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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 1999
- **Citation:** 527 U.S. 627

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0235%3A18. Public record. Not legal advice.