Re: Any news on College Savings Bank oral arguments?

On 04/23/1999, Andrew C. Greenberg <werdna[_at_]gate.net> wrote:
>
> On Thu, 22 Apr 1999, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
> >
> > There was quite a good report on Wednesday in the New York Times.
> > Several of the conservative justices seemed to be of the opinion that
> > banning suit in federal court wasn't too troubling, especially if the
> > state provided a remedy in its courts.
>
> But how, exactly, would that be done? Presently, the Federal Courts
> have exclusive jurisdiction over Patent claims under the Act, and the
> Federal Circuit has exclusive appellate jurisdiction. Admittedly,
> this is merely a prejudice arising from some degree of comfort with
> the status quo, but the entire thing seems unworkable. State court
> judges would seem ill-equipped to handle the unfamiliar and complex
> patent claims, and worse, the prospect of assorted State appellate
> court patent cases brings back the spectre of a Pre-Federal Circuit
> forum-shopping nightmare.
>
> Would there be an exception just for claims including state
> defendants? What happens when Plaintiff sues Defendant for
> infringement and the Defendant attempts to implead a State?
> Could a Plaintiff bring suit against non-state defendants in a
> jurisdiction with favorable state appellate court opinions just by
> joining the state?
>
> *shudder* One of the few virtues of practicing patent litigation is
> the compactness (certainly not the consistency) of the body of law
> addressing the subject matter -- its all Federal Circuit. Would all
> that go bye-bye?
>

As a practical matter, I think one vehicle that could be used is a section 1983 action (deprivation of rights under color of state law).

I share Andrew's concerns, though it is worth noting that state courts do end up resolving patent issues on occasion, when they are presented in contract suits over licenses. Still, it's not a practice that should be encouraged.

At the same time, the Federal Circuit's option (IP rights are "property," and any interference with them is a due process deprivation) troubles me as well, in part because it seems to lock in a "ratchet" effect for IP rights as a matter of constitutional law.

The real solution, I think, is to get rid of the abominable Seminole Tribe decision, which started this whole mess. But I doubt this Court will choose that course.

Mark Lemley
<mlemley[_at_]mail.law.utexas.edu> Received on Mon Apr 26 1999 - 15:36:30 GMT