Amicus Curiae Brief — Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank

Supreme Court, U.&

FILED

MAR <3 1999

No. 98-531

eer THE CLERK

In the ee

Supreme Court of the United States

October Term, 1998

-.

-

FLORIDA PREPAID POSTSECONDARY

EDUCATION EXPENSE BOARD,

Petitioner,

Vv.

COLLEGE SAVINGS BANK and

UNITED STATES OF AMERICA,

Respondents.

>

On Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

—o——

BRIEF AMICUS CURIAE OF PACIFIC LEGAL

FOUNDATION IN SUPPORT OF RESPONDENTS

—>

ERIC GRANT

Counsel of Record

JAMES S. BURLING

Pacific Legal Foundation

10360 Old Placerville Road,

Suite 100

Sacramento, California 95827

Telephone: (916) 362-2833

Facsimile: (916) 32-2932

Counsel for Amicus Curiae

Pacific Legal Foundation

i

QUESTION PRESENTED

Whether Congress has power under § 5 of the Fourteenth

Amendment to abrogate the states’ Eleventh Amendment im-

munity and make them amenable to suit in federal court for

claims of patent infringement pursuant to § 2 of the Patent and

Plant Variety Protection Remedy Clarification Act, 35 U.S.C.

§§ 271(h), 296(a).

ii

TABLE OF CONTENTS

Page

PUREE PUREED. vc Scheu cdaods cedccsroveesesane i

SO Oe CURT 6.0 5 b.0.6:0) caamndeeredcesne deme iv

INTEREST OF AMICUS CURIAE ..........cceccccceces l

SUMMARY OF ARGUMENT ...........ccccsccesecccces 2

PR ey eee rere YO eT oe yay 3

1. THE PATENT REMEDY ACT IS APPROPRIATE

LEGISLATION TO ENFORCE THE MANDATES

OF THE JUST COMPENSATION CLAUSE AS IN-

CORPORATED INTO § | OF THE FOURTEENTH

PTT eee eee eee 3

A. A State’s Infringement of a Patent Works a

Compensable Taking of Private Property for

PUP SAE ci vkind ned b chadlae seeeeses peu sds 5

B. Such a Taking Immediately Imposes on the

State a Constitutional Obligation to Pay Just

Compensation to the Patent Owner ............... 8

C. Requiring a State to Satisfy That Constitu-

tional Obligation in Federal Court Is a Direct

Enforcement of the Just Compensation Clause ... . . 11

D. © CRD oan nse is dds oes cueaavecee 12

re PP oer re ee 13

3... BRUTE 6b op ch cibvedes nti 14

ee eee 16

ll. TO THE EXTENT IT IS IN CONFLICT WITH THE

FOREGOING ANALYSIS, THE DECISION IN

WILLIAMSON COUNTY SHOULD BE LIMITED ..... 18

CONLAARIN « vccncecedeecrepeanseeb éanen skbaneen 29

ili

TABLE OF AUTHORITIES

Page

Cases

Agins v. City of Tiburon, 447 U.S. 255 (1980) .......... 19

Alliance of Descendants of Texas Land Grants v.

United States, 37 F.3d 1478 (Fed. Cir. 1994) ........ 10

Armstrong v. United States, 364 U.S. 40 (1960) ......... 8%

Badalamenti v. Dunham's, Inc., 896 F.2d 1359

(Fed. Cir.), cert. denied, 498 U.S. 851 (1990) ........ 16

Bloomer v. McQuewan,

Pn EP EUEEED 666cc seb bcdccccdosios 8

Chicago, B. & Q.R. Co. v. City of Chicago,

i Cha chee kdec.dbb swe s vce cete's 4

City of Boerne v. Flores,

eg ere 11, 13, 16, 28

Consolidated Fruit-Jar Co. v. Wright,

ED AOR ae C UR SUN e's b's osc ae evcuces 3-4

Creppel v. United States, 41 F.3d 627

EE Ee ee 10

Crozier v. Fried. Krupp Aktiengesellschaft,

A LN PET OTe T Teer 5-6

Danforth v. United States,

ESS ER 9, 18, 20, 24

Decca Lid. v. United States,

640 F.2d 1156 (Ct. Cl. 1980),

cert. denied, 454 U.S. 819 (1981) ................ 6-7

Dodd v. Hood River County,

136 F.3d 1219 (9th Cir.),

cert. denied, 119 S. Ct. 278 (1998). .... 2... 6665. 26-27

iv

TABLE OF AUTHORITIES—Continued

Page

Dodd v. Hood River County, 59 F.3d 852

CEG, GEE ic ddan on bh dese enkssadedconbates 26

Dolan v. City of Tigard, 512 U.S. 374 (1994) ........ 4,27

Ex parte Virginia, 100 U.S. 339 (1879) ............45. 16

Fairmont Creamery Co. v. Minnesota,

273 US. FOG 6 vd ne eetdet ok oaks dd evasems 14

Fields v. Sarasota Manatee Airport Authority,

953 F.2d 1299 (1 lth Cie. 1992)... 2. ce eeeccccoces 26

First English Evangelical Lutheran Church v.

County of Los Angeles, 482 U.S. 304 (1987) .... passim

Fitzpatrick v. Bitzer, 427 U.S. 445 (1976) .......-.6645: 3

Front Royal & Warren County Industrial Park

Corp. v. Town of Front Royal, 135 F.3d 275

COR Cie, SERED wo RS bab he Beendiniesisvunscvucss 26

George Moore Ice Cream Co. v. Rose,

25D UR Bee Gree ch. ceek aes ck ees bac dhe ccedas 5

Hodel v. Virginia Surface Mining & Reclamation

Association, Inc., 452 U.S. 264 (1981) ..........4.4. 19

Hudson v. Palmer, 468 U.S. 517 (1984)... 2... .60645. 25

Hughes Aircraft Co. v. United States,

86 F.3d 1566 (Fed. Cir. 1996),

vacated, 117 S. Ct. 1466 (1997). . 2.2... ce cece 6

Hutto v. Finney, 437 U.S. 678 (1978)... 2... 6.00 ee 14-15

Inupiat Community of Arctic Slope v.

United States, 680 F.2d 122 (Ct. Cl.),

cert. denied, 459 U.S. 969 (1982) . 22... 6.6 c ccc eees 10

Vv

TABLE OF AUTHORITIES—C ontinued

Page

Irving Air Chute Co. v. United States,

Bes Gr eh BOS ccc ct eaccdcedvesies 7

Jacobs v. United States, 290 U.S. 13 (1933) ............ 8

Jacobs Wind Electric Co., Inc. v. Department of

Transportation, 626 So. 2d 1333 (Fla. 1993) ..... 23-24

Kaiser Aetna v. United States,

ee ae SEE’ oGas oad dN bowl ac dsvevasess 7

Kavanau v. Santa Monica Rent Control Board,

941 P.2d 851 (Cal. 1997), cert. denied,

EE son 6 nha edegtapeesdes 04 24

Kentucky v. Graham, 473 U.S. 159 (1985) ............ 15

Leesona Corp. v. United States, 599 F.2d 958

(Ct. Cl.), cert. denied, 444 U.S. 991 (1979) ........... 6

Library of Congress v. Shaw, 478 U.S. 310 (1986) ...... 14

Loretto v. Teleprompter Manhattan CATV Corp.,

EE nbnnbadadabiuwiee 6 b0cbedcic 25

Lucas v. South Carolina Coastal Council,

sc aU SEL eee Ce. ck ebb ace 24

MacDonald, Sommer & Frates v. Yolo County,

Se OEE Bawa Ws CdS neh ctbecbesscvcece 19

Mayhew v. Town of Sunnyvale,

Fe CUE DUR ob ick evs ccbiccccdses 24

McCarthy v. Madigan, 503 U.S. 140 (1992) ........ 28-29

Missouri v. lowa, 48 U.S. (7 How.) 660 (1849) ......... 14

Missouri v. Jenkins, 491 U.S. 274 (1989) ............. 15

vi

TABLE OF AUTHORITIES—C ontinued

Page

Motorola, Inc. v. United States, 729 F.2d 765

oe 3, ee err sr Tee ee ee 6

New Orleans Public Service, Inc. v. Council of

City of New Orleans, 491 U.S. 350 (1989) .......... 28

Nollan v. California Coastal Commission,

GF Tae EE ere Cr ee ckucntetecesntciens l

Patsy v. Board of Regents, 457 U.S. 496 (1982) ..... 27-29

Payne v. Tennessee, 501 U.S. 808 (1991) ............. 20

Peduto v. City of North Wildwood,

SER BG Fa ee BIEN. 24s Ged'c ceteue ccccecas 26

Penn Central Transportation Co. v. City of

New York, 438 U.S. 104 (1978) ..............0005- 19

Pennsylvania v. Union Gas Co.,

GG GES, Be i bh wb BAe hci cen etass eecees 20

Pitcairn v. United States,

547 F.2d 1106 (Ct. Cl. 1976),

cert. denied, 434 U.S. 1051 (1978) ................. 6

Ruckelshaus v. Monsanto Co.,

ey Ge Es kn lvoe on dunane bikin c ks Hous 21-22

San Diego Gas & Electric Co. v. City of

San Diego, 450 U.S. 621 (1981) ............ 10-11, 20

Seaboard Air Line Ry. Co. v. United States,

ry ) & rerrre rs e 10

Seminole Tribe of Florida v. Florida,

SUP MRE UTED Cah Whbobt in bocedecasstas passim

Sheldon v. Sill, 49 U.S. (8 How.) 441 (1850) ........... 28

Soriano y. United States, 352 U.S. 270 (1957) .... 9,20,24

Vii

TABLE OF AUTHORITIES—Continued

Page

Stafford Ordinance Corp. v. United States,

Tk fe Re Se 10

Steel Improvement & Forge Co. v. United States,

ET I on Claw Sabo tac icctcace 10

Steffel v. Thompson, 415 U.S. 452 (1974) ............. 27

Suitum v. Tahoe Regional Planning Agency,

I. oe et Can Che ce cdcuceduhe 1,19

Testa v. Katt, 330 U.S. 86 (1947) .............200005- 28

United States v. Causby, 328 U.S. 256 (1946) .......... 21

United States v. Clarke, 445 U.S. 253 (1980) ...... passim

United States v. Dickinson, 331 U.S. 745 (1947) ... 9, 20,24

United States v. Dow, 357 U.S. 17 (1958) ........ 9, 20, 24

United States v. Miller, 317 U.S. 369 (1943) ........... 13

United States v. Rogers, 255 U.S. 163 (1921) ........ 9-10

United States v. Thayer-West Point Hotel Co.,

I A, Cribd's's hksicddod ps ode 13-14

Wilkinson v. Pitkin County

Board of County Commissioners,

ee PO, BU ng pec ccccvccscccecs 26

William Cramp & Sons Ship & Engine

Building Co. v. International Curtis

Marine Turbine Co., 246 U.S. 28 (1918) .......... 4-5

Williamson County Regional Planning

Commission v. Hamilton Bank,

Se SUED Cee uw cdc eb evvcivapecuee passim

Vill

TABLE OF AUTHORITIES—Continued

Yearsley v. W.A. Ross Construction Co.,

SOP UB. DOGG PGED owiehe cues thie eleee sc Nh eieee 6

Constitution, Statutes, and Rules

US. Coe. Gn © vk cadacceceudécteuteunshen passim

FEF pr es eh avevereveceetic i, 1-3, 14-15, 17

GUNUGE, Bits GE Ge D...0 ctksdcsccbadereeeecnes passim

BB Ue EEE 600.008 <v00,00eeennaanis teehuaee 10

OB SSGRGED. owen cdesteecshs adnes heen tonereaen 21

Bo OR re ere ee 21-22

ROGGE vo.dcvre ise venwas vuedesaskeaenseneeeel 5

FS UA BSTE o cinwuba¥ie ces vehscaade eben aie i, 8

DEEP osc cccehens dceneéopeeelneneté sheen 16

DADO <<pnccemncnssécnsshede eakkeeee ue 12-15

CSOD covvug¥euatddawel<evanensed$ss eee 14-16

DERG cccckspodsvcdbacasacepabesovecewens i, 17

DED bin és comiavioteseoeeeeeiweeebe 6 6s 12, 15-16

G3 VEE © SGD av scncctaweds eneeeisetneeus 27,29

ag Re rere, rr l

i) SPeeererrrrs pier yi er iis YP ee ek es l

l

INTEREST OF AMICUS CURIAE

For 25 years, amicus Pacific Legal Foundation (PLF) has

been litigating in support of the right of individuals to receive

just compensation when government takes their private prop-

erty for put:'ic use. PLF attorneys have been before this Court

on two occasions representing individuals seeking to vindicate

their rights under the Just Compensation Clause of the United

States Constitution. See Nollan v. California Coastal Commis-

sion, 483 U.S. 825 (1987); Suitum v. Tahoe Regional Planning

Agency, 520 U.S. 725 (1997). Also, PLF has participated as an

amicus curiae in virtually every significant takings case heard

by this Court in the past two decades. Finally, PLF attorneys

are counsel of record in three pending petitions for writ of cer-

tiorari seeking this Court’s review of takings questions. '

In the present case, the court of appeals upheld the Patent

Remedy Act against petitioner’s Eleventh Amendment chal-

lenge based on Congress’s power to enforce the Fourteenth

Amendment’s guarantee of procedural due process. Appendix

to Petition for Certiorari (Pet. App.) at 13a. Procedural due

process was the focus of the briefing below, and the briefs of

petitioner and its amici have continued this focus. PLF, on the

other hand, will urge the Court to uphold the Patent Remedy

Act on a different ground, namely, that the Act is appropriate

legislation to enforce the mandates of the Just Compensation

Clause, as that Clause has been incorporated into § | of the

Fourteenth Amendment. In so urging, PLF expects that the in-

stant brief will bring to the Court’s attention relevant matter not

already brought to its attention by the parties.

' Pursuant to Rule 37.3(a), all parties have consented to the filing of

this amicus curiae brief. Letters evidencing such consent have been

filed with the Clerk of the Court.

Pursuant to Rule 37.6, amicus curiae affirms that no counsel for

any party authored this brief in whole or in part and that no person or

entity made a monetary contribution to the preparation or submission

of this brief.

2

SUMMARY OF ARGUMENT

After Seminole Tribe of Florida v. Florida, 517 U.S. 44

(1996), authority for Congress to abrogate the states’ Eleventh

Amendment immunity from suit in federal court must be found

in § 5 of the Fourteenth Amendment or similar “enforcement”

provisions. In considering the constitutionality of the Patent

Remedy Act, therefore, the pertinent question is whether the

Act is “appropriate legislation” within the meaning of § 5, that

is, legislation to “enforce” the provisions of § 1 of the Amend-

ment. The Patent Remedy Act is precisely this kind of legisla-

tion because it enforces the mandates of the Just Compensation

Clause of the Fifth Amendment, which is incorporated into § 1.

This is so because, as this Court has long recognized, a

patent is property within the meaning of that Clause, and the

infnngement of a patent by a state works a compensable taking

of private property at the instant of infringement. By virtue of

the self-executing character of the Just Compensation Clause,

such a taking imposes on the state the constitutional obligation

to pay just compensation to the patent owner. That obligation

to pay arises at the same time as the taking-by-infringement

occurs, Creating a mature constitutional claim for just compen-

sation on the part of the owner. In requiring an infringing state

to satisfy its constitutional obligation in a federal-court action,

the Patent Remedy Act does no more than directly enforce the

mandates of the Just Compensation Clause.

While there is language in Williamson County Regional

Planning Commission v. Hamilton Bank, 473 U.S. 172, 194-97

(1985), suggesting that a federal claim for just compensation

is “premature” until the property owner first pursues any com-

pensation remedies that are available in state court, that aspect

of Williamson County should be discarded. Like the decision

overruled in Seminole Tribe, that aspect of Williamson County

deviated sharply from this Court’s established jurisprudence

and does not deserve continued adherence.

ARGUMENT

I

THE PATENT REMEDY ACT IS APPROPRIATE

LEGISLATION TO ENFORCE THE MANDATES

OF THE JUST COMPENSATION CLAUSE AS

INCORPORATED INTO § 1 OF THE

FOURTEENTH AMENDMENT

This case presents the question whether Congress ex-

ceeded its authority in enacting the Patent Remedy Act and

thereby abrogating the immunity of states from federal-court

suits for patent infringement. Seminole Tribe instructs that this

inquiry “is narrowly focused on one question: Was the Act in

question passed pursuant to a constitutional provision granting

Congress the power to abrogate?” 517 U.S. at 59. In this re-

gard, Seminole Tribe reaffirmed the holding of Fitzpatrick v.

Bitzer, 427 U.S. 445, 452-56 (1976), that “through the Four-

teenth Amendment, federal power extended to intrude upon the

province of the Eleventh Amendment and therefore that § 5 of

the Fourteenth Amendment allowed Congress to abrogate the

immunity from suit guaranteed by that Amendment.” 517 U.S.

at 59. In the present case, therefore, Florida Prepaid has rightly

identified the issue as “whether Congress exceeded its authority

under § 5 when [it] attempt[ed] to abrogate the states’ Eleventh

Amendment immunity in patent [infringement] cases.” Brief

for Petitioner at 17. In broad terms, the answer to this question

is, as set forth below, an easy one.

In the striking phrase of the court of appeals, it is “beyond

cavil” that a valid patent is “property” within the meaning of

the Constitution. Pet. App. at 12a. Consequently, petitioner

and its amici acknowledge (if grudgingly) that states may not

“deprive any person of [a patent], without due process of law.”

U.S. Const. amend. XIV, § 1. But the dictates of procedural

due process hardly exhaust the explicit protections for property

enshrined in the Constitution. A patent for an invention—“as

much . . . as a patent for land,” Consolidated Fruit-Jar Co. v.

4

Wright, 94 U.S. 92, 96 (1876)—is also protected by the Just

Compensation Clause of the Fifth Amendment, in that it may

not “be taken for public use without just compensation.” U.S.

Const. amend V. More than eight decades ago, this Court ob-

served that “rights secured under the grant of letters patent by

the United States were property and protected by the guarantees

of the Constitution and not subject therefore to be appropriated

even for public use without adequate compensation.” William

Cramp & Sons Ship & Engine Building Co. v. International

Curtis Marine Turbine Co., 246 U.S. 28, 39-40 (1918) (empha-

sis added). Indeed, that principle was, as far back as 1910, “so

indisputably established as to need no review of the authorities

sustaining [it].” /d. at 39.

It is further indisputably established, since as far back as

this Court’s decision in Chicago, B. & Q.R. Co. v. City of Chi-

cago, 166 U.S. 226, 239-40 (1897), that the Just Compensation

Clause was “made applicable to the States through [§ | of] the

Fourteenth Amendment.” Dolan v. City of Tigard, 512 U.S.

374, 383 (1994); see also id. at 384 n.5 (rejecting the dissent’s

argument to the contrary). Accordingly, through this incor-

poration of the Fifth Amendment into the Fourteenth, the Just

Compensation Clause is now “expressly directed at the States.”

Seminole Tribe, 517 U.S. at 59. Section 5 of the Fourteenth

Amendment therefore grants Congress the undoubted power “to

enforce, by appropriate legislation, the provisions of” the Just

Compensation Clause against the states. As Seminole Tribe re-

affirms, this power necessarily includes the power “to abrogate

the immunity from suit guaranteed by [the Eleventh] Amend-

ment,” 517 U.S. at 59, if that immunity is inconsistent with the

mandates of the Just Compensation Clause.

As demonstrated below, state immunity from federal-court

suits for patent infringement is inconsistent with the mandates

of the Just Compensation Clause, and the Patent Remedy Act

is therefore “appropriate legislation” to “enforce” those man-

dates against the states.

5

A. A State’s Infringement of a Patent Works

a Compensable Taking of Private Property

for Public Use

As noted above, this Court in William Cramp found it

“indisputably established” that patents are “property and pro-

tected by the guarantees of the Constitution and not subject

therefore to be appropriated [i.e., taken] even for public use

without adequate compensation.” 246 U.S. at 40. Other deci-

sions confirm that the “appropriation” of a patent on the part of

the government or its agents—by means of infringing on the

patent owner’s exclusive right to use and manufacture the pat-

ented invention—constitutes a compensable taking within the

meaning of the Fifth Amendment. In Crozier v. Fried. Krupp

Aktiengesellschaft, 224 U.S. 290 (1912), this Court construed

the predecessor of 28 U.S.C. § 1498(a), which now authorizes

patent owners to sue the federal government when it infringes

a patent, that is, whenever the owner’s patented invention “is

used or manufactured by or for the United States without li-

cense of the owner thereof or lawful right to use or manufacture

the same.” Recognizing “the undoubted authority of the United

States as to [certain patentable] subjects to exert the power of

eminent domain,” Crozier held that the statute essentially pro-

vided for “the appropriation [i.e., taking] of a license to use the

inventions.” 224 U.S. at 305. The taking was, however, “sanc-

tioned by the means of compensation for which the statute pro-

vides.” /d. Thus, the Court equated the infringement of a patent

with the exercise of the power of eminent domain (a taking)

and equated the compensation provided for such infringement

as the compensation required by the Fifth Amendment.

Both this Court and the lower federal courts have consis-

tently adhered to this interpretation of Crozier. For example,

in George Moore Ice Cream Co. v. Rose, 289 U.S. 373, 382

(1933), the Court relied on Crozier for the proposition that “a

pledge of the public faith and credit will permit the seizure of

property by right of eminent domain, though what is due for

compensation must be ascertained thereafter.” Moreover, in

6

Yearsley v. W.A. Ross Construction Co., 309 U.S. 18, 22-23

(1940), the Court cited the statute construed in Crozier as an

example of the principle that if government action “does con-

stitute a taking of property for which there must be just com-

pensation under the Fifth Amendment, the Government has

impliedly promised to pay that compensation and has afforded

a remedy for its recovery by a suit in the Court of Claims.” In

more recent cases, the Court of Claims (and its successor, the

Court of Appeals for the Federal Circuit) have recognized the

equivalence of patent infringements and compensable takings

in crystal clear terms: “When the government has infringed [a

patent], it is deemed to have ‘taken’ the patent license under an

eminent domain theory, and compensation is the just compen-

sation required by the fifth amendment.” Leesona Corp. v.

United States, 599 F.2d 958, 964 (Ct. Cl.), cert. denied, 444

U.S. 991 (1979).

? Accord, e.g., Pitcairn v. United States, 547 F.2d 1106, 1114 (Ct. CL.

1976) (“The use or manufacture by or for the Government of a device

or machine embodying any invention protected by a United States

patent, is a taking of property by the Government under its power of

eminent domain.”), cert. denied, 434 U.S. 1051 (1978); Decca Lid

v. United States, 640 F.2d 1156, 1166 (Ct. Cl. 1980) (observing that

the “manufacture or use by or for the Government of a patented in-

vention” constitutes “an eminent domain taking of a license in [the]

patent”), cert. denied, 454 U.S. 819 (1981); id. at 1167 n.17 (noting

that the statutory remedy for the government’s infringement “is equi-

valent to the just compensation which the fifth amendment mandates

for every governmental taking”); Motorola, Inc. v. United States, 729

F.2d 765, 768 (Fed. Cir. 1984) (observing that a patent owner who

pursues the statutory remedy for the government’s infringement “is

seeking to recover just compensation for the Government’s unauthor-

ized taking and use of his invention”); Hughes Aircraft Co. v. United

States, 86 F.3d 1566, 1571 (Fed. Cir. 1996) (“The government’s un-

licensed use of a patented invention is properly viewed as a taking of

property under the Fifth Amendment through the government’s ex-

ercise of its power of eminent domain . . . .”), vacated and remanded

on other grounds, 117 S. Ct. 1466 (1997).

7

When does this taking-by-infringement occur? The Court

of Claims addressed this very issue in a case in which the gov-

ernment had infringed a patent for a radio navigation system:

The Government takes a license to use or to

manufacture a patented invention as of the instant

the invention is first used or manufactured by the

Government. The license taken at that instant covers

only what the Government is using or has manu-

factured as of that instant. If, after this first taking,

the Government expands the scope of its use of the

invention or manufactures additional units of the in-

vention, the Government engages thereby in incre-

mental takings. Each incremental taking vests the

patentee with a new cause of action.

Decca Ltd. v. United States, 640 F.2d 1156, 1166 (Ct. Cl.

1980), cert. denied, 454 U.S. 819 (1981). This principle—that

a compensable taking occurs at “the instant” the government

infringes the patent by using or manufacturing the patented in-

vention—is a longstanding one in patent law. See, e.g., /rving

Air Chute Co. v. United States, 93 F. Supp. 633, 636 (Ct. Cl.

1950) (citing cases).

Although this Court has never addressed the precise issue,

the principle enunciated by the Court of Claims in Decca and

Irving Air Chute is entirely consistent with the Court’s holding

that, with respect to de facto takings by physical invasion, “the

usual rule is that the time of the invasion constitutes the act of

taking.” United States v. Clarke, 445 U.S. 253, 258 (1980).

The consistency derives from the essential equivalence between

a taking-by-invasion of real property and a taking-by-infringe-

ment of patent property: each results in the immediate loss to

the owner of “one of the most essential sticks in the bundle of

rights that are commonly characterized as property—the right

to exclude others.” Kaiser Aetna v. United States, 444 U.S.

164, 176 (1979). With respect to a physical invasion of real

property, the loss of the right to exclude is self-evident. With

8

respect to an infringement of a patent, the loss derives from the

fact that, “at bottom, a patent is but the right to exclude others

from making using or selling an invention.” Pet. App. at |2a

(citing 35 U.S.C. § 271 and Bloomer v. McQuewan, 55 U.S. (14

How.) 539, 549 (1852)).

B. Such a Taking Immediately Imposes on the

State a Co stitutional Obligation to Pay Just

Compensation to the Patent Owner

If the infringement of a patent by the United States (and,

by obvious analogy, a state) constitutes a compensable taking

of private property at the instant of infringement, then certain

consequences inevitably follow. As this Court reaffirmed in

one of the seminal takings decisions of the past two decades,

“government action that works a taking of property rights ne-

cessarily implicates the ‘constitutional obligation to pay just

compensation.’” First English Evangelical Lutheran Church

v. County of Los Angeles, 482 U.S. 304, 315 (1987) (quoting

Armstrong v. United States, 364 U.S. 40, 49 (1960)). Accord-

ingly, infringement of a patent by a state necessarily imposes

on that state a constitutional obligation to pay just compensa-

tion to the patent owner. Furthermore, as the Court stressed in

First English, a state’s obligation to pay is “self-executing,”

such that “‘the duty to pay [is] imposed by the [Fifth] Amend-

ment’” itself. /d. (quoting Jacobs v. United States, 290 U.S.

13, 16 (1933)); accord id. at 316 (“{T]}he Court has frequently

repeated the view that, in the event of a taking, the compensa-

tion remedy is required by the Constitution” (emphasis added)).

Indeed, First English went so far as to reject explicitly the gov-

ernment’s argument—supposedly derived from “principles of

sovereign immunity”—that “the Constitution does not, of its

own force, furnish a basis for a court to award money damages

against the government.” /d. at 316 n.9.

When does a state’s constitutional obligation to pay just

compensation arise or accrue? The obvious, intuitive answer

is that the taking and the obligation to pay just compensation

9

are concomitant, that is, they come into being simultaneously.

This answer is, of course, the consistent holding of this Court

and the lower federal courts for decades. In United States v.

Dow, 357 U.S. 17 (1958), for example, the Court explained:

The usual rule is that if the United States has entered

into possession of the property prior to the acquisi-

tion of title, it is the former event which constitutes

the act of taking. /t is that event which gives rise to

the claim for compensation... .

Id. at 22 (emphasis added); accord United States v. Clarke, 445

U.S. at 258 (“When a taking occurs by physical invasion, . . .

the usual rule is that the time of the invasion constitutes the act

of taking, and ‘[i}t is that event which gives rise to the claim for

compensation ... .’” (quoting Dow)).

Other decisions of this Court restate essentially the same

rule using slightly different phraseology. In Danforth v. United

States, 308 U.S. 271, 284 (1939), the Court affirmed simply

that “compensation is due at the time of taking.” In United

States v. Dickinson, 331 U.S. 745 (1947), the Court rejected the

government's argument that Dickinson’s reclamation of a por-

tion of property previously taken by flooding disentitled him

to be paid for the original taking: “no use to which Dickinson

could subsequently put the property by his reclamation efforts

changed the fact that the land was taken when it was taken and

an obligation to pay for it then arose.” Id. at 751 (emphasis

added). In Soriano v. United States, 352 U.S. 270, 275 (1957),

the Court affirmed as time-barred the dismissal of petitioner’s

claim against the government “for just compensation for sup-

plies, etc., taken from him . . . during the Japanese occupation

of the Philippines.” As it rejected petitioner’s argument that the

hostilities tolled the applicable statute of limitations, the Court

agreed that petitioner’s claim for compensation “accrued at the

time of the taking.” /d.; see also United States v. Rogers, 255

U.S. 163, 169 (1921) (“Having taken the lands of the defen-

dants in error, it was the duty of the government to make just

10

compensation as of the time when the owners were deprived of

their property.”); Seaboard Air Line Ry. Co. v. United States,

261 U.S. 299, 306 (1923) (same).’

The Court’s more recent “temporary takings” jurisprud-

ence confirms the time-of-taking rule. Judicial recognition of

temporary takings is often thought to have originated in Justice

Brennan’s dissent in San Diego Gas & Electric Co. v. City of

San Diego, 450 U.S. 621 (1981). In that case, the Court did not

reach the question presented, namely, whether “a State must

provide a monetary remedy to a landowner whose property

allegedly has been ‘taken’ by a regulatory ordinance”; a major-

ity of Justices concluded that the Court “lack[ed] jurisdiction”

because the judgment below was not “final” under 28 U.S.C.

§ 1257. Jd at 623. Justice Brennan did reach that question,

however. Writing for four Justices—and garnering the sub-

stantial agreement of a fifth, see id at 633-34 (Rehnquist, J.,

concurring}—Justice Brennan would have held that, where a

court finds a regulatory taking, a government entity “must pay

just compensation for the period commencing on the date the

regulation first effected the ‘taking,’ and ending on the date the

government entity chooses to rescind or otherwise amend the

* The law in the old Court of Claims and the Federal Circuit is the

same. See Creppel v. United States, 41 F.3d 627, 633 (Fed. Cir.

1994) (“a claim under the Fifth Amendment accrues when the taking

action occurs”); Alliance of Descendants of Texas Land Grants v.

United States, 37 F.3d 1478, 1481 (Fed. Cir. 1994) (same); /nupiat

Community of Arctic Slope v. United States, 680 F.2d 122, 127 (Ct.

Cl.) (“The claims . . . are all for takings, and the alleged act of taking

was the Settlement Act. The claims therefore accrued on . . . the date

on which the Settlement Act became effective.”), cert. denied, 459

U.S. 969 (1982); Steel Improvement & Forge Co. v. United States,

355 F.2d 627, 631 (Ct. Cl. 1966) (“It is axiomatic that a cause of

action for an unconstitutional taking accrues at the time the taking

occurs.”); Stafford Ordinance Corp. v. United States, 108 F. Supp.

378, 381 (Ct. CL. 1952) (“Ordinarily a claim accrues in requisition-

ing property at the time of the actual taking of the property.”).

11

regulation.” /d. at 658 (Brennan, J., dissenting). This conclu-

sion was grounded in part on the recognition that “[a]s soon as

private property has been taken, . . . ‘the self-executing char-

acter of the constitutional provision with respect to just com-

pensation’ is triggered.” /d. at 654 (quoting Clarke, 445 U.S.

at 257). When Justice Brennan’s dissent subsequently became

law in First English, the Court reaffirmed “the self-executing

character of the constitutional provision with respect to just

compensation,” 482 U.S. at 315, and it necessarily reaffirmed

as well that this constitutional provision is triggered “[a]s soon

as private property has been taken.”

C. Requiring a State to Satisfy That Constitutional

Obligation in Federal Court Is a Direct Enforce-

ment of the Just Compensation Clause

The foregoing principles, we submit, compel the follow-

ing conclusions: (1) the infringement of a patent by a state

works a compensable taking of private property at the instant

of infringement; (2) by virtue of the self-executing character of

the Fifth Amendment (as incorporated into the Fourteenth),

such a taking imposes on the state th. constitutional obligation

to pay just compensation to the patent owner; and (3) that ob-

ligation to pay is triggered, or arises, at the same time as the

taking-by-infringement occurs. Given these conclusions, we

turn to consider whether the Patent Remedy Act, in providing

remedies for patent infringement by the states, partakes of the

“congruence and proportionality” required by City of Boerne v.

Flores, 117 S. Ct. 2157, 2164 (1997), for the Act to qualify as

“‘enforc[ing]’ the provisions of the Fourteenth Amendment.”

As stated in City of Boerne, the Court’s recent decisions in this

regard “revolve around the question whether § 5 legislation can

be considered remedial.” /d. at 2166. We think it beyond dis-

pute that most provisions of the Patent Remedy Act are rightly

considered “remedial.” As explained below, other provisions

present a closer question.

12

1. Damages

The Patent Remedy Act provides that states are subject to

patent remedies “to the same extent as such remedies are avail-

able for [infringement] in a suit against any private entity.”

35 U.S.C. § 296(b). Such remedies include damages pursuant

to 35 U.S.C. § 284, which provides that, upon finding for the

patent owner in an infringement action, “the court shall award

the [owner] damages adequate to compensate for the infringe-

ment.” This provision is remedial virtually by definition. As

we have seen, patent owners’ “claims for just compensation are

grounded in the Constitution itself,” and states consequently

have a “consi.tutional obligation to pay just compensation” for

takings of patent property. First English, 482 U.S. at 315. The

damages provision of § 284, in obliging states to pay “damages

adequate to compensate for the infringement,” does no more

than simply “enforce” that constitutional obligation in direct

fashion. To put the point another way, if “the compensation

remedy is required by the Constitution,” First English, 482

U.S. at 316, then the damages provision of § 284, by actually

providing that remedy, is requiring of states only what is al-

ready required of them by the Fourteenth Amendment itself.

Finally, if the Constitution, “of its own force, furnish[{es] a basis

for a court to award money damages against the government”

for a taking, id n.9, then Congress cannot be said to have ex-

ceeded its powers by furnishing in § 284 a statutory basis to

make the very same award.

Section 284 also grants the court discretion “to increase

the damages up to three times the amount found or assessed.”

Without citation, the court below asserted that such damages

“have long been established by Congress as proper and neces-

sary to afford full compensation to a patentee.” Pet. App. at

25a. In particular cases, this will undoubtedly be true: single

damages alone would be a “constitutionally insufficient rem-

edy,” First English, 482 U.S. at 321, because they would fail to

measure up to the constitutional standard: Just “compensation

13

means the full and perfect equivalent in money of the property

taken. The owner is to be put in as good position pecuniarily

as he would have occupied if his property had not been taken.”

United States v. Miller, 317 U.S. 369, 373 (1943). In these

cases, the “increase” in damages would surely partake of the

“remedial” nature of the damages discussed in the previous

paragraph. On the other hand, there will certainly be cases in

which single damages alone (together with the other monetary

remedies discussed below) would indeed provide every bit of

the compensation required by the Constitution. In these latter

cases, the award of additional compensation against a state

would essentially “make a substantive change in the governing

law” of just compensation and would lie outside of Congress's

power under § 5. City of Boerne, 117 S. Ct. at 2164.

The proper response to these competing possibilities, we

submit, is to take refuge in the discretionary character of § 284,

which provides that courts “may increase” damages. The lower

federal courts, with additional guidance from Congress at its

option, should be permitted to exercise their discretion to strike

a proper balance between ensuring that the patent owner is “put

in as good position pecuniarily as he would have occupied if

his [patent] had not been taken,” Miller, 317 U.S. at 373, with-

out imposing “substantial costs” on the states in the absence of

constitutional warrant, City of Boerne, 117 S. Ct. at 2171. This

discretion should be exercised both by trial courts in individual

cases and by the Court of Appeals for the Federal Circuit to the

extent it can formulate more general rules.

2. Interest and Costs

Section 284 further provides for an award of “interest and

costs as fixed by the court.” The propriety of an award of inter-

est should be obvious to all. This Court has “consistently . . .

held that the Fifth Amendment’s reference to ‘just compensa-

tion’ entitles the property owner to receive interest from the

date of the taking to the date of payment as a part of his just

compensation.” United States v. Thayer-West Point Hotel Co.,

14

329 U.S. 585, 588 (1947); accord, e.g., Library of Congress v.

Shaw, 478 U.S. 310, 317 n.5 (1986) (“To satisfy the constitu-

tional mandate, ‘just compensation’ includes a payment for in-

terest.”). In requiring the payment of interest, § 284 is directly

enforcing the mandates of the Just Compensation Clause.

With respect to costs, the analysis must begin with this

Court’s decision in Hutto v. Finney, 437 U.S. 678, 695 (1978),

which recognized that “[c]osts have traditionally been awarded

without regard for the States’ Eleventh Amendment immunity.”

Unlike the decision overruled in Seminole Tribe, this aspect of

Hutto was no “solitary departure from established law.” 517

U.S. at 66. As Hutto pointed out, “[t]he practice of awarding

costs against the States goes back to 1849 in this Court.” 437

U.S. at 695 (referring to Missouri v. lowa, 48 U.S. (7 How.)

660 (1849)). More importantly for present purposes, “[t}he

Court has never viewed the Eleventh Amendment as barring

such awards, even in suits between States and individual liti-

gants.” /d. (discussing, as exemplary, Fairmont Creamery Co.

v. Minnesota, 275 U.S. 70 (1927)). Although several Justices

dissented in Hutto, none appeared to challenge this holding as

applied strictly to costs, as opposed to attorney fees. See id. at

704 (Powell, J., concurring in part and dissenting in part) (dis-

agreeing with the Court’s affirmance of “counsel-fee awards

against the State” (emphasis added)); id. at 714 (Rehnquist, J.,

dissenting) (criticizing the two theories advanced by the Court

“to support the separate awards of attorney's fees in this case”

(emphasis added)).

Accordingly, the award of interests and costs authorized

by § 284 is within the power of Congress.

3. Attorney Fees

In addition to awarding damages, interest, and costs for

patent infringement, the court “in exceptional cases may award

reasonable attorney fees to the prevailing party.” 35 U.S.C.

§ 285. The Patent Remedy Act expressly makes this provision

15

applicable to infringing states. See id. § 296(b). In our view,

the Court has available to it two separate rationales for sanc-

tioning the award of attorney fees against a state under § 285.

First, the Court may follow Hutto and its progeny. Thus,

in Missouri v. Jenkins, 491 U.S. 274, 284 (1989), the Court

“reaffirm[ed its] holding in Hutto v. Finney that the Eleventh

Amendment has no application to an award of attorney’s fees,

ancillary to a grant of prospective relief, against a State.” The

reference to “prospective relief” in this passage must be inter-

preted in light of “the distinction drawn in [the Court’s] earlier

cases between ‘retroactive monetary relief and ‘prospective

injunctive relief,’ the latter generally thought to be permitted by

the Eleventh Amendment. /d. at 278. Given that distinction,

we submit that Jenkins is best understood to have held that the

Eleventh Amendment does not bar the award of attorney fees

against a state where, as here, such award is ancillary to other

relief that is within the constitutional power of Congress to pro-

vide. Accord Kentucky v. Graham, 473 U.S. 159, 170 (1985)

(unanimous) (describing Hutto as having held that, “when a

State in a § 1983 action has been prevailed against for relief

on the merits, either because the State was a proper party de-

fendant or because state officials properly were sued in their

official capacity, [attorney] fees may also be available from the

State under § 1988” (emphasis added)). On this understanding

of Hutto, the Eleventh Amendment would not bar an award of

attorney fees against a state pursuant to 35 U.S.C. § 285 be-

cause such an award would be ancillary to the compensatory

relief properly awarded pursuant to § 284.

Second and alternatively, the Court may rightly find that

§ 285 is “appropriate legislation” to enforce the constitutional

obligation of states to pay just compensation for takings of pat-

ent property. In this regard, it is critical to recognize the ex-

ceedingly narrow circumstances in which attorney fees may be

awarded, as described by the Federal Circuit:

16

The purpose of section 285 “is to provide discretion

where it would be gross/ly unjust that the winner be

left to bear the burden of his own counsel which

prevailing litigants normally bear.” [The party seek-

ing fees] has the burden of proving by clear and con-

vincing evidence that this is an exceptional case. As

we have repeated “[t]here must be some finding of

unfairness, bad faith, or inequitable conduct on the

part of the unsuccessful [party].”

Badalamenti v. Dunham's, Inc., 896 F.2d 1359, 1364 (Fed.

Cir.) (citations omitted), cert. denied, 498 U.S. 851 (1990).

Congress could reasonably conclude that an award of attorney

fees against a state is “adapted to carry out the objects” of the

Just Compensation Clause, City of Boerne, 117 S. Ct. at 2163

(quoting Ex parte Virginia, 100 U.S. 339, 346 (1879), if the

absence of such an award would be “grossly unjust” to the pre-

vailing patent owner. In addition, Congress could reasonably

conclude that the award of attorney fees against a state that has

been shown—by clear and convincing evidence, no less—to

have engaged in unfairness, bad faith, or inequitable conduct

would “tend[] to enforce submission to” the mandates of the

Just Compensation Clause. /d. At very least, such an award

would tend to discourage states from unfairly and inequitably

resisting the constitutional obligation to pay just compensation.

4. Injunctive Relief

Finally, the Patent Remedy Act authorizes remedies “in

equity” against infringing states and their officers and employ-

ees. 35 U.S.C. § 296(b); see also id. § 283 (authorizing courts

to “grant injunctions in accordance with the principles of equity

to prevent the violation of any right secured by patent”). It is

unlikely that the Just Compensation Clause as incorporated in

the Fourteenth Amendment provides a basis for Congress to

abrogate the immunity of states (as states) from injunctive re-

lief against patent infringements. This perhaps counterintuitive

conclusion results from the precept that the Just Compensation

17

Clause “is designed not to limit the governmental interference

with property rights per se, but rather to secure compensation

in the event of an otherwise proper interference amounting to

a taking.” First English, 482 U.S. at 315. It would appear that

a state’s “constitutional obligation to pay just compensation,”

id., could be fully satisfied by application of the monetary rem-

edies discussed above, without having to subject the state to

additional remedies in equity.

This point will have little practical significance, however,

given the express right granted patent owners to obtain injunc-

tive relief against “any officer or employee of a State or instru-

mentality of a State acting in his official capacity.” 35 U.S.C.

§ 296(a). This right, of course, is not subject to an Eleventh

Amendment bar. As Seminole Tribe expressly affirmed, “sev-

eral avenues remain open for ensuring state compliance with

federal law. Most notably, an individual may obtain injunctive

relief under Ex parte Young in order to remedy a state officer’s

ongoing violation of federal law.” 517 U.S. at 72 n.16 (citation

omitted). Although Seminole Tribe declined to apply Ex parte

Young to asserted violations of the Indian Gaming Regulatory

Act (IGRA), that declination was based on the Court’s deter-

mination that “Congress had no wish” to impose liability on

state officers for violations of the IGRA and that for courts to

impose liability would be “to rewrite the statutory scheme.” /d.

at 76. In contrast to IGRA, the Patent Remedy Act does clearly

express the wish of Congress to subject state officers to injunc-

tive relief to restrain ongoing violations of the patent laws; no

“rewrit[ing]” of the statutory scheme is necessary.

For the foregoing reasons, the Patent Remedy Act easily

qualifies as “appropriate legislation” within the meaning of § 5

of the Fourteenth Amendment, as it is a measure to “enforce”

the mandates of the Just Compensation Clause as incorporated

into § 1 of the Amendment. Therefore, Congress acted within

its express authority when it abrogated the Eleventh Amend-

ment immunity of states in patent infringement cases.

18

TO THE EXTENT IT IS IN CONFLICT WITH THE

FOREGOING ANALYSIS, THE DECISION IN

WILLIAMSON COUNTY SHOULD BE LIMITED

Although we think the foregoing arguments should fully

dispose of the present case, we anticipate a response along the

following lines: Congress may not rely on the Just Compensa-

tion Clause to abrogate the immunity of states from federal-

court suits for patent infringement because there has been no

“violation” of that Clause until affer a patent owner has sought,

and been denied, compensation for infringement in state court.

According to this account, a federal-court action such as the

one brought by respondent College Savings Bank would not

be “ripe”—and an abrogation of state immunity would not be

“appropriate”—auntil the patent owner had first sought compen-

sation from the state in its own courts. This argument founders,

we think fatally, on the well-established principle that a claim

for just compensation for a taking of private property—and, in

particular, a taking-by-infringement of property in a patent—

accrues “at the time of [the] taking.” Danforth, 308 U.S. at

284. See generally supra Section I.B, pp. 8-11. Nevertheless,

because Williamson County Regional Planning Commission v.

Hamilton Bank, 473 U.S. 172, 194-97 (1985), has sown con-

fusion in this area, we give it due consideration below.

In its own words, the Williamson County Court “granted

certiorari to address the question whether Federal, State, and

Local governments must pay money damages to a landowner

whose property allegedly has been ‘taken’ temporarily by the

application of government regulations.” Jd. at 185. The attor-

neys general of no fewer than 19 states and territories, together

with the Solicitor General of the United States, the National

Association of Counties, the City of New York, and the City of

St. Petersburg, Florida, joined the petitioner in urging the Court

to reverse the judgment rendered in favor of the property owner

“on the ground that a temporary regulatory interference with an

19

investor’s profit expectation does not constitute a ‘taking’ . . .

or, alternatively, on the ground that even if [it does], the Just

Compensation Clause does not require money damages as re-

compense.” /d. at 175. Four professional and public-interest

organizations filed amicus curiae briefs urging affirmance of

the judgment. See id. at 174.

In the end, all of this briefing was for naught, because the

Court did not decide the case on the questions presented. In-

stead, Williamson County left the temporary takings issue “for

another day,” concluding that the property owner’s claim for

just compensation was “premature.” /d. at 186. The primary

basis for this conclusion was the Court’s application of the rule

that a regulatory takings claim “is not ripe until the government

entity charged with implementing the regulations has reached

a final decision regarding the application of the regulations to

the property at issue.” /d As the Court explained at length,

see id. at 186-94, this rule had its antecedents in Penn Central

Transportation Co. v. City of New York, 438 U.S. 104 (1978);

Agins v. City of Tiburon, 447 U.S. 255 (1980); and Hodel v.

Virginia Surface Mining & Reclamation Association, Inc., 452

U.S. 264 (1981). Indeed, even after Williamson County, the

Court has continued to visit the “final decision” requirement of

regulatory takings law. See MacDonald, Sommer & Frates v.

Yolo County, 477 U.S. 340 (1986); Suitum v. Tahoe Regional

Planning Agency, 520 U.S. 725 (1997).

After having explicated the final decision requirement, the

Court in Williamson County concluded that the petitioner plan-

ning commission’s “denial of approval does not conclusively

determine whether respondent [property owner] will be denied

all reasonable beneficial use of its property, and therefore is not

a final, reviewable decision.” 473 U.S. at 194. Logically, the

opinion could have stopped at that point, but it did not. Again

without the benefit of briefing, the opinion posited a “second

reason [why] the taking[s] claim is not yet ripe,” namely, that

the property owner “did not seek compensation through the

20

procedures the State provided for doing so.” /d. This aspect of

Williamson County is, we submit, of essentially the same char-

acter as the decision discarded in Seminole Tribe: as explained

below, it “deviated sharply” from the Court’s established Just

Compensation Clause jurisprudence, and it “essentially evis-

cerated” the Court’s decision in United States v. Dow, among

other cases. Seminole Tribe, 517 U.S. at 64 (criticizing, and

later overruling, Pennsylvania v. Union Gas Co., 491 U.S. 1

(1989)). Although the present case does not require the Court

to “overrule” in formal terms the state-procedures aspect of

Williamson County, it does present a good opportunity for the

Court to depart from the “unworkable” and “badly reasoned”

aspects of the opinion. Seminole Tribe, 517 U.S. at 63 (quoting

Payne v. Tennessee, 501 U.S. 808, 827 (1991)).

As explained in detail above, it was the consistent rule of

this Court and the lower federal courts for many decades that

the government’s taking of private property and the govern-

ment’s obligation to pay just compensation for such taking are

concomitant, coming into being at the same time. The Court

has, of course, formulated the rule in varying terms: the event

of taking “gives rise to the claim for compensation,” Dow, 357

U.S. at 22; Clarke, 445 U.S. at 258; compensation becomes due

“at the time of taking,” Danforth, 308 U.S. at 284; “an obliga-

tion to pay for” the land arose “when it was taken,” Dickinson,

331 U.S. at 751; the claim for just compensation “accrued at

the time of the taking,” Soriano, 352 U.S. at 275; the govern-

ment’s duty to pay just compensation is triggered “[a]s soon as

private property has been taken,” San Diego Gas, 450 U.S. at

654 (Brennan, J., dissenting). The Williamson County opinion

put forth two reasons for silently departing from this longstand-

ing rule, for labeling as “premature” a claim that Soriano (for

example) had called as “accrued.” Both of these reasons were

“based upon what we believe to be a misreading of precedent.”

Seminole Tribe, 517 U.S. at 65.

21

First, the opinion cited Ruckelshaus v. Monsanto Co., 467

U.S. 986, 1016-20 (1984), for the proposition that this Court

has “held that takings claims against the Federal Government

are premature until the property owner has availed itself of the

process provided by the Tucker Act.” 473 U.S. at 195. But if

“takings claims” are meant here to refer to monetary claims for

just compensation for a completed taking of private property,

then the cited passage from Monsanto did not even consider

such claims, let alone declare them “premature” until after the

property owner had sued under the Tucker Act.‘

In Monsanto, the company brought suit in federal district

court “seeking injunctive and declaratory relief from the oper-

ation of” various provisions of the Federal Insecticide, Fungi-

cide, and Rodenticide Act (FIFRA), alleging that “all of the

challenged provisions effected a ‘taking’ of property without

just compensation, in violation of the Fifth Amendment.” 467

U.S. at 998-99 (emphasis added). Having first concluded that

some of the challenged provisions might possibly operate to

take Monsanto’s property in certain circumstances, the Court

went on to consider (in the passage later cited by the opinion in

Williamson County) whether that conclusion afforded a basis

for granting Monsanto the injunctive relief it had sought. The

Monsanto Court ruled that it did not, based on the established

rule that “[e]quitable relief is not available to enjoin an alleged

taking of private property for public use . . . when a suit for

compensation can be brought against the sovereign subsequent

* The Tucker Act grants jurisdiction to the Court of Federal Claims

to adjudicate “any claim against the United States founded upon...

the Constitution.” 28 U.S.C. § 1491(a)(1); see also id. § 1346(a\(2)

(granting the district courts concurrent jurisdiction over such claims

“not exceeding $10,000 in amount”). It is this jurisdictional grant

that authorizes the Court of Federal Claims to hear and determine

monetary claims against the United States for just compensation.

See, e.g., United States v. Causby, 328 U.S. 256, 267 (1946) (“If

there is a taking, the claim is ‘founded upon the Constitution’ and

within the jurisdiction of the Court of Claims to determine.”).

22

to the taking.” /d. at 1016 (emphasis added); see also id. at

1017-19 (concluding that such a suit could indeed be brought

pursuant to the Tucker Act).

So Monsanto’s claim for equitable relief under the Fifth

Amendment was not merely premature, it was not available at

all. What about a Tucker Act suit against the government in

the Court of Federal Claims? Was it somehow a prerequisite

to asserting a monetary claim against the government for just

compensation for a taking of property? No, as the Monsanto

decision confirms, a Tucker Act suit is the assertion of a claim

for just compensation: “whatever taking may occur is one for

public use, and a Tucker Act remedy is available to provide

Monsanto with just compensation.” /d. at 1020. When is this

remedy available? Consistent with the longstanding rule that

the government’s obligation to provide compensation arises at

the time of the taking, the Monsanto Court observed that the

company could proceed to the Court of Federal Claims “[o]nce

a taking has occurred.” /d.

If the opinion in Williamson County fundamentally mis-

read Monsanto, it also created what can only be described as a

logical absurdity. As noted above, it is the Tucker Act—by

granting the Court of Federal Claims jurisdiction of “claim[s]

against the United States founded upon . . . the Constitution,”

28 U.S.C. § 1491(a)(1)}—that authorizes the Court of Federal

Claims to adjudicate claims against the United States for just

compensation. See supra note 4. So if Williamson County is

correct that a property owner must “avail[] self of the process

provided by the Tucker Act” before pursuing its claim for just

compensation, 473 U.S. at 195, then the property owner must

essentially bring a Tucker Act svit before bringing a Tucker

Act suit. Or to put it another way, a property owner’s Tucker

Act suit for just compensation is “premature” until the property

owner has brought a Tucker Act suit for just compensation. /d.

Obviously, this cannot be.

an

23

The opinion in Williamson County attempted to translate

the proposition that “takings claims against the Federal Govern-

ment are premature until the property owner has availed itself

of the process provided by the Tucker Act” into an analogous

proposition at the state level: “Similarly, if a State provides an

adequate procedure for seeking just compensation, the property

cannot claim a violation of the Just Compensation Clause until

it has used the procedure and been denied just compensation.”

Id. But if, as demonstrated above, the former proposition has

no basis in law or logic, the latter is baseless as well. Indeed,

the latter proposition creates its own, easily demonstrable log-

ical absurdities.

Consider the typical state-law “procedure for seeking just

compensation” against the state, namely, an inverse condemna-

tion action against the state in its own courts. See, e.g., Jacobs

Wind Electric Co., Inc. v. Department of Transportation, 626

So. 2d 1333, 1337 (Fla. 1993) (observing that “[t}he Florida

and federal constitutions prohibit the State’s taking of private

property without due process or just compensation” and there-

fore holding that a patent holder “may assert takings . . . claims

in state court” against a state agency). As to whether that state-

court action is intended by the state to satisfy its federal con-

stitutional obligation to pay just compensation for a taking,

there are only two possibilities: it is, or it isn’t. If it is—if the

“procedure” is simply a willingness on the part of state courts

to adjudicate federal constitutional claims—then we have a sit-

uation analogous to the Tucker Act conundrum above: a fed-

eral claim against the state (in state court) for just compensation

is “premature” until the property owner has pursued a federal

claim (in state court) against the state for just compensation.

On the other hand, if the state-court action is not intended

by the state to satisfy its obligations under the Just Compensa-

tion Clause—if the “procedure” is rather one to enforce a right

that arises under state law—then we have a situation where a

property owner with an concededly “accrued” federal claim for

24

just compensation is forced to postpone the assertion of that

claim and pursue a state-law claim instead. There may well be

good reasons, grounded in considerations of comity and fed-

eralism, for such a postponement. But contrary to the assertion

in Williamson County, these reasons have nothing to do with

the “nature of the constitutional right” to just compensation.

473 U.S. at 195 n.13. Consistent with Dow, Clarke, Danforth,

Dickinson, and Soriano, no court treats federal claims for just

compensation for completed takings of property as inherently

unripe or premature. That is, we are aware of no state judicial

system that refuses to adjudicate federal claims for just com-

pensation on the ground that they are unripe or premature until

a property owner has first pursued to completion all claims for

compensation under state law. It is not difficult to cite numer-

ous counterexamples of state judicial systems that will hear and

determine federal claims for just compensation as soon as a

taking has occurred.* This Court, moreover, has routinely exer-

cised jurisdiction to review state-court judgments concerning

such claims without ever once suggesting that the claims were

unripe or premature because the property owner had not /irst

pursued claims for compensation under state law.°

* See, e.g., Jacobs Wind, 636 So. 2d at 1337 (contemplating that a

patent holder would assert its claims under the Just Compensation

Clause along with its claims under the state analogue and under state

common law); Kavanau v. Santa Monica Rent Control Board, 941

P.2d 851, 855 (Cal. 1997) (observing that property owner brought a

claim for “‘just compensation’ in the form of lost rental income and

interest” under both “article I, section 19 of the California Consti-

tution and the Fifth Amendment of the United States Constitution”),

cert. denied, 118 S. Ct. 856 (1998); Mayhew v. Town of Sunnyvale,

964 S.W.2d 922, 930 (Tex. 1997) (finding ripe the property owner’s

“just compensation takings claims” brought at the same time “under

the United States Constitution and [the] Texas Constitution”).

* See, e.g., Lucas v. South Carolina Coastal Council, 505 U.S. 1003,

1009 (1992) (property owner did not first pursue state-law remedies

(continued...)

25

The second basis for Williamson County’s rejection of the

longstanding rule that claims for just compensation arise at the

time of the taking was a supposed analogy between takings of

; “without just ion” and deprivati

of property “without due process of law.” See 473 U.S. at 195.

Where a person suffers a deprivation of property through “a

random and unauthorized act by a state employee,” the state’s

action “is not ‘complete’ in the sense of causing a constitution-

al injury ‘unless or until the State fails to provide an adequate

postdeprivation remedy for the property loss.’” /d. (quoting

Hudson v. Palmer, 468 U.S. 517, 532 n.12 (1984)).

Even assuming the validity of the analogy between the

Just Compensation Clause and the Due Process Clause, Hudson

does not provide the correct frame of analysis. That decision

was premised on the fact of “a random and unauthorized act by

a state employee.” As even the opinion in Williamson County

recognized, Hudson has no applicability to situations “in which

the deprivation of property is effected pursuant to an estab-

lished state policy or procedure.” /d. at 195 n.14. A taking is

always effected pursuant to an established state policy or pro-

cedure; if the relevant injury to property results from a truly

random and unauthorized act by a government employee, the

property owner has suffered a tort, not a taking. In any event,

the very notion that a state’s action is somehow not “complete”

until after the property owner avails himself of state-law com-

* (...continued)

for compensation; rather, once the regulatory agency had made final

decision, owner “promptly filed suit in the South Carolina Court of

Common Pleas” seeking just compensation for regulatory taking);

First English, 482 U.S. at 308-09 (little more than a month after the

ordinance was adopted, property owner brought action simultane-

ously seeking damages in tort and just compensation for a regulatory

taking); Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S.

419, 424 (1982) (without first pursuing separate state-law remedies

for compensation, property owner sued seeking damages for trespass

and just compensation for government-sponsored physical invasion).

26

pensation procedures cannot be reconciled with the rule that a

state’s taking of property, without more, gives rise to a “right

to recover just compensation” on the part of the owner and a

corresponding “obligation to pay just compensation” on the

part of the state. First English, 482 U.S. at 315. Thus, while a

postdeprivation remedy might allow the government to avoid

liability for a denial of due process, once a taking has occurred,

liability is unavoidable: “no subsequent action by the govern-

ment can relieve it of the duty to provide compensation.” /d. at

321 (internal quotation marks omitted).

It remains to show how the state-procedures portion of

Williamson County has proved “unworkable,” having “created

confusion among the lower courts.” Seminole Tribe, 517 U.S.

at 63,64. Federal courts of appeals have been forced into con-

tortions to describe whether, and employing what procedures,

property owners might somehow “reserve” their federal claims

for just compensation for a federal forum when they are forced

by Williamson County to proceed in state court.’ Moreover,

even if property owners can manage to salvage the formal right

to bring their federal claims in federal court, they may effect-

ively lose that right through application of the rules of issue

preclusion. See, e.g., Dodd v. Hood River County, 136 F.3d

1219, 1227 (9th Cir.) (“Nor does the Dodds’ previous reserva-

tion of this federal takings claim . . . prevent operation of the

issue preclusion doctrine.”), cert. denied, 119 S. Ct. 278 (1998).

In applying issue preclusion, the Ninth Circuit has equated

the issue whether a land-use regulation “allows a landowner

some substantial beneficial use of his property” for purposes

” See, e.g., Peduto v. City of North Wildwood, 878 F.2d 725 (3d Cir.

1989); Front Royal & Warren County Industrial Park Corp. v. Town

of Front Royal, 135 F.3d 275 (4th Cir. 1998); Dodd v. Hood River

County, 59 F.3d 852 (9th Cir. 1995); Wilkinson v. Pitkin County

Board of County Commissioners, 142 F.3d 1319 (10th Cir. 1998);

Fields v. Sarasota Manatee Airport Authority, 953 F.2d 1299

(11th Cir. 1992).

27

of the compensation provision of the Oregon Constitution with

the issue whether “a land owner has been deprived of ‘econom-

ically beneficial uses’ of his property” for purposes of the Just

Compensation Clause of the United States Constitution. /d. at

1225. In so doing, the court deprived the property owner of an

opportunity ever to present its federal claims for a categorical

taking to a federal court. These kinds of deprivations can be

expected to multiply, given that nearly every state has a com-

pensation provision that is (or has been interpreted to be) very

similar to the Just Compensation Clause.

The effect of Williamson County is therefore to drive out

of federal court virtually all federal claims for just compensa-

tion for takings of private property by state and local govern-

ments. This result is anomalous on its face, and it is especially

disturbing in light of the Court’s firm refusal, with respect to

other federal claims brought pursuant to 42 U.S.C. § 1983, to

“require[] exhaustion of state judicial or administrative reme-

dies, recognizing the paramount role Congress has assigned to

the federal courts to protect constitutional rights.” Steffel v.

Thompson, 415 U.S. 452, 472-73 (1974) (emphasis added),

quoted in Patsy v. Board of Regents, 457 U.S. 496, 500 (1982).

In actual practice, the state-procedures aspect of Williamson

County has effectively caused the Just Compensation Clause,

“as much a part of the Bill of Rights as the First Amendment

or Fourth Amendment, [to] be relegated to the status of a poor

relation,” notwithstanding the Court’s protestations to the con-

trary in Dolan v. City of Tigard, 512 U.S. 374, 392 (1994).

If, as we have demonstrated, the “nature of the constitu-

tional right” to just compensation (that nature being such that

the right accrues at the time of the taking) cannot explain the

opinion in Williamson County, then how can one explain it? It

would seem that the state-procedures aspect of that decision

essentially makes a policy judgment about the proper timing

and forum for asserting claims under the Just Compensation

Clause. To paraphrase from Patsy, requiring an owner whose

28

property has been taken to pursue state-law claims for compen-

sation before asserting his claim under the Just Compensation

Clause (a kind of exhaustion), or to pursue his federal claim in

state court (a kind of abstention), or both, perhaps

would lessen the perceived burden that [just com-

pensation] actions impose on federal courts; would

further the goal of comity and improve federal-state

relations by postponing federal-court review until

after the state [courts] had passed on the issue; and

would enable the [state judiciary], which presumably

has expertise in the area at issue [i.e., property law],

to enlighten the federal court’s ultimate decision.

457 U.S. at 512 (footnote omitted).

No doubt these are powerful considerations, particularly

to a Court that is as rightfully concerned with maintaining the

proper federal-state balance as the Court was in Seminole Tribe

and City of Boerne. As Patsy makes clear, however, “policy

considerations alone cannot justify judicially imposed exhaus-

tion unless exhaustion is consistent with congressional intent.”

457 U.S. at 513 (emphasis added); accord McCarthy v. Madi-

gan, 503 U.S. 140, 144 (1992) (“Of ‘paramount importance’ to

any exhaustion inquiry is congressional intent.” (quoting Patsy,

457 U.S. at 501)). The same is true with respect to abstention.

See, e.g., New Orleans Public Service, Inc. v. Council of City

of New Orleans, 491 U.S. 350, 359 (1989) (When addressing

questions of abstention, federal courts ought to keep in mind

“the undisputed constitutional principle that Congress, and not

the Judiciary, defines the scope of federal jurisdiction within

the constitutionally permissible bounds.”). How could it be

otherwise in light of the venerable rule that Congress has vir-

tually plenary authority to parcel out jurisdiction over federal

claims among the lower courts? See, e.g., Sheldon v. Sill, 49

U.S. (8 How.) 441, 448 (1850) (“Congress, having the power

to establish the [lower federal] courts, must define their respec-

tive jurisdictions.”); Testa v. Katt, 330 U.S. 86 (1947) (holding

29

that Congress may require state courts to adjudicate federal-

law claims). And how could it be otherwise given “Congress’

power to prescribe the basic procedural scheme under which a

claim may be heard in a federal court”? McCarthy, 503 U.S.

at 144 (citing Patsy, 457 U.S. at 501-02 & n.4).

Accordingly, if the question is whether and how property

owners should be allowed to pursue their federal constitutional

claims for just compensation in federal court, surely the answer

is for Congress to give. And on that question, whatever may be

said with respect to just compensation claims asserted pursuant

to § 1983, Congress has spoken with unmistakable clarity with

respect to claims for just compensation asserted against states

pursuant to the Patent Remedy Act: those claims may be (and

must be) asserted exclusively in a federal district court. As a

decision that “depart{ed] from [the Court’s] established under-

standing” of the Just Compensation Clause and “undermine{d]

the accepted function” of the Clause, Seminole Tribe, 517 U.S.

at 66, Williamson County should not be allowed to stand in the

way of Congress’ considered determination.

CONCLUSION

The judgment of the court of appeals should be affirmed.

DATED: March, 1999.

Respectfully submitted,

Eric GRANT

Counsel of Record

JAMES S. BURLING

Pacific Legal Foundation

10360 Old Placerville Road,

Suite 100

Sacramento, California 95827

Telephone: (916) 362-2833

Facsimile: (916) 362-2932

Counsel for Amicus Curiae

Pacific Legal Foundation