaneness requirement.[105]

The fourth factor the court will consider is whether an independent constitutional bar exists preventing states from doing what Congress attempts to induce to them to do.[106] Here, there is no such constitutional bar because states can constitutionally waive sovereign immunity.[107]

The final inquiry the Congressional spending bill must pass is that of whether or not the legislation is coercive to the states.[108] The Supreme Court in Dole rejected an argument asserting that a law was coercive because it required a state to raise its drinking age to 21 in order to receive a certain percentage of highway funds.[109] Conditioning receipt of research funds upon waiver of sovereign immunity is not a coercive provision under Dole because ultimately the choice to institute the waiver is “the prerogative of the States not merely in theory but in fact.”[110] One professor has argued that “Dole is a particularly broad precedent”, and indicates that a law similar to the approach here may be constitutional.[111] This proposal is arguably even less coercive than the proposal upheld in Dole because this proposal conditions only the receipt of future funds for research projects, whereas Dole conditioned money that the states were already expecting to receive.[112] It would be easier for a state to forgo future funds as opposed to losing funds that it already expected to receive. A court would, thus, find that this proposal is not coercive under the Dole framework.[113]

2. The Proposed Legislation is also Constitutional under the NFIB Case

A recent Supreme Court case, National Federation of Independent Business v. Sebelius (“NFIB”),[114] sheds more light on the Court’s view of coercive laws. In NFIB the Court concluded that a portion of the Affordable Care Act was coercive because it conditioned all of a state’s Medicaid funding (new and old).[115] At least one legal scholar has interpreted the case as “teach[ing] that Congress may condition new discretionary benefits on the surrender of (substantially related) rights, but that previously conferred benefits may not be conditioned retroactively.”[116] Thus, under this interpretation a statute conditioning receipt of research funds for future projects, as proposed here, would not present any constitutional issues of coercion under NFIB.

One purpose of preventing coercive federal statutes is to clearly separate the actions of the state and federal governments and thus protect political accountability.[117] If the federal government has power to control the legislative decisions of states, the state officials may receive the blame, and thus face the political backlash from their constituents, for decisions that they did not even make.[118] While this purpose is a valid concern, the statute proposed here does not significantly invoke such considerations. It is obvious that in cases of the federal government encouraging states to enact certain regulations on its people, such as a tax program or criminal regulation, that the state leaders may receive any public backlash. However, in the case of the program proposed here, the federal government is encouraging a state to waive its sovereign immunity — a decision that does not directly affect the public and is unlikely to cause confusion regarding which parties are politically accountable.

As Chief Justice Roberts explained in NFIB, spending statutes do not cause political accountability problems “when a State has a legitimate choice whether to accept the federal conditions in exchange for federal funds. In such a situation, state officials can fairly be held politically accountable for choosing to accept or refuse the federal offer.”[119] Under the proposed legislation, the state officials must make the decision to either waive its sovereign immunity with respect to a limited subset of actions or forgo federal money for future research projects within the state.[120] While it may not be an easy choice, the state has the legitimate ability to make the decision that it determines is best. If any political ramifications of the decision arise, the people of the state will hold their state officials accountable because it is clear that the state was given a choice.

In addition to Chief Justice Roberts, the other Supreme Court Justices would also likely find the proposed legislation constitutional. Justice Ginsburg would surely find this proposal constitutional, given her NFIB opinion.[121] Similarly, the dissent in NFIB, consisting of Justices Scalia, Kennedy, Thomas, and Alito, would even agree that this proposal is not unconstitutionally coercive.[122] The dissent focuses on the accountability and voluntariness considerations of coerciveness discussed above by Chief Justice Roberts, as well as the contractual nature of spending clause statutes.[123] For the reasons outlined above, the proposal here does not invoke the accountability and voluntariness concerns voiced by dissent in NFIB. Thus, under the views of any of the Supreme Court’s opinions in NFIB, the proposal here is not unconstitutionally coercive.

C. A Damages Cap is a Critical Provision of the Proposed Legislation

Congress should set a statutory damages cap for patent infringement awards against states to limit the potential liability of states and thus damage to the public interest. The cap must be set high enough to make it worthwhile for plaintiffs to litigate cases to final disposition, while balancing the potential harm to a losing state. This balance can be evaluated by comparing the average patent damages award to average cost of a patent litigation and to the average state budget or allocation for suits against the state.

Taking all of the numbers discussed earlier into consideration, a damages cap in the area of $15 million dollars would encompass the entirety of many patent infringement suits, while making larger cases worth litigating when considering the costs of continuing the suit.[124] Even in the worst scenario for the state, this would put its liability at a maximum of approximately $20 million ($15 million dollar maximum damages award plus approximately $5 million in litigation costs).

While a damages cap may be less than desirable from the patent owners perspective (patent owners would want to maximize their returns from a lawsuit), a system with a cap where they can actually successfully bring a case is better than the current system in which they cannot bring the case at all. Even though the cap may prevent the patent owner from recovering the maximum amount of damages that he may be due, the proposed system, because of the simple fact that the patent owner is now capable of bringing a suit, will still benefit him by increasing his bargaining power in licensing negotiations with state entities.[125] Lastly, as noted above, this provision would apply for a limited period of time, which would allow Congress to refine the amount of the damages cap based upon any future changes in the patent litigation landscape.

Opening states to unlimited liability is a dangerous proposition. It is not uncommon for patent damages to exceed tens of millions of dollars, or in extreme cases even exceed one billion dollars.[126] Without a damages cap set in the program, a judgment this high against a state is possible. Such a judgement would be devastating to a state’s budget, especially, if the defendant is a smaller state with a comparatively small budget.[127] These costs would almost inevitably be passed on to the state’s citizens through taxes, even though the citizens likely had nothing to do with the state’s infringement.[128] Regardless of the likelihood of such a large judgment being rendered against a state, the substantial risk that such a debt would impose against states renders a proposal lacking a damages cap too risky to implement.

D. The Proposed Legislation Offers Several Benefits Over Other Alternatives

Authors and legislators have proffered several different solutions to the sovereign immunity and patent law problem. [129] While some are arguably unconstitutional, none of these alternative approaches would be as effective or desirable as the proposal set forth above.

One author has argued for a similar approach invoking Congressional spending power to condition a state’s receipt of all educational funds upon a waiver of sovereign immunity in all intellectual property suits.[130] Despite the author’s arguments to the contrary, this approach is very likely unconstitutional under Dole. At least two of the Dole factors, germaneness & coercion, raise serious doubts about this solution. First, germaneness requires that the condition be related to the funds potentially being withheld.[131] While it may be easy to see how intellectual property is related to higher education funding (much of a state’s intellectual property comes from its universities)[132], it is much more difficult to see how elementary and high school education funds relate to generation of intellectual property. Second, this approach is coercive to the states. State officials may face severe political ramifications if they choose to reduce the education budget in favor of protecting the state against suits by intellectual property owners.[133] This is a problem with the education funds approach because states don’t have a real choice in the matter; they must choose between a significant amount of funds to support the growth of their children or protecting the state from potential lawsuits. Thus, because conditioning sovereign immunity waiver on all federal education funds faces both germaneness and coerciveness problems, it is likely unconstitutional and is certainly not the best approach.

Other authors have suggested conditioning the grant of any intellectual property rights (patents, copyrights, and trademarks) to state entities upon the state’s waiver of its sovereign immunity in intellectual property cases.[134] This approach also raises serious constitutional concerns.[135]

There may also be an argument that the best solution for sovereign immunity and patent law problem is to avoid the problem altogether and do nothing. This approach maintains the sovereignty of the states and potentially protects them against large judgments. However, it does not really address the problem.[136] Any concerns about states facing budgeting crises because of large judgments are mitigated by this proposal’s damages cap that limits a state’s liability in any one suit.[137] Proponents of an approach that takes no action may also argue that state remedies are adequate.[138] This argument fails to recognize that patent law is a unique animal with a strong interest in national uniformity; this is why the Court of Appeals for the Federal Circuit was created in the 1980s.[139] State remedies may differ widely and lack the skill and uniformity of patent law that the federal courts can offer.[140]

Conclusion

A state’s current ability to avoid patent suits by asserting sovereign immunity is a problem in patent law that must be addressed. Because of Congress’s limited power to directly affect the sovereign immunity of the individual states, there are few options that can effectively overcome this problem. The use of Congress’s spending power is the most constitutional and effective approach. The inclusion of a damages cap allows individuals to protect their intellectual property rights and prosper from their inventions, while protecting the states from cripplingly large judgments. This new proposed legislation would ensure that states and large companies selling patents to sovereign entities are subject to the same laws as everyone else participating in the U.S. patent system.

Preemption Check

I do risk partial preemption by the pending Supreme Court case, Oil States Energy Services v. Greene’s Energy Group, for which oral argument has been heard. In the worst case scenario, the Court would find that the Inter Partes Review (“IPR”) process is unconstitutional. If this happens, my discussion on the IPR process will more or less become moot. The bulk of my Note focuses of sovereign immunity with respect to district court suits, so even if IPRs are found to be unconstitutional, it will not drastically affect my analysis and solution.

There are some older articles (cited within my text) that suggest an approach similar to mine – using Congress’s spending power to address my issue. However, I have not found any articles that suggest combining this approach with a statutory damages cap, which is an important facet of my solution. There is one piece of relevant pending legislation (S.1948 115th Cong. (2017)), which I cite to in my text. However, this legislation only addresses tribal immunity and does not address the main issue of my note, sovereign immunity of states.

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