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LEXSEE 9 GEO. MASON L. REV. 529

Winter, 2000

9 Geo. Mason L. Rev. 529

LENGTH: 17682 words

CASENOTE: FLORIDA PREPAID POSTSECONDARY EDUCATION EXPENSE BOARD V. COLLEGE SAVINGS BANK: SOVEREIGN IMPENETRABILITY?

NAME: Steven McLain *

BIO:

* George Mason University School of Law, Juris Doctorate Candidate, May 2001; University of Virginia, B.A. in Foreign Affairs 1995. The author would like to thank Kim Hrabosky and Kim Sullivan Walker for their extremely helpful comments and suggestions throughout the various stages of this Note; and Seung Park for her support, love, and patience.

SUMMARY:
... In Florida Prepaid, the Court extended the doctrine of sovereign immunity by holding that states may infringe upon a patent without being subjected to the jurisdiction of the federal court system unless the state unequivocally consents. ... Thus, under the Fourteenth Amendment, Congress has the power to abrogate sovereign immunity by appropriate legislation to protect the guarantee of due process before a state can deprive any person of life, liberty, or property. ... The Patent Remedy Act was enacted specifically to abrogate state sovereign immunity in patent infringement cases. Congress clearly indicated its intent to abrogate state sovereign immunity to patent infringement claims. ... But, because the Eleventh Amendment's sovereign immunity prevents a state from being brought into federal court, there is no place for a patent infringement plaintiff to sue a state. ... Justice Stevens found that the means used--abrogation of sovereign immunity in the narrow instances of patent infringement--was in proper congruence with the ends to be achieved, namely eliminating the risk that patent holders will be deprived of property without due process by an assertion of sovereign immunity. ... The dissent the proportionality and congruence requirements of City of Boerne to be satisfied and that the clear statement of congressional intent to abrogate sovereign immunity was unquestionably satisfied. ...

TEXT:
[*529]
INTRODUCTION
The United States Congress has the power to "promote the Progress of Science and useful Arts, by securing for Limited times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." n1 That the Framers saw the need to include such a power in the Constitution speaks directly to the importance of the issue. To foment technological and artistic advancement, the Framers allowed for property rights in an innovation. The lack of such a property right--a guarantee of exclusive control over the innovation for at least a limited period of time--would greatly reduce the incentive to innovate, and the cost of developing such an innovation may become prohibitive.
The federal judiciary has zealously protected the property right of valid patents and trademarks since the ratification of the Constitution. n2 The Supreme Court in Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank has reduced this protection. n3 In Florida Prepaid, the Court extended the doctrine of sovereign immunity by holding that states may infringe upon a patent without being subjected to the jurisdiction of the federal court system unless the state unequivocally consents. n4 This extension of the doctrine of sovereign immunity, while jurisprudentially consistent with recent Supreme Court decisions, n5 appears to contradict a specific mandate of the Constitution. n6 Similarly, the defense of sovereign immunity available to states that infringe upon federally issued patents may have serious ramifications for future technological advancements. The incentive to incur research and development costs up front lies in the ability of the innovator to exclude other producers--in this case the states--from utilizing the new technology to the detriment of the innovator's potential profits. Impairing the innovator's ability to enforce his property right greatly reduces the incentive to develop and create.
The holding of Florida Prepaid is also not sound when viewed from a [*530] pragmatic standpoint. Federal courts have exclusive jurisdiction over patent cases. n7 State judges, therefore, have little experience in adjudicating such matters, and as a result, may make errors in cases instituted against state infringers. n8 Moreover, a state that chooses to act like a private entity by entering a private market--in this case the market for prepaid college tuition--should be treated the same as other participants in that market. By acting like a private entity, a state should be treated like a private entity that has waived any defense of sovereign immunity. Historically, economically, and pragmatically, the holding of Florida Prepaid will likely cause problems that outweigh any benefits gained from strict adherence to the jurisprudence of Seminole Tribe of Florida v. Florida. n9 The issue of state infringement of federally issued patent rights was not effectively settled by the Supreme Court decision in Florida Prepaid, and are sure to arise as a result of this decision, requiring reexamination in the future.
Part I of this Note lays the foundation for a thorough examination of Florida Prepaid, and includes a description of landmark cases involving the doctrine of sovereign immunity, as well as a depiction of how the Eleventh and Fourteenth Amendments to the United States Constitution directly pertain to the present analysis. Part II examines the issue of congressional abrogation of sovereign immunity as handled by the lower courts leading up to the decision in Florida Prepaid. Part III discusses in greater detail the majority and dissenting opinions in Florida Prepaid. Part IV addresses the strengths and weaknesses of each opinion, and the problems that are likely to arise under the holding of Florida Prepaid.

I. BACKGROUND
The proper starting point for understanding Florida Prepaid is contained in Article I of the Constitution. Article I, section 8, clause 8 provided Congress with the sole ability to issue patents and trademarks. n10 Shortly after the ratification of the Constitution, the Supreme Court in Chisolm v. Georgia, n11 held that citizens of one state could bring suit against another state in federal court. Appalled, and fearful that the Court's decision would significantly impair the emerging American ideal of a dual [*531] system of government, Congress formulated a swift response to Chisolm. This response to Chisolm was the Eleventh Amendment, which states, "The judicial powers of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States . . . ." n12 Thus, after the Eleventh Amendment citizens of one state could no longer bring suit in federal court against another state.
Sovereign immunity remained largely unchanged until the postCivil War Amendments. n13 The Fourteenth Amendment n14 served to restrain the Eleventh Amendment by applying the due process clause to the states, and by providing that sovereign immunity was not an absolute rule. Under the Fourteenth Amendment, states are not allowed to deprive citizens of, among other things, life, liberty, or property; more importantly, Congress may make any legislation necessary to enforce these rights. n15
Federally issued patents are unquestionably the private property of the patent holder. n16 Congress, to codify such a belief, enacted The Patent and Plant Variety Protection Remedy Clarification Act (Patent Remedy Act), n17 which clearly stated Congress' intent to abrogate sovereign immunity and subject the various states to federal jurisdiction in the event that a state, or state entity, infringed upon a federally issued patent. n18 The method used to determine whether such an act by Congress is "appropriate legislation" under clause 5 of the Fourteenth Amendment was set out in City of Boerne v. Flores. n19 For an act of Congress to be appropriate "there must be a congruence and proportionality between the injury to be prevented and the means adopted to that end." n20 The final step in the analysis prior to the actual decision in Florida Prepaid, is the Supreme Court's 1996 decision in Seminole Tribe of Florida v. Florida. n21 That decision redefined the extent to which the Court would permit Congress to abrogate sovereign immunity.
A. Article I, Section 8, Clause 8
Article I, section 8, clause 8 states that Congress "shall have the power to promote the Progress of Science and useful Arts, by securing for [*532] limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." n22 Although this clause does not specifically provide for congressional exclusivity, in the area of intellectual property, this intent was set forth in the Federalist Papers. James Madison wrote, "The utility of this power will scarcely be questioned . . . the States cannot separately make effectual provision for either [copyrights or patents]." n23 This indicates the original intent behind the patent clause is that the Federal government, being in the best position to enact and administer patent laws, should be the sole authority regarding such laws. n24
A patent, under Article I, section 8, clause 8 of the Constitution, has been defined as a type of property over which the owner has a monopoly for a limited time that prevents others from using, making, or selling that particular invention. n25 There is no question that the limited monopoly granted to patent holders applies against state entities as well as private entities. n26
Just as the Constitution granted the Federal government the right to enact laws pertaining to patents and copyrights, Congress granted federal courts the exclusive jurisdiction over complex patent litigation. n27 This grant was intended to ensure a consistent and uniform body of patent law. n28 The courts recognized this need for consistency and exclusive jurisdiction of patent infringement cases nearly 200 years ago. n29 The congressional goal of a uniform body of patent law was never articulated more clearly than in the establishment of the Federal Circuit Court of Appeals. Through the Federal Courts Improvement Act of 1982, Congress granted exclusive jurisdiction over all patent litigation appeals to the Federal Circuit. n30 Congress believed, as a logical extension of its Article I powers regarding patent law, that a single Federal Court of Appeals was necessary to properly and uniformly administer patent litigation within the federal judiciary. n31
B. The Eleventh Amendment
The Eleventh Amendment, enacted in 1798, was intended to overrule [*533] Chisolm. n32 The Chisolm Court held that it had original jurisdiction in a suit by a South Carolina resident against the state of Georgia, for goods purchased by Georgia during the Revolutionary War. n33 The Founding Fathers believed the threat being that if states were amenable to suit in federal court against their will, then the autonomy of the states would be severely restricted. n34 Thwarted by the Constitution, Congress responded by amending the Constitution and laying out in plain terms a basic principle of federalism, that states could not be sued in federal court against their will. n35
The impetus behind the Eleventh Amendment existed even prior to the Constitution and was set forth in Federalist 81, which stated the Constitution did not contemplate federal jurisdiction in suits against states without their consent. n36 Almost a hundred years later, the notion of federalism had fully taken root and the Supreme Court acknowledged such in Hans v. Louisiana, n37 a case which extended sovereign immunity beyond diversity suits to include federal questions. Thus, under Hans, neither citizens of other states nor the citizens of the state being sued could bring a suit against any of the states without the consent of that state. The ideals of federalism and the inherent sovereignty of the individual states would be greatly hindered if the individual states could be subjected to federal jurisdiction without their consent. n38 This impairment of sovereignty applied equally in suits under diversity jurisdiction and federal questions, thus preventing even the states own citizens from suing that state in federal court.
The broad sweep of Hans was reeled in somewhat only a few years later in Ex parte Young. n39 This decision allowed a federal court to issue an injunction preventing state officials from enforcing an unconstitutional law on the theory that it was the state actor committing the constitutional violation rather than the state itself. n40 The state was not allowed to "impart to the official immunity from the supreme authority of the United States." n41 This is usually the manner in which civil rights actions are brought against states; the victim sues the actor, who in turn is indemnified by the state to [*534] the extent of providing injunctive relief against the state. n42 The principle behind Ex parte Young is a significant caveat to the doctrine of sovereign immunity, because, although a state may not be held liable for damages n43 the prospective relief provided by an injunction can often provide an adequate remedy for the party bringing suit against the state actor. The relevance of Ex parte Young to the present analysis is significant.
A patent holder can sue the state actor responsible for the infringement and obtain an injunction that prevents the state and its actor from continued use of the patent. This, however, may not be an entirely adequate remedy because the patent holder cannot obtain monetary damages from the state for an infringement that has already taken place. n44 For instance, suppose a software developer creates a program with a narrow market, and a state university takes the patent and is able to sell the program to many of the consumers in this narrow market. By the time the patent holder obtains an injunction against the university preventing future sales of the program, a significant enough portion of the target market may already have obtained a copy of the program such that the prospective relief of an injunction may be an inadequate remedy.
C. The Fourteenth Amendment
The Fourteenth Amendment was adopted shortly after the conclusion of the Civil War as an attempt to prevent the states from depriving any person of life, liberty, or property. n45 The clear purpose of the Amendment was to limit institutional racism against AfricanAmericans, but it was drafted broadly enough to encompass more than just slavery--it created protection for the rights of all United States citizens. n46
The Fourteenth Amendment, as it applies to the present discussion, recognizes that the doctrine of sovereign immunity is not absolute and that Congress may enact remedial legislation that prohibits the states from undertaking certain actions. n47 The Eleventh Amendment grants the individual states immunity from suit in federal courts, while the Fourteenth Amendment prohibits the states from depriving any person of property. The remedy for such deprivation is presumably found within the federal courts. Congressional acts made pursuant to section 5 of the Fourteenth Amendment [*535] render permissible private actions against the states or their officials that otherwise would be disallowed under the Eleventh Amendment. n48 This is the one area of sovereign immunity abrogation that Seminole Tribe left untouched. n49 Thus, under the Fourteenth Amendment, Congress has the power to abrogate sovereign immunity by appropriate legislation to protect the guarantee of due process before a state can deprive any person of life, liberty, or property. n50 Facially, it appears that state infringement of a federally issued patent would fall within the purview of sections 1 and 5 of the Fourteenth Amendment, as a deprivation of property without the due process afforded by the federal courts.
This analysis, however, begs two questions as to the applicability of the Fourteenth Amendment to patent cases. First, whether patents are property within the meaning of the Fourteenth Amendment. Second, whether due process requires that a patent infringement plaintiff be permitted to bring a state into federal court. The majority in Florida Prepaid decided that, although a state infringement may very well be a deprivation of property within the meaning of the Fourteenth Amendment, there was insufficient evidence in the legislative history of the Patent Remedy Act to conclude that such a deprivation of property was without due process of law. n51 The majority decided that the legislative history of the Patent Remedy Act demonstrated that Congress did not adequately consider the available state remedies for patent infringement. n52
Congress has clearly decided that patents are property. n53 The Supreme Court recognized long ago that personal property and patents possess basically the same attributes and should be treated the same under the law. n54 Thus, there is little question that patents are property within the meaning and intent of the Fourteenth Amendment and the state of Florida did not contend otherwise. n55
The second issue proves more difficult and crucial to the outcome of Florida Prepaid. If suit in federal court is required to satisfy the due process requirement of the Fourteenth Amendment, then the inquiry stops there. This is, of course, not the case. The Supreme Court decided that there is a violation of the due process requirement of the Fourteenth Amendment only when there are inadequate state law remedies or no state law remedy at all for patent infringements. n56 Congress, evidently, disagreed [*536] with the Supreme Court in this regard in enacting the Patent Remedy Act, which College Savings Bank relied upon in asserting their claim against Florida Prepaid. n57
D. The Patent Remedy Act
The Patent Remedy Act was enacted specifically to abrogate state sovereign immunity in patent infringement cases. n58 Congress clearly indicated its intent to abrogate state sovereign immunity to patent infringement claims. n59 Congress saw no reason to treat a state patent infringer differently from a private entity that infringes a federally granted patent, and the Patent Remedy Act was a result of Congress' belief that the possibility of a state patent infringement was great enough to warrant legislative action. n60 As evidenced by the actions of Florida Prepaid conscripting College Savings Bank's patent, this concern was well founded.
The clarity of congressional intent leaves but one question in regards to the Patent Remedy Act--whether Congress had the power to enact such legislation in the first place. n61 The majority in Florida Prepaid found this second and potentially more problematic issue, definitively answered in Seminole Tribe of Florida v. Florida. n62 The Patent Remedy Act, under Seminole Tribe, was not a valid abrogation of sovereign immunity and, as such, the Act's attempt at abrogation was required to fail.
E. Seminole Tribe of Florida v. Florida
The two-part test of Seminole Tribe, which the Patent Remedy Act failed as described above, has become the threshold inquiry for all potential abridgements of sovereign immunity. n63 Seminole Tribe is a watershed case for the great deference afforded the states by the Supreme Court, in regards to sovereign immunity, and thus far has been strictly followed. n64 The most important aspect of Seminole Tribe, as it applies to the present discussion, is the decision to overrule Pennsylvania v. Union Gas Co. n65 [*537] Union Gas represented the only prior Supreme Court case accepting congressional authority to abrogate sovereign immunity pursuant to Congress' Article I powers. n66 The Union Gas plurality recognized that Congress possessed power to abrogate state sovereign immunity as long as its intent was clear so as to give the states notice that violation of that particular legislation would subject them to the authority of the federal courts. n67 Seminole Tribe, in overruling Union Gas, disallows any abrogation of sovereign immunity pursuant to any congressional power announced prior to the adoption of the Eleventh Amendment. n68
Another concern raised even before Seminole Tribe, but crystallized by that decision, is the possibility that Seminole Tribe's expansion of Eleventh Amendment immunity, coupled with exclusivity statutes, could leave private entities with no recourse against the states for patent infringement. n69 The concern here is that if the exclusivity statutes are read strictly, then the suit must be brought in federal court or it cannot be brought anywhere. n70 But, because the Eleventh Amendment's sovereign immunity prevents a state from being brought into federal court, there is no place for a patent infringement plaintiff to sue a state. The decision in Florida Prepaid appears to assume away this concern by focusing on Congress' failure to consider state remedies for patent infringement. n71 The Court may be assuming too much, because exclusive federal jurisdiction of patents, and what is now preclusion of suits against states in federal court, may equal no remedy for wronged patent holders.
This background demonstrates the difficulty of the sovereign immunity issue, especially in the context of exclusively federal patent law. The fact that Union Gas only survived seven years until it was overruled in Seminole Tribe, falling at the hands of what is largely the same Court, shows the inherent difficulty in deciding the boundaries of sovereign immunity. Admittedly, the majority in Florida Prepaid remained steadfastly loyal to the holding of Seminole Tribe, but at what cost?
II. RELEVANT CASELAW
The body of caselaw concerning state involvement in patent infringement suits is not large, but it is also not as negligible as the majority [*538] in Florida Prepaid would lead one to believe. n72 A federal district court decided in Lemelson v. Ampex Corp. that states were liable for patent infringements in spite of the Eleventh Amendment doctrine of sovereign immunity. n73 Similarly, a federal district court in Minnesota also refused to exempt a state from federal jurisdiction in a patent infringement case. n74 Courts relied upon the rationale that because the states had granted Congress the exclusive authority to grant patents, the states had implicitly waived immunity to patent lawsuits in federal court. n75 The Supreme Court rejected this rationale and held that sovereign immunity could only be waived if the waiver were stated so clearly that it was not amenable to any other interpretation. n76
In regards to the congressional ability to abrogate sovereign immunity the Supreme Court held in Atascadero State Hospital v. Scanlon, n77 that any congressional measure that sought to abrogate sovereign immunity must make such intention "unmistakably clear in the language of the statute." n78 Florida Prepaid makes clear that the Patent Remedy Act satisfies this requirement and in fact states, "Congress' intent to abrogate could not have been any clearer." n79
In Pennsylvania v. Union Gas, the Supreme Court allowed such an abrogation of sovereign immunity pursuant to an Article I power. n80 This aspect of Union Gas, however, was overruled by Seminole Tribe. The Seminole Tribe Court held that sovereign immunity could not be abrogated pursuant to any Article I power, regardless of the clarity of congressional intent to do so. n81 Under Seminole Tribe, Congress is only able to validly abrogate sovereign immunity pursuant to section 5 of the Fourteenth Amendment.
In enacting the Patent Remedy Act, Congress was responding to Chew v. California n82 in which the Federal Circuit held that congressional intent to abrogate was not clear enough to satisfy the requirement in Atascadero of "unmistakably clear" legislative intent to abrogate. n83 Chew involved a patent for an invention that tested engine exhaust emissions, [*539] which was used primarily by states or government entities. n84 The Federal Circuit affirmed dismissal of the suit on the grounds of sovereign immunity. n85 The decision in Chew is what prompted Congress to propose legislation that would make states amenable to suit in federal court for the vindication of patent rights, and Congress subsequently enacted the Patent Remedy Act. n86
In City of Boerne v. Flores, n87 the Supreme Court announced the test for determining whether an act of Congress is appropriate under the Fourteenth Amendment, and thus, free from sovereign immunity scrutiny. The City of Boerne Court held that "there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to the end. Lacking such a connection legislation may become substantive in effect and operation." n88 Although Congress is allowed to make laws that are remedial or preventive, congressional acts that substantively change the law do not fall within Congress' powers under section 5 of the Fourteenth Amendment. n89 Thus, as the majority in Florida Prepaid stated, "for Congress to invoke Section 5, it must identify conduct transgressing the Fourteenth Amendment's substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct." n90
III. FLORIDA PREPAID POSTSECONDARY EDUCATION EXPENSE BOARD V. COLLEGE SAVINGS BANK
The stark contrast over the interpretation and role of sovereign immunity in patent law, and more broadly in American jurisprudence, is clearly exhibited in the majority and dissenting opinions. The majority, as it has consistently done in sovereign immunity cases, examines Florida Prepaid through a strict reading of Seminole Tribe and requires explicit waiver of sovereign immunity before a state can be sued in federal court. Justice Stevens, writing for the dissent, focuses on the goal of uniformity in patent law and proposes an interpretation of City of Boerne that provides for uniformity of patent laws and protects patent holders from state infringement. [*540]
A. Facts
College Savings Bank, a New Jersey savings bank, markets a patented financing product called CollegeSure CD. n91 The product is an annuity intended to finance future college expenses. n92 Florida Prepaid Postsecondary Education Expenses Board, an entity of the state of Florida, was created to run a tuition prepayment program within the state of Florida. n93 College Savings Bank alleged that the program run by Florida Prepaid was so similar to its patented methodology for the CollegeSure CD that it was a direct violation of its patent. n94 This purported infringement led College Savings Bank to file suit in the United States District Court for the District of New Jersey in an attempt to protect its rights as a patent holder. n95 The suit was brought under 35 U.S.C. § 271(a), which had previously been held as failing to contain a clear statement of intent to abrogate state sovereign immunity in regards to patent infringement suits. n96
Despite the clear intent and purpose of the Patent Remedy Act, Florida Prepaid asserted a sovereign immunity defense. n97 Florida Prepaid argued that Congress acted unconstitutionally in enacting the Patent Remedy Act because Congress cannot use an Article I power, in this case the Patent clause, to abrogate state sovereign immunity under the Supreme Court's decision in Seminole Tribe. n98 The district court disagreed with Florida Prepaid and denied the motion to dismiss. n99 The Federal Circuit affirmed, stating that "there is no sound reason to hold that Congress cannot subject a state to the same civil consequences that face a private party infringer." n100
B. The Majority Opinion
Chief Justice Rehnquist opened the majority opinion with an analysis of the Eleventh Amendment in the context of Seminole Tribe. n101 A fundamental part of sovereign immunity is that the sovereign is not amenable to [*541] suit in federal court, unless the sovereign agrees to be sued. n102 Chief Justice Rehnquist noted that Seminole Tribe formulated this issue into a twopart test for abrogating sovereign immunity. The test first required that Congress clearly express its intent to abrogate state sovereign immunity, and second, that Congress' act arise from a valid exercise of power. n103
The majority readily conceded that the Patent Remedy Act clearly expressed congressional intent to abrogate sovereign immunity, satisfying the first part of the Seminole Tribe two-part test. n104 The second part, whether Congress had the power to compel the states to relinquish their sovereign immunity, proved more problematic as far as the majority was concerned. Congress claimed a valid exercise of power under the Patent Clause, n105 the Interstate Commerce Clause, n106 and section 5 of the Fourteenth Amendment. n107 The first two claims, each of which arose under Article I of the Constitution, were clearly precluded by the fact that Seminole Tribe overruled Union Gas, the only example of the Supreme Court allowing Congress' abrogation of sovereign immunity pursuant to Article I powers. n108
Thus, the majority was left to deal primarily with College Savings Bank's claim that Congress operated under a valid exercise of power pursuant to section 1 of the Fourteenth Amendment, which provides protection against deprivation of property without due process of law, n109 and section 5, which gives Congress the power to enact "appropriate" legislation to enforce the Fourteenth Amendment. n110 The majority did not contest the characterization of a patent as property, and has in fact held this to be the case for more than 120 years. n111 Thus, the threshold question became, whether the Patent Remedy Act was "appropriate" legislation under section 5 of the Fourteenth Amendment. n112 The Court held that the Patent Remedy Act was not appropriate legislation. n113 [*542]
1. City of Boerne Analysis
The majority in Florida Prepaid turned to the decision in City of Boerne v. Flores n114 to determine when an act of Congress constitutes "appropriate" legislation pursuant to Section 5 of the Fourteenth Amendment. n115 The City of Boerne Court determined that "there must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end. Lacking such a connection, legislation may become substantive in operation and effect." n116 The majority characterized the requirement for appropriate legislation as requiring that Congress "must identify conduct transgressing the Fourteenth Amendment's substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct." n117
The majority, in applying City of Boerne, had to determine if the Patent Remedy Act was remedial or preventive legislation enacted to secure Fourteenth Amendment protections without making a substantive change in the governing law. Furthermore, City of Boerne also afforded Congress "wide latitude" in determining whether a law is a remedial or a substantive change. n118
The requirement of "wide latitude" seems to be the key ingredient missing from the majority's analysis. The majority focused almost entirely on identifying the Fourteenth Amendment "evil or wrong" Congress sought to remedy by the Patent Remedy Act and the pattern of violations that led them to enact the legislation. n119 The Federal Circuit had pointed to eight cases of patent infringement suits brought against states from 1880 to 1990; n120however, despite the requirement of "wide latitude" afforded to Congress, the Supreme Court decided that these cases were not sufficient to establish a pattern of patent infringements or constitutional violations by the states. n121
The timeframe the majority chose to focus on, in regards to the number of actions brought against the various states for patent infringements, [*543] strategically included only patent cases against states brought prior to the enactment of the Patent Remedy Act. n122 The rationale for focusing on this timeframe is that the Patent Remedy Act could only respond to cases prior to enactment. While it is true that there were only eight actions for patent infringement against the states from 1880-1990, there have been, as Justice Stevens' dissent points out, three such cases since 1992, n123 as well as two cases, in which state entities sought to enforce patent rights. n124 Thus, while a "pattern" of infringement may not have existed prior to the Patent Remedy Act's enactment, such a pattern may very well exist now, and it would seem inefficient to require Congress to redraft the Patent Remedy Act simply because a "pattern" has evolved subsequent to the adoption of the Act. Efficiency, standing alone, has been insufficient to sustain a piece of legislation if it is contrary to the Constitution. n125 The Patent Remedy Act, at the time of enactment, may not have been a per se response to a pattern of infringements, but now that such a pattern may be developing, it seems inefficient to require Congress to re-enact legislation that remedies this developing pattern. Perhaps instances such as this should be an exception to the doctrine articulated in Chadha. The other option, inefficient though it may be, would be for Congress to redraft the Patent Remedy Act as a response to the emerging pattern of infringements involving the various states. n126
2. Violation of Fifth Amendment Takings Clause
The Court also confronted the issue raised by College Savings Bank of whether a state that infringes a patent also "takes the property without due process or just compensation as required by the Fifth Amendment." n127 The majority, already having acknowledged that patents are property, stated that due process could only be violated if the laws of the infringing state provided the injured patent owner with either an inadequate remedy or no remedy whatsoever. n128 [*544]
Congress, in fact, did not mention the inadequacy of state remedies in the Patent Remedy Act, nor did it make any indication that it had just compensation in mind when drafting the Act. n129 Thus, the majority concluded that the Fifth Amendment could not be considered as a basis for the Act. n130 In other words, Congress cannot defend the Act based on the Fifth Amendment without having expressly considered the Fifth Amendment in drafting the Act. n131 More broadly, the Court reaffirmed that post hoc justifications for the Act would not be considered, and that only the justifications Congress expressly acknowledged in drafting the Act would be considered in determining its validity.
3. Fourteenth Amendment Due Process Clause
The majority also pointed out that in Fourteenth Amendment property deprivation cases, a deprivation does not occur when a state merely acts negligently in causing an unintended injury. n132 The majority surmised, based on the legislative history of the Patent Remedy Act, n133 that most instances of states infringing on patents were "innocent or at worst negligent." n134 Because ignorant or even negligent patent infringements do not violate the due process requirements of the Fourteenth Amendment, the majority stated that one cannot conclude that the Patent Remedy Act was enacted in response to a pattern of deprivation of constitutional rights. n135 City of Boerne requires that for an act arising under the Fourteenth Amendment to be valid, it must be in response to a "widespread and persisting deprivation of constitutional rights," n136 and the majority held that no such deprivation existed in Florida Prepaid. n137
Thus, the majority decided that the Patent Remedy Act did not pass muster under the analysis of City of Boerne, did not run afoul of the Fifth Amendment Takings Clause, and did not violate the Due Process Clause of the Fourteenth Amendment. n138 In order for the Act to be "appropriate" legislation, it had to be a response to a pattern of infringements by the states, and the remedies provided by the states must be inadequate in addressing [*545] the harm done by an infringement. n139 The majority surmised that the goal of the Act was to "provide a uniform federal remedy for patent infringement and to place States on the same footing as private parties." n140 Although these concerns are valid, the majority granted, they do not give rise to the conclusion that the Act is appropriate legislation or an acceptable exercise of Article I power as defined in Seminole Tribe's expansion of federalism.
C. The Dissenting Opinion
Justice Stevens, writing for the dissent, framed his argument around three main themes, the concerns of national uniformity in regards to patent law, the Fourteenth Amendment analysis through the prism of City of Boerne, and overriding policy concerns. n141
1. National Uniformity
All substantive patent law rules are federal, as mandated by the Constitution. n142 As Justice Stevens points out, Congress granted the federal court system exclusive jurisdiction over patent infringement cases over 160 years ago. n143 As a result of this exclusive jurisdiction, state judges have little, if any, experience in deciding often complex patent infringement cases. n144 This lack of experience and exposure on the part of state judges is strong evidence supporting the need for uniform enactment and administration of patent laws. n145
The dissent notes that this complexity was one of the compelling factors that led Congress to grant the Federal Circuit appellate jurisdiction over all patent infringement cases. n146 Congress felt patent cases are so complex, important, and unique in nature that all appeals should be heard by a single circuit, which provides compelling evidence that state courts are ill-equipped to adjudicate actions regarding infringements of federallyissued patents. n147 Furthermore, the primary motivation for the creation of the Federal Circuit "would be undermined by any exception that allowed [*546] patent infringement claims to be brought in state court." n148
The Supreme Court recognized years ago that there was a strong federal interest in maintaining uniform laws and interpretations of patent statutes to create incentives for technological advancement. n149 The potential for inconsistent enforcement of patent rights against state entities is significant if each state's court system is allowed to hear patent cases, formulate its own remedies, and apply its own substantive and procedural rules. n150 Moreover, the states, having already recognized patent law as the exclusive province of the federal government, have not enacted laws governing actions concerning patent infringements. n151
2. City of Boerne Analysis
The dissent also applied the City of Boerne analysis, but reached a result opposite to the majority. Under City of Boerne, for congressional legislation to be appropriate there must be "a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end." n152 The majority in Florida Prepaid had interpreted this to mean that there must be a preexisting harm that the legislation intends to remedy, and because Congress, in enacting the Patent Remedy Act, "identified no pattern of patent infringement by the States, let alone a pattern of Constitutional violations," the Act must fall. n153 The dissent found that requiring a pattern of state patent infringement to exist prior to congressional action was unfair because it was a requirement the Court had not expressed before the present case. n154 The dissent believed that City of Boerne does not, as the majority seems to suggest, appear to preclude preemptory legislation designed to curtail potential wrongs committed by a state. n155 The dissent focused on the City of Boerne's statement that "preventive rules are sometimes appropriate remedial measures," as long as there remains "a congruence between the means used and the ends to be achieved." n156 This clear statement from City of Boerne indicates that the Patent Remedy Act is appropriate legislation.
According to the dissent, the Court had never previously stated that before acting to abrogate sovereign immunity, Congress must first find a pattern of persistent deprivation of constitutional rights. n157 Thus, Justice [*547] Stevens noted that Congress was not on notice when it enacted the Patent Remedy Act that it must first analyze "the due process (or lack thereof) that each State might afford for a patent infringement suit retooled as an action in tort." n158 That Congress had no reason to believe such an analysis was necessary should not be counted as a strike against the Patent Remedy Act. The dissent's characterization of this requirement makes it appear as though the majority just implemented it for the first time in the present case. This may in fact be true, as the majority cites no authority for the proposition that a prior pattern of constitutional infringement must be shown for an appropriate abrogation of sovereign immunity. n159 The majority states only that the Court must "first identify the Fourteenth Amendment 'evil' or 'wrong' that Congress intended to remedy . . . ." n160 This suggests that Congress must only identify the wrong it intends to remedy, not point to a pattern of the constitutional wrongs that already exists.
The dissent also discussed the congressional hearings that led to the adoption of the Patent Remedy Act. n161 Although a pattern, the dissent found that it showed Congress was responding to an existing state act of patent infringement. n162 The dissent pointed out that Chew was specifically cited in the House when considering the Patent Remedy Act. n163 In fact, the dissent cites several cases of state involvement in patent infringements-- though not all cases concerned the state acting as the infringer--that were considered in enacting the Patent Remedy Act. n164
Further, the proportionality requirement for appropriate legislation pursuant to section 5 of the Fourteenth Amendment has embraced the concept of preventive rules. n165 Such rules are permissible if there is "a congruence between the means used and the ends to be achieved. The appropriateness of remedial measures must be considered in light of the evil presented." n166 The dissent maintained that this precedent ran counter to the majority's assertion that there must be a preexisting pattern of constitutional infringements for Congress to validly abrogate sovereign immunity. n167
Nonetheless, the dissent pointed out that the required congruence existed [*548] in the present case. n168 Justice Stevens found that the means used--abrogation of sovereign immunity in the narrow instances of patent infringement--was in proper congruence with the ends to be achieved, namely eliminating the risk that patent holders will be deprived of property without due process by an assertion of sovereign immunity. n169 If the dissent is correct that this congruence does exist, then the Patent Remedy Act would satisfy the requirements for a valid abrogation of sovereign immunity, as the requirements existed when Congress enacted the Patent Remedy Act.
Under City of Boerne, it was also relevant to analyze what other remedies may exist in the absence of Congress' abrogation of state sovereign immunity. The dissent recognized that Congress, in its hearings regarding the Patent Remedy Act, had no reason to investigate possible state remedies because state jurisdiction over patent infringement was preempted long ago. n170 Thus, Congress was reasonable in its assumption that there were inadequate remedies for patent holders if actions against a particular state were to be brought in that, or any state's system. n171 As a result, the Patent Remedy Act would appear to satisfy the congruence and proportionality test in City of Boerne.
3. Policy Considerations
The dissent next addressed the interests of judicial economy that are served by the Patent Remedy Act. The dissent's primary concern was that federal judges have been exposed to complex patent litigation for decades, whereas a state judge, even if the state provides adequate patent infringement remedies, has, in all likelihood, never heard a case concerning patent infringement. n172
Furthermore Justice Stevens expressed his continuing dissent from the Court's current spate of "aggressive sovereign immunity jurisprudence" since Seminole Tribe. n173 The dissent the proportionality and congruence requirements of City of Boerne to be satisfied and that the clear statement of congressional intent to abrogate sovereign immunity was unquestionably satisfied. Justice Stevens was joined by Justices Souter, Breyer, and Ginsburg. [*549]
IV. ANALYSIS AND IMPACT ON DEVELOPMENT AND INNOVATION
This Part focuses on the impact Florida Prepaid is likely to have on the field of intellectual property, the expansion of sovereign immunity beyond the Framers' intent, and the policy arguments for treating a state entity that acts like a private entity in the same manner as a private entity. A possible caveat, and a large one at that, to all of these concerns is that patent holders will still retain the ability to sue the state actor as an individual and obtain prospective relief in the form of an injunction preventing the actor from continued used of the patent. n174 The decision in Florida Prepaid will disincentivize the absorption of up-front costs of research and development. Also, the idea that a state acting as a private entity in the marketplace has implicitly waived sovereign immunity has considerable merit.
A. Framers' Intent
The Framers of the Constitution intended that all laws and adjudicatory powers pertaining to patent and trademark law be within the sole domain of the federal government. n175 This idea was espoused even prior to the ratification of the Constitution. James Madison, in Federalist 43, stated, "the states cannot separately make effectual provision for either [copyrights or patents]." n176 Madison's comment demonstrates the importance of federal control over the issuance and governance of patent law. n177
A further indicator of intent is the inclusion of federal power over patents with the other specifically enumerated powers of Congress in Article I. n178 By contrast, the Eleventh Amendment was not originally part of the Constitution. This, however, is a knife that cuts both ways. The counter-argument to original intent, insofar as the Eleventh Amendment applies, is that because the Eleventh Amendment was enacted subsequent to Article, if there is a conflict between the two, deference is afforded to the Amendment. To follow that line of reasoning, the federal government pursuant to the Fourteenth Amendment can preclude the Eleventh Amendment grant of sovereign immunity. n179 This, in fact, is the tack the majority in Florida Prepaid accepts as the means of abrogating state sovereign immunity. [*550] n180 An abrogation must be explicit, or pursuant to the Fourteenth Amendment. n181
The text of the Eleventh Amendment is quite clear. The Amendment disallows judicial power by the federal government over any state without its consent in "any suit in law or equity." n182 A strict reading of the text precludes the states from being sued in federal court on any theory, unless the state consents to such a suit. This begs the question, however, of when exactly a state gives its consent to be sued in federal court.
In Seminole Tribe, the Court acknowledged that the Eleventh Amendment was not merely a restriction on federal jurisdiction, but rather a mandate that required sovereign immunity for the states unless Congress "unequivocally" abrogated it "pursuant to a valid exercise of power." n183 This acknowledgement, however, presented the Court with a problem: if sovereign immunity was a constitutional mandate, then it had to be interpreted pursuant to the text of the Eleventh Amendment. However, the Eleventh Amendment seems to state that sovereign immunity only applies in diversity jurisdiction and not under federal question jurisdiction. n184 Under such an interpretation, patents would fall outside the purview of the Eleventh Amendment. The Court, however, has never adopted this interpretation. In, fact in Alden v. Maine, n185 decided the same day as Florida Prepaid, the Court stated that "state's immunity from suit is a fundamental aspect of the sovereignty which the States enjoyed before the ratification of the Constitution . . . except as altered by the plan of the Convention or certain constitutional amendments." n186 This means that sovereign immunity is, in a sense, a fundamental right of the various states and that the Eleventh Amendment is simply a reaffirmation of that privilege.
If this is the case, however, then the suggestion appears to be that the Eleventh Amendment is, at least to some degree, superfluous or adds little to the doctrine of sovereign immunity other than to codify what was a common law doctrine. Further if the Eleventh Amendment is in fact a reaffirmation of an existing privilege, why reaffirm sovereign immunity in the context of diversity cases, but make no mention of sovereign immunity for federal questions?
For the Court, the idea that the Eleventh Amendment was an assertion of an existing state right, rather than the creation of a new right, solves the problem of the narrow language of the Eleventh Amendment. But this idea seems to reintroduce the problem of interpreting the boundaries of the [*551] doctrine of sovereign immunity. If the text of the Eleventh Amendment does not determine the extent of immunity then what does? The Court adopts the two-part test in Seminole Tribe, an unequivocal expression of intent pursuant to a valid exercise of power, as the test to determine if abrogation is valid without looking to the text of the Eleventh Amendment. n187
B. Consent
If a state consents to be sued then sovereign immunity is moot. Whether a state consents, however, is not always as easy to determine as it appears. The first issue regarding consent is whether the consent given by the state must be explicit or if it can be inferred, thus waiving immunity implicitly. The majority, in the companion case to Florida Prepaid, unequivocally answered this question by holding that immunity cannot be waived implicitly. n188 In doing so, the Court overruled its decision in Parden v. Terminal Railyard of Alabama State Docks Department, n189 which provided that states can be amenable to suit in federal court by implicitly waiving their immunity. The rationale of Parden has merit. If a state enters a private arena, such as educational financing, and behaves the same as any other private entrant in the marketplace, then the state should be treated in the same manner as a private entity that commits the same illegal act.
This differs from the typical sovereign immunity case where a state is sued as a result of a purely state action, such as establishing voting districts or railroad transportation rates. Thus, the standard rationale for sovereign immunity aptly applies in situations that only involve states in their status as sovereigns. In Florida Prepaid, however, Florida was not acting as a sovereign in the traditional sense. Its actions were much more akin to those of a private entity. Therefore, from a strictly pragmatic point of view, it is quite logical to treat Florida the same as any other participant in the collegefinancing marketplace. The overruling of Parden, however, explicitly precluded such an implicit waiver and allowed the waiver of sovereign immunity only where done so explicitly. n190
A problem that has been hypothesized regarding implied waiver, however, is that it may enable the Court "to declare that the states have [*552] consented to any consequence that the Court deems to flow from a particular state activity." n191 The present Supreme Court clearly would not give such an expansive view to the doctrine of implied waiver and, as demonstrated by the overruling of Parden, has displayed an outright animosity towards to the idea. n192 As an intellectual concern, however, Professor James Pfander, Professor of Law at the University of Illinois, fears this possibility is likely, should a future Court revisit the issue. n193
The benefits of implied waiver, however, may be worth the risk that courts would interpret the doctrine broadly. Private businesses that compete with state entities may be much more willing to invest in new ideas or technology if they are certain that remedies against potential infringers are consistent regardless of who happens to be the infringer. n194 The uncertainty of remedy inherent in making state infringers amenable only in state court necessarily makes any up-front investments in new technology by private businesses more risky. Consistent adjudication of patent infringement suits, that is, making any entity, state or otherwise, in that particular marketplace amenable to suit in federal court, renders those investments in innovation less costly and thus, more practical.
Explicit waiver may, however, be an option if Congress makes receipt of certain federal benefits contingent upon waiving sovereign immunity in a variety of fields. Such a theory has been endorsed by Professor Kit Kinports, and she notes that Congress could utilize its power under the spending clause of the Constitution n195 to condition the receipt of federal grants upon the states waiving their Eleventh Amendment immunity. n196 This idea is attractive because it gives the states a choice in deciding which is more important to them, the receipt of federal funds for a particular project or the protection afforded by Eleventh Amendment immunity.
C. Policy
The primary policy problems raised by Florida Prepaid are that it runs counter to the grant of exclusive authority over patents to the federal government, remedies provided by the various states are uncertain and may dissuade some inventors and developers from incurring the up-front costs of innovation, and developers whose patents are infringed have no judicial recourse. These concerns, along with those already expressed, further demonstrate the problems that will arise as a result of Florida Prepaid. [*553]
The policy implications of Florida Prepaid, particularly with regard to exclusive federal jurisdiction over patent suits, were envisioned years before the Patent Remedy Act was even debated. n197 These critics of what was then the emerging Eleventh Amendment jurisprudence pointed out that because federal courts were the only place where copyright, trademark, and patents could be enforced, it was reasonable to infer that there was an implied intention--in the exclusivity statutes--to bind the states. n198
The remedies provided by state courts in actions against a state for patent infringement are questionable at best and in some cases may not even exist. n199 This uncertainty is very likely to deter such wouldbe inventors from incurring the costs of research and development, if the potential invention is one that is likely to be of interest to a particular state entity. It is hard to think of a better example than the CollegeSure CDs offered by College Savings Bank in Florida Prepaid. Clearly this form of prepaid college tuition is attractive to many parents and state administrators. However, had College Savings Bank known during the development process that any state could infringe its patent, and the remedies for such infringement would be uncertain at best, College Savings Bank may not have developed the product at all.
Also of concern is the possibility of simultaneous infringement by multiple states. Should such a situation arise, the patent holder would be forced to litigate in each state where she has a claim against a state entity. A patent holder may find it extremely difficult to litigate in multiple states that may have different substantive and procedural rules. Were the suits to be brought in federal court, however, joinder of all the infringing parties might be deemed practical, and at the very least, the procedural rules and the relevant statutory and case law would be essentially the same for each suit.
Another policy issue of concern is that the impartiality of state courts in patent infringement cases. This concern has already been expressed in the federal judicial system in the doctrine of diversity jurisdiction and the statutorily permitted removal of certain cases to the federal court system. n200 The fear of such impartiality was expressed early in Eleventh Amendment jurisprudence, leading to an originally narrow construction of the Amendment. n201 The court recently ignored this originally narrow construction, [*554] and broadened the scope of sovereign immunity jurisprudence through a broader definition of the Eleventh Amendment than perhaps was originally understood.
These policy considerations taken individually are not enough to warrant great concern over the decision in Florida Prepaid. Taken collectively, however, there is strong reason to believe that the decision will result in the occurrence of some of the issues asserted above. This likelihood suggests, as do the other concerns expressed herein, that Florida Prepaid will lead to more practical problems than strict adherence to Seminole Tribe's line of jurisprudence warrants.
D. Much Ado About Nothing?
The immediate response to Florida Prepaid contained some opposition. Some commentators believe the effect of the decision will be tantamount to disaster. For instance, Professor Chemerinsky, of the University of Southern California Law School, wrote that the decision permits a state university to blatantly disregard patent and copyright laws, and infringe the rights of patent holders, leaving no court with the means to grant relief. n202 Such fears, while certainly taking into account Ex parte Young, n203 may be underestimating the remedial power of that decision. The remedies available under Ex parte Young should serve to deter the most egregious examples of infringement. Injunctive relief, the only remedy available under Edelman, n204 will prevent states from continued infringement and serve as a sufficient prospective remedy for the patent holder. The problem of retrospective relief for infringements that have already occurred was not addressed under the holding of Florida Prepaid. The United States recognized the injustice of this and waived its sovereign immunity in patent suits ninety years ago. n205 The fact that all state officials are sworn to uphold the Constitution should decrease the likelihood of the most blatant infringements. n206
Seminole Tribe addressed the issue of Ex parte Young, holding that the governor of Florida could not be sued directly in that instance. n207 The Seminole Tribe Court based that decision on the relevant federal statute that the Court felt implicitly disallowed suits against responsible state officials. [*555] n208
Critics of the decision, however, do not believe that Seminole Tribe means the end, or even a meaningful restriction, on Ex parte Young. Actions brought under Section 1983 n209 or Ex parte Young will continue to provide a means for obtaining injunctive relief from states. n210 Furthermore, scholars have declared Ex parte Young alive and well, and have stated that Seminole Tribe will have but a "minor impact" for those individuals suing states. n211
Florida Prepaid does not specifically address the possibility of private entities bringing suits directly against the actor responsible for the alleged infringement. In the absence of such a preclusion, the Court apparently intended that an Ex parte Young remedy remain an option for the private party. The fact that this remains an option for private patent holders reduces the fear that such patent holders will have no remedy available to them. Prospective relief, however, may not provide adequate relief in all infringement cases. The fact that the Court did not specifically address the possibility of Ex parte Youngtype relief suggests that Court will only answer that question when it specifically arises, and given the decision in Florida Prepaid, the wait is likely to be short.
Another possible means of getting around Eleventh Amendment immunity extended in Florida Prepaid would be to redraft the applicable legislation, so that it creates a property right under the Article I powers and protects that right from state infringement pursuant to the Fourteenth Amendment. n212 This idea would neatly skirt the fact that Article I powers can no longer be used to abrogate sovereign immunity, and comports with the holding in both Seminole Tribe and Florida Prepaid because the power under which Congress abrogates sovereign immunity is the Fourteenth Amendment and the Article I power is only in the bill to create the property right that is being protected by the enforcement clause of the Fourteenth Amendment. Although this idea may provide the best solution, it is easier to accomplish in theory than in practice. Congress may also attempt to redraft a form of the Patent Remedy Act to reflect a similar idea.
CONCLUSION
The decision in Florida Prepaid Postsecondary Education Expense [*556] Board v. College Savings Bank adheres to a strict interpretation of Seminole Tribe. A more pragmatic interpretation of Seminole Tribe and, as the dissent notes, of City of Boerne, would allow jurisprudential consistency and a more effective and economically sound rule.
The majority holding that all powers arising under Article I section 8 of the Constitution do not apply as to the individual states is particularly damaging to patent law. The other federal powers arising under Article I section 8, such as coining money, declaring war, and maintaining an army and navy, will not give rise to sovereign immunity cases. The patent clause, however, is most likely to be abused by the states now that the Supreme Court has granted the states immunity in such instances. The benefits of federalism in patent cases are greatly outweighed by negative economic consequences, problems with state courts handling patent cases, and undermining the entire basis behind enacting a federal patent structure in the first place.
Justice Stevens' dissent correctly points out and analyzes these shortcomings. The dissent's call for continued national uniformity in patent suit cases is compelling and outlines the difficulties that state courts will encounter in attempting to decide complex patent litigation. Florida Prepaid undermines more than 200 years of strictly federal jurisdiction in patent cases. Also, the dissent acknowledges the potential for bias in favor of state infringers defending in their home state court system. This may be a cynical point of view, but one that is likely to be carried out in practice.
The dissent does not, however, make enough of the fact that this decision will remove the incentive for many firms to incur the up front cost of research and development necessary to produce innovations. This, more than anything, is the shortcoming of Florida Prepaid. It is also the problem with the holding that will be the most difficult to quantify. The difficulty in determining how many potential innovations were never developed for fear of an inadequate return on development costs is obvious. All that is certain is that some innovations will never occur for this very reason, and that alone should have been enough to prevent the majority from holding as it does.
Florida Prepaid deters innovation, overburdens state court systems unprepared to adjudicate complicated patent litigation, and undermines, what for 200 years, has been strictly a federal realm of authority. It is highly unlikely that the Framers intended sovereign immunity to extend so far, and it is even more unlikely that such an extension will have beneficial effects towards innovation. The decision of Florida Prepaid has too many negative aspects to eliminate the likelihood that this decision will be revisited at some point in the future. While the decision in Florida Prepaid is jurisprudentially consistent with a growing line of cases that began with Seminole Tribe, the practical application of Florida Prepaid is likely to [*557] have many negative consequences and as a result this decision will likely require reexamination after these consequences manifest themselves.

FOOTNOTES:

n1 U.S. CONST. art. I, § 8, cl. 8.

n2 See, e.g., Campbell v. City of Haverhill, 15 U.S. 610 (1895); In re Beatrice Foods Co., 429 F.2d 466 (C.C.P.A. 1970); and Enterprise Mfg. Co. v. Shakespeare Co., 141 F.2d 916 (6th Cir. 1944).

n3 527 U.S. 627 (1999).

n4 Id. at 635.

n5 See Seminole Tribe of Florida v. Florida, 517 U.S. 44 (1996) (holding that Congress may not abrogate state sovereign immunity pursuant Congress' Article I powers.).

n6 U.S. CONST. art. I, § 8, cl. 8.

n7 28 U.S.C. § 1338(a) (1999): "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states." (emphasis added).

n8 See Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627, 651-52 (Stevens, J. dissenting) (examining the implications of allowing patent cases in state court, possibly under tort theory).

n9 See Seminole Tribe, 517 U.S. 44 (1996).

n10 U.S. CONST. art. I, § 8, cl. 8.

n11 2 U.S. 419 (1793).

n12 Id.

n13 U.S. CONST. amend. XIII (1865); U.S. CONST. amend. XIV (1868); and U.S. CONST. XV (1870).

n14 U.S. CONST. amend. XIV (1868).

n15 U.S. CONST. amend. XIV § 1 and 5 (1868).

n16 Consolidated Fruit-Jar Co. v. Wright, 94 U.S. 92, 96 (1876) ("The rights of a party under a patent are his private property.").

n17 Pub. L. No. 102-560, 106 Stat. 4230 (1992) (codified as 35 U.S.C. § 271(h), 296(a) (1992)).

n18 Id.

n19 City of Boerne v. Flores, 521 U.S. 507 (1997).

n20 Id. at 520.

n21 517 U.S. 44 (1996).

n22 U.S. CONST. art. I, § 8, cl. 8.

n23 THE FEDERALIST No. 43, at 267 (James Madison) (H. Lodge ed. 1908) (quoted in Florida Prepaid, 527 U.S. at 650).

n24 See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989).

n25 See Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 22930 (1964).

n26 See Respondent's Brief for the United States at 4, Florida Prepaid, 527 U.S. 627 (1999).

n27 See 28 U.S.C. § 1338 (1999).

n28 See Bonito Boats, 489 U.S. at 162.

n29 See Florida Prepaid, 527 U.S. at 648 (citing Act of Apr. 17, 1800, ch. 25, 2 Stat. 37.)

n30 See Federal Courts Improvement Act of 1982, Pub. L. No. 97164, s 127(a), 96 Stat. 37 (codified as 28 U.S.C. § 1295(a)(1) (2000)).

n31 Id.

n32 2 U.S. 419 (1793).

n33 See id.

n34 THE FEDERALIST No. 81 (Alexander Hamilton) (H. Lodge ed. 1908).

n35 U.S. CONST. amend. XI (1798) ("The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.").

n36 THE FEDERALIST No. 81 (Alexander Hamilton) (H. Lodge ed. 1908).

n37 134 U.S. 1 (1890)

n38 See id. at 13.

n39 209 U.S. 123 (1908).

n40 Id. at 167.

n41 Id. (citing In re Ayres, 123 U.S. 507 (1887)).

n42 See Edelman v. Jordan, 415 U.S. 651, 666 (1983).

n43 See id. at 659.

n44 See Kennecott Copper Corp. v. Stat Tax Comm'n, 327 U.S. 573 (1946) (holding that monetary damages that must be paid from the public treasury are barred by the eleventh amendment.).

n45 See Paul v. Davis, 424 U.S. 693, 710-12 (1976).

n46 Slaughter-House Cases, 83 U.S. 36, 53 (1872). See also U.S. CONST. amend. XIV § 1 (1868) ("No State shall make or enforce any law which shall abridge the privileges or immunities of citizens of the Unites States; nor shall any State deprive any person of life, liberty, or property, without due process.").

n47 See City of Boerne, 521 U.S. at 522.

n48 See Fitzpatrick v. Bitzer, 427 U.S. 445, 456 (1976).

n49 See Seminole Tribe, 517 U.S. at 72 n.15.

n50 See City of Boerne, 521 U.S. 517-18 (quoting Ex parte Virginia, 100 U.S. 339, 345-46 (1880)).

n51 See Florida Prepaid, 527 U.S. at 644-45.

n52 Id.

n53 35 U.S.C. § 261 (1992).

n54 See Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 121 (1877).

n55 See Petitioner's Brief at 17, Florida Prepaid, 527 U.S. 627 (1999).

n56 See Florida Prepaid, 527 U.S. at 643; Parratt v. Taylor, 451 U.S. 527, 539 (1981).

n57 Patent Remedy Act 35 U.S.C. § § 271, 296 (1992).

n58 Patent Remedy Act 35 U.S.C. § 296(a) ("Any state . . . shall not be immune under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in federal court for infringement of a patent.").

n59 35 U.S.C. § 271(h).

n60 Id.

n61 See Florida Prepaid, 527 U.S. at 635.

n62 517 U.S. 44 (1996).

n63 Id. at 55.

n64 See, e.g., Idaho v. Coeur d'Alene, 521 U.S. 261 (1997); Scott v. University of Mississippi, 148 F.3d 493 (5th Cir. 1998); Close v. State of New York, 125 F.3d 31 (2d. Cir. 1997); In re Creative Goldsmiths of Washington D.C., Inc., 119 F.3d 1140 (4th Cir. 1997).

n65 491 U.S. 1 (1989) (holding that Congress has the authority to abrogate state sovereign immunity pursuant to the Commerce Clause).

n66 See Seminole Tribe, 517 U.S. at 72-73.

n67 See Union Gas, 491 U.S. at 22.

n68 See Seminole Tribe, 517 U.S. at 72-73.

n69 See H. Stephen Harris, Jr. & Michael P. Kenny, Eleventh Amendment Jurisprudence After Atascadero: The Coming Clash with Antitrust, Copyright, and other Causes of Action over Which the Federal Courts have Exclusive Jurisdiction, 37 EMORY L.J. 645, 70420 (1988).

n70 Id.

n71 See Florida Prepaid, 527 U.S at 643.

n72 Id. at 640.

n73 Lemelson v. Ampex Corp., 372 F. Supp. 708, 711 (N.D. Ill. 1974).

n74 See Hercules, Inc v. Minnesota State Highway Dept., 337 F. Supp. 795 (D.Minn. 1972).

n75 Sulaiman M. Qazi, Comment, Licensed to Steal: Has Sovereign Immunity Gone Too Far?, 32 J. MARSHALL L. REV. 779, 783 (1999) (citing Lemelson, 372 F. Supp. at 711).

n76 See Edelman v. Jordan, 415 U.S. 651, 673 (1974).

n77 473 U.S. 234 (1985).

n78 Id. at 242.

n79 Florida Prepaid, 527 U.S. at 635 (citing 35 U.S.C. § 296(a) ("Any State . . . shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in federal court . . . for infringement of a patent.")).

n80 491 U.S. 1 (1989).

n81 See Seminole Tribe, 517 U.S. at 55.

n82 893 F.2d 331 (Fed. Cir. 1990).

n83 Id. at 334.

n84 Id. at 332.

n85 Id.

n86 See H.R. Rep. No. 101-960, pt.1, p. 7 (1990).

n87 521 U.S. 507 (1997) (holding the Religious Freedom Reform Act of 1993 violated Congress' broad discretionary powers under section 5 of the Fourteenth Amendment).

n88 Id. at 519-20.

n89 Id. at 519.

n90 See Florida Prepaid, 527 U.S. at 639.

n91 See id. at 630.

n92 Id. at 630-31.

n93 See FLA. STAT. § 240.551(1) (Supp. 1998).

n94 See Florida Prepaid, 527 U.S. at 631.

n95 Id.

n96 See Atascadero State Hosp. v. Scanlon, 473 U.S. 234, 242-43 (1985); see, e.g., Chew v. California 893 F.2d 331 (D.C. Cir. 1990).

n97 See Florida Prepaid, 527 U.S. at 633.

n98 Id.

n99 See College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 948 F. Supp. 400 (D.N.J. 1996).

n100 College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 148 F.3d 1343, 1355 (D.C. Cir. 1998).

n101 See Florida Prepaid, 527 U.S. at 634-35.

n102 Hans v. Louisiana, 134 U.S. 1 (1890).

n103 See Seminole Tribe, 517 U.S. at 55.

n104 See Florida Prepaid, 527 U.S. at 635.

n105 U.S. CONST. art. I, § 8, cl. 8.

n106 U.S. CONST. art. I, § 8, cl. 3.

n107 U.S. CONST. amend. XIV § 5 ('The congress shall have power to enforce, by appropriate legislation, the provisions of this article.").

n108 Union Gas, 491 U.S. 1; Seminole Tribe, 517 U.S. 44.

n109 U.S. CONST. amend. XIV § 1 ("No State shall . . . deprive any person of life, liberty, or property without due process of law.").

n110 U.S. CONST. amend. XIV § 5.

n111 See Union Paper-Bag Mach. Co. v. Murphy, 97 U.S. 120, 121 (1877) ("Rights secured to an inventor by letters-patent are property.").

n112 See Florida Prepaid, 527 U.S. at 637.

n113 Id. at 647.

n114 521 U.S. 507 (1997).

n115 See Florida Prepaid, 527 U.S. at 637-38.

n116 See City of Boerne, 521 U.S. at 520.

n117 Florida Prepaid, 527 U.S. at 639.

n118 City of Boerne, 521 U.S. at 520.

n119 Florida Prepaid, 527 U.S. at 639-40.

n120 See College Savings Bank v. Florida Prepaid Postsecondary Educ. Expense Bd., 148 F.3d 1343, 1353-54 (D.C. Cir. 1998); (Jacobs Wind Elec. Co. v. Florida Dep't of Transp., 919 F.2d 726, (D.C. Cir. 1990); Chew v. California, 893 F.2d 331 (D.C. Cir. 1990); cert denied, 498 U.S. 810 (1990); Watts v. University of Del., 622 Ff.2d 47 (3d. Cir. 1980); Kersavage v. University of Tenn., 731 F. Supp. 1327 (E.D. Tenn. 1989); Lemelson v. Ampex corp., 372 F. Supp. 708 (N.D. Ill, 1974); Hercules Inc. v. Minnesota State Highway Dep't, 337 F. Supp. 795 (D. Minn. 1972); Kraft Foods Co. v. Walther Dairy Prods., 118 F. Supp. 795 (W.D. Wis. 1954); William C. Popper & Co. v. Pennsylvania Liquor Control Bd., 16 F. Supp. 762 (E.D. Pa. 1936).

n121 See Florida Prepaid, 527 U.S. at 640.

n122 Id.

n123 Id. at 656-57 (citing; Gen-Probe, Inc. v. Amoco Corp., Inc., 926 F.Supp. 948 (S. D. Cal. 1996) (suit alleging that Regents of the University of California induced patent infringement by Amoco); Genentech v. Regents of Univ. of Cal., 143 F.2d 1446 (Fed. Cir. 1998) (suit for declaratory judgment filed by Genentech); Ciba-Geigy v. Alza Corp., 804 F.Supp. 614 (D.N.J. 1992) (Alza counterclaim against Regents of the University of California.).

n124 Id. (citing Regents of Univ. of Minn. v. Glaxo Welcome, Inc. 44 F. Supp. 2d 998 (D. Minn. 1999) (declaratory action filed by the University of Minnesota); University of Colo. Foundation, Inc. v. American Cyanamid Co., 974 F. Supp. 1339 (D. Colo. 1997) (patent infringement suit filed by the University of Colorado)).

n125 INS v. Chadha, 462 U.S. 919, 944 (1983).

n126 See id. ("Convenience and efficiency are not the primary objectives --or the hallmarks -- of a democratic government . . . .").

n127 Florida Prepaid, 527 U.S. at 641-42.

n128 Id. at 643. This is the general rule in property deprivation cases, in which a party claiming a taking must exhaust State remedies before challenging the taking in federal court. See Hudson v. Palmer, 468 U.S. 517, 532-33 (1984) (O'Connor, J., concurring).

n129 See Florida Prepaid, 527 U.S. at 643 n.8.

n130 See id. at 642 n.7.

n131 U.S. v. Virginia, 518 U.S. 515, 533 (1996) ("The justification must be genuine, not hypothesized or invented post hoc in response to litigation.").

n132 See Daniels v. Williams, 474 U.S. 327, 328 (1986).

n133 See H.R. Rep. No. 101-960 at 39 (1990); S. Rep. No. 102-280 at 10 (1992).

n134 See Florida Prepaid, 527 U.S. at 645.

n135 Id.

n136 See City of Boerne v. Flores, 521 U.S. 507, 526 (1997).

n137 See Florida Prepaid, 527 U.S. at 646.

n138 See id.

n139 Id. at 640-41.

n140 Id. at 647.

n141 See Florida Prepaid, 527 U.S. at 648 (Stevens, J. dissenting).

n142 U.S. CONST. art. I, § 8, cl. 8.

n143 See Florida Prepaid, 527 U.S. at 648 n.1 (citing 28 U.S.C § 1338(a) "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive.").

n144 Id. at 659.

n145 Id.

n146 See 28 U.S.C. § 1295(1).

n147 See Florida Prepaid, 527 U.S. at 651-52.

n148 Id. at 652.

n149 Id. at 650 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966)).

n150 Id. at 655-56 n.7.

n151 Id. at 656.

n152 City of Boerne, 521 U.S. at 520.

n153 Florida Prepaid, 527 U.S. 640.

n154 Id. at 654.

n155 Id. at 661.

n156 City of Boerne, 521 U.S. at 530.

n157 Florida Prepaid, 527 U.S. at 660.

n158 Id.

n159 Id. at 640.

n160 Id. (citing City of Boerne, 521 U.S. at 525).

n161 See Florida Prepaid, 527 U.S. at 655.

n162 Id.

n163 Id. (citing H.R. Rep. no. 101-960, pt. 1, at 7 and n.20 (1990)).

n164 See id. at 656 (citing Hercules, Inc. v. Minnesota State Highway Dept., 337 F. Supp. 795 (D. Minn. 1972); Lemelson v. Ampex Corp., 372 F. Supp. 708 (N.D. Ill. 1974)).

n165 City of Boerne, 521 U.S. at 530 (citing South Carolina v. Katzenbach, 383 U.S. 301, 334 (1966)).

n166 Id.

n167 See Florida Prepaid, 527 U.S. at 662.

n168 See id.

n169 See id.

n170 See id. at 658.

n171 See id.

n172 See id. at 659.

n173 Id. at 664.

n174 Edelman v. Jordan, 415 U.S. 651, 665-66 (1974).

n175 U.S. CONST. art. I, § 8 cl. 8.

n176 THE FEDERALIST No. 43, at 267 (James Madison) (H. Lodge ed. 1908) (quoted in Florida Prepaid, 527 U.S. at 650).

n177 Id.

n178 U.S. CONST. art. I, § 8.

n179 See Fitzpatrick v. Bitzer, 427 U.S. 445 (1976) (emphasis added) (holding that states could be sued directly pursuant the Fourteenth Amendment because its adoption was after the Eleventh amendment).

n180 Florida Prepaid, 527 U.S. at 637.

n181 527 U.S. at 635.

n182 U.S. CONST. amend. XI (1798) (emphasis added).

n183 See Seminole Tribe, 517 U.S. at 54-55.

n184 See U.S. CONST. amend. XI.

n185 527 U.S. 706 (1999).

n186 Id. at 713.

n187 See Seminole Tribe, 517 U.S. at 54-55.

n188 See College Savings Bank v. Florida Prepaid Postsecondary Ed. Expense Bd., 527 U.S. 666 (1999) (holding that College Savings Bank's Lanham Act claim cannot be sustained because Florida has not consented to suit in federal court).

n189 377 U.S. 184 (1964).

n190 See College Savings Bank, 527 U.S. at 681. That a state would explicitly waive such a privilege seems quite unlikely, unless the waiver of sovereign immunity is a condition precedent to receipt of some form of benefit from the federal government. Id. at 694.

n191 James Pfander, An Intermediate Solution to State Sovereign Immunity: Federal Court Review of State-Court Judgments After Seminole Tribe, 46 UCLA L. REV. 161, 193 (1998).

n192 See College Savings Bank, 527 U.S. at 681-82.

n193 Pfander, supra note 188, at 193.

n194 See Florida Prepaid, 527 U.S. at 662.

n195 U.S. CONST. art. I, § 8.

n196 Kit Kinports, Implied Waiver After Seminole Tribe, 82 MINN. L. REV. 793, 822-27 (1998).

n197 Harris, Jr. & Kenney, supra note 69, at 645.

n198 Id. at 705.

n199 Florida Prepaid, 527 U.S. at 656 (quoting the Acting Commissioner of Patents "If States and their instrumentalities were immune from suit in federal court for patent infringements, patent holders would be forced to pursue uncertain, perhaps even nonexistent, remedies under State law.").

n200 Id. at 660.

n201 Id. (quoting Cohens v. Virginia, 19 U.S. (6 Wheat.) 264, 386 (1821) (Marshal, C.J.) "It would be hazarding too much to assert, that the judicatures of the states will be exempt from the prejudices by which the legislatures and people are influenced, and will constitute perfectly impartial tribunals.").

n202 Erwin Chemerinsky, Permission to Litigate, ABA J., Aug. 1999, at 42.

n203 209 U.S. 123 (1908).

n204 Edelman, 415 U.S. at 666.

n205 See Florida Prepaid, 527 U.S. at 664 (citing 28 U.S.C. § 1498).

n206 Dan Schweitzer, Alden, College Savings Bank, and Florida Prepaid: What They Hold and Mean to the Future of Federal-State Relations, 14 no. 8 National Association of Attorneys General: NAT'L ENVTL. ENFORCEMENT J. 3, Sept. 1999.

n207 See Seminole Tribe, 517 U.S. at 73.

n208 See Pfander, supra note 191, at 181.

n209 42 U.S.C. § 1983 (1996).

n210 John Jeffries, Jr. In Praise of the Eleventh Amendment and Section 1983, 84 VA. L. REV. 47, 49 (1998).

n211 David P. Currie, Ex Parte Young after Seminole Tribe, 72 N.Y.U. L. REV. 547, 547 (1997).

n212 See Kurt E. Springmann, Comment, The Impact of Seminole on Intellectual Property Infringement by State Actors: The Interaction of Article I, Article III, the Eleventh Amendment and the Fourteenth Amendment, 29 ARIZ. ST. L.J. 889, 898-99 (1997).

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