Petition for Writ of Certiorari — Chew v. California

> Supreme Court, U.S,

89-1603 ) FILED

| APR 3 B®

No. JOSEPH F. SPANIOL, UR.

CLERK

IN THE

Supreme Court of the United States

October Term, 1989

MARIAN F. CHEW,

Petitioner,

vs.

STATE OF CALIFORNIA,

Respondent.

PETITION FOR WRIT OF CERTIORARI

To the United States Court of Appeals

For the Federal Circuit

EDWIN W. OLDHAM

Counsel of Record

1225 West Market Street

Akron, Ohio 44313

(216) 864-5550

Attorney for Petitioner

Of Counsel

STEPHEN L. GRANT

OLDHAM & OLDHAM Co., L.P.A.

THE GATES LEGAL PUBLISHING CO., CLEVELAND, OHIO—TEL. (216) 621-6647

i.

QUESTIONS PRESENTED

This case brings to this Court the questions:

Whether Atascadero requires State immunity in a

suit brought in the Federal Courts for patent

infringement.

Whether 28 U.S.C. 1338(a), acting in conjunction

with Atascadero and Title 35, United States Code,

deprives a patentee of due process by granting exclusive

jurisdiction to a forum that is constitutionally barred

from hearing the action.

iii.

TABLE OF CONTENTS

ES ere

—

Se fa a dn at Gb aes eee we ee ee a 2

SE Te ara ae 3

Constitutional Provision and Statutes............. 4

ee ee eee eee 5

Reasons for Granting the Writ................... 7

The Court should grant a writ of certiorari

because this case presents an important question

to the vitality of United States Patents.

Petitioner respectfully submits that protecting

such vitality can be achieved in a manner that

will do no harm to the holding in Atascadero ..... 7

The Court should grant a writ of certiorari

because this case presents an important question

on the constitutionality of 28 U.S.C. 1338(a),

which grants exclusive jurisdiction to fora,

specifically the Federal District Courts, which

are constitutionally deprived of exercising that

jurisdiction by Atascadero as applied to Title

35, United States Code ..................20005. 10

aa a ea 12

Appendix:

Decision of the United States Court of Appeals

for The Federal Circuit (January 3, 1990) ...... Al

Order of the United States District Court

i ono ay Gwe eae hes eye a eee Al3

Decision of the State of California Board of

Seeeres (Amaent 19, IGGT) .... «2. cere cceesss Al7

iv.

TABLE OF AUTHORITIES

Cases

Atascadero State Hospital v. Scanlon, 473

ee NE IE. sw wa! be aos Scr eiae ohe oete 5,6,7,8,10,12

Bonito Boats, Inc. v. Thundercraft Boats, Inc.,

santanticaasaa: GOUMO sicitapis say Ee es en Es bk eo css 10,12

Hoffman v. Connecticut Department of Income

Maintenance, 109 S. Ct. 2818 (1989)............. 8

Miracle Boot Puller Co. Ltd. v. Plastray

Corp., 269 N.W.2d 496, 84 Mich. App. 118

SUE ea Wher aa oe e eet aA ees 9

Pennsylvania v. Union Gas Co., 109

ee I sc hace aa cs tore coe new aa 7,9

Sears Roebuck & Co. v. Stiffel Co, 376 US.

UN a eee tine ve cus dNeurececyscenemerrs 8,10

Constitutional Provisions and Statutes

Oe ee Ser errr errr 4,7,8,9,10

6 eg SP Peres rer rere eee 11

ee Se EEE os vk each reek a aeeenees 4,7

Shae SE Oe obo ony vane sneaneneewes 7,11

ea ee ES bw 00. noe 840-04 REN SO eA ed 3

ee ee ES oro ote s ead 6 Ue ea eeecseene eles 7

Se NY as hs 0:6 de on 404 000 404 wee Nees 7

Be es i 0-5 se wd Hp ie ew 4,7,10,11,12

Se ee I 6 avn on po oie thw eee eae men 3

ee ii bos vce nconwitadilevdxawewkwrees 4,5

es SR es ore xe eewaneou ratte eaneseaeinado 4,5

No.

IN THE

Supreme Court of the United States

October Term, 1989

MARIAN F. CHEW,

Petitioner,

vs.

STATE OF CALIFORNIA,

Respondent.

PETITION FOR WRIT OF CERTIORARI

To the United States Court of Appeals

For the Federal Circuit

MARIAN F. CHEW, acting through counsel,

petitions this Court to issue its writ of certiorari to the

United States Court of Appeals for the Federal Circuit to

review the judgment entered by that Court in Case No.

89-1390 on its docket, and, in support thereof, says:

2

OPINIONS BELOW

The opinion of the District Court (by Judge Edward

J. Garcia in the Eastern District of California at

_ Sacramento) is reported at 11 U.S.P.Q. 1159 and appears

in the Appendix hereto, at page A13; the opinion of the

United States Court of Appeals for the Federal Circuit

(by Judge Nies, concurred in by Chief Judge Markey and

Judge Friedman) is reported at 893 F.2d 331 and 13

U.S.P.Q. 2d 1393 and is reported in the Appendix hereto

at page Al,

3

JURISDICTION

The judgment sought to be reviewed is dated and

was entered January 3, 1990. No rehearing was sought

by Petitioner. This court has jurisdiction to review

pursuant to 28 U.S.C. 1254 (1) and 2101 (c).

4

CONSTITUTIONAL PROVISION AND STATUTES

The constitutional and statutory provisions relevant

to this case are:

U.S. Constitution, Article I, Section 8, Clause 8

Congress shall have power *** to promote the

progress of science and useful arts by securing for

limited times to authors and inventors the exclusive

right to their respective writings and discoveries* * *."'

U.S. Constitution, Amendment XI

‘The judicial power of the United States shall not be

construed to extend to any suit in law or equity,

commenced or prosecuted against one of the United

States by citizens of another state, or by citizens or

subjects of any foreign state.’

28 U.S.C. 1338(a)

‘The district courts shall have original jurisdiction of

any civil action arising under any Act of Congress

relating to patents, plant variety protection, copyrights

and trademarks. Such jurisdiction shall be exclusive of

the courts of the states in patent, plant variety

protection and copyright cases.”

35 U.S.C. 271(a)

‘Except as otherwise provided in this title, whoever

without authority makes, uses or sells any patented

invention, within the United States during the term of

the patent therefor, infringes the patent.”’

35 U.S.C. 281

‘‘A patentee shall have a remedy by civil action for

infringement of his patent.”

5

STATEMENT OF THE CASE

Petitioner Marian F. Chew is an individual citizen of

the State of Ohio, who has at no time relevant to this

case resided in the State of California. Through expertise

developed by years of diligent technical effort, Petitioner

Chew invented a method for testing automobile engine

exhaust emissions and was awarded U.S. Letters Patent

No. 3,472,067 (hereinafter the Chew patent) on October

13, 1969. During the entire term of the patent, that is,

until it expired on October 13, 1986, the Petitioner Chew

owned and possessed the full rights awarded to her

under the patent.

Petitioner became aware that the State of California,

and indeed other states, were requiring that certain

mechanics, authorized by the State, test automobile

engine exhaust emissions in a manner that she considers

to infringe upon her exclusive rights under the Chew

Patent.

Petitioner Chew notified the Governor of California

of her claim, which was denied. Petitioner Chew filed a

claim with the State of California Board of Control,

which claim was rejected on or about August 5, 1987

with notice given to her approximately two weeks latter.

Within six months after Petitioner Chew received such

notice, she filed the suit in the Federal Court from which

this Petition for Certiorari ultimately derives.

‘The District Court granted Respondent State of

California’s Motion to Dismiss, based upon _ the

requirement in Atascadero State Hospital v. Scanlon, 473

U.S. 234 (1985), that neither 35 U.S.C. 271 nor 35 U.S.C.,

281 contain the ‘‘unmistakable language’ of Congress’

intent to abrogate the state’s immunities under the

Eleventh Amendment.

6

The Court of Appeals for the Federal Circuit

affirmed the lower court’s holding, stating that it was

unpersuaded that this Court would depart from the rule

of Atascadero with respect to suits against the States

under the patent statute.

7

REASONS FOR GRANTING THE WRIT

The Court should grant a writ of certiorari because

this case presents an important question to the vitality

of United States Patents. Petitioner respectfully submits

that protecting such vitality can be achieved in a manner

that will do no harm to the holding in Atascadero.

This Court has stated in Atascadero that “the 11th

Amendment implicates the fundamental constitutional

balance between the Federal Government and the

States. ..’". Atascadero, 473 U.S. at 238. This Court has

also noted that the Eleventh Amendment is not absolute

and is limited by the delegation of powers to Congress in

Article I. Pennsylvania v. Union Gas Co., 109 S. Ct.

2273, 2284 (1989). It is exactly this distinction that

Petitioner Chew would like this Court to clarify by

issuing its writ.

Specifically, Atascadero was construing the scope of

an act passed under Congress's authority under

Amendment XIV, Section 5. That section grants a very

broad power to Congress, and, since it was passed after

the Eleventh Amendment, it is clearly proper that

legislation passed thereunder recognize the Eleventh

Amendment and contain the clear language that

Atascadero would require.

Petitioner respectfully submits, however, that federal

statutes passed under Congress’ Article I grant of

powers are distinguishable.

Petitioner further respectfully submits that, even

within Article I, the powers can be distinguished. For

example, the Congress has given exclusive jurisdiction for

certain federal matters to the Federal District Courts.

Specifically, these areas are: Admiralty, 28 U.S.C. 1333;

Bankruptcy, 28 U.S.C. 1334; and Patents and

8

Copyrights, 28 U.S.C. 1338. These grants of exclusive

jurisdiction are consistent with specifically targeted

powers given to Congress under Article I, Section 8 of

the Constitution. As to Admiralty, Congress is given

power ‘‘to define and punish Piracies and Felonies

committed on the high seas and Offenses against the

Law of Nations’. Article I, Section 8, Clause 10. As to

Bankruptcy, Congress is given authority ‘‘to establish a

uniform rule of naturalization, and uniform laws on the

subject of bankruptcies throughout the United States’’.

Article I, Section 8, Clause 4. Congress's power

regarding Patents and Copyrights has been cited above.

The Federal Circuit relies upon this Court's recent

holding in Hoffman v. Connecticut Department of

Income Maintenance, 109 S. Ct. 2818 (1989). In that

case, this Court held that Atascadero precludes a State

being sued in Federal Court under the bankruptcy

statutes. Recognizing Hoffman for what it states,

Petitioner respectfully points out that the real

underlying cause in Hoffman was an attempt by a

receiver to obtain payment of funds_ considered

wrongfully withheld by a State. Such an action clearly is

one that could have been brought in the State courts and

the fundamental constitutional balance between the

Federal Government and the States might indeed be

offended by any different result.

However, Petitioner Chew has had no _ such

opportunity. As will be discussed further below, no state

has a mechanism by which a patent infringement suit

may be brought. In fact, this Court has stated that

patent rights exist only by virtue of federal statute.

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

This has also been recognized in our state courts. For

example, the Michigan Court of Appeals has said:

9

“The very function of [28 USC 1338(a)] which

provides for exclusive jurisdiction of patent

infringement suits is to oust any concurrent state

jurisdiction.”’

Miracle Boot Puller Co. Ltd. v. Plastray Corp., 269

N.W.2d 496, 84 Mich. App. 118 (1978).

As to cases concerning statutes passed under

Congress’ Commerce Clause powers, such as Union Gas,

petitioner recognizes that the broad power granted

thereunder may be so extensive that it would be

offensive to the fundamental constitutional balance to

permit States to be liable to be haled into Federal Court

without Congress’ specific authorization.

However, the Patent and Copyright clause is a

narrow grant of power and is unique in that the clause

secures constitutional property rights to inventors and

authors. Thus, no constitutional problem exists with ‘‘the

fundamental balance’’ between the Federal and State

government.

10

The Court should grani a writ of certiorari because

this case presents an important question on the

constitutionality of 28 U.S.C. 1338a), which grants

exclusive jurisdiction to fora, specifically the Federal

District Courts, which are constitutionally deprived of

exercising that jurisdiction by Atascadero as applied to

Title 35, United States Code.

Patent law has always been considered to be an

exclusive area for Federal legislation. In crafting the

Patent and Copyright clause, the founding fathers gave

Congress a very precise directive. The Patent and

Copyright system established when President George

Washington signed the first Patent Act on April 10,

1790, has reliably served its function for 200 years.

This Court in Bonito’ Boats, Inc. v.

Thundercraft Boats, Inc., U.S.___. 109 S. Ct. 971

(1989), invoked the Supremacy Clause in holding that a

Florida statute prohibiting use of a direct molding

process to duplicate an unpatented vessel hull conflicts

with a strong Federal policy favoring free competition in

unpatented ideas. This Court also stated that, in

reaffirming Sears Roebuck, States may not offer patent-

like protection to intellectual creations which would

otherwise remain unprotected as a matter of Federal law.

As stated above, the States have clearly recognized

this Federal preemption of patent law. Bonito stands for

the proposition that all State statutes that are analogous

to or intrude upon Federal patent law are preempted.

Congress has also, by passing 28 U.S.C. 1338(a),

made patent law an exclusive area for Federal

jurisdiction. The Federal Circuit erred in suggesting that

Petitioner Chew could have sued the Respondent in its

11

own courts on a taking of her property. Such a cause of

action, sounding clearly in tort, is nothing more than a

preempted patent infringement action in thin disguise.

What is patent infringement if it is not the taking of

one's patented property?

If Petitioner Chew can have no state forum, due to

Federal preemption and 28 U.S.C. 1338(a), where can she

obtain the due process guaranteed to her under the Fifth

Amendment and applied against the States by the

Fourteenth Amendment?

12

CONCLUSION

if Atascadero immunizes the States from suit in

Federal courts for patent infringement, and state patent

law is preempted by Bonito and a state forum is denied

by 28 U.S.C. 1338(a), Petitioner Chew has no remedy and

will be denied her right of due process.

The Congress is currently considering legislative

action to accommodate Title 35, United States Code, to

the requirements of Atascadero. But that action is not

enough. That will only correct the problem for future

litigants. Only this Court can assist Petitioner Chew.

This petition presents questions which will resolve

conflicts and uncertainties which have arisen through

Atascadero. Certainly this Court did not intend for

Atascadero to intrude into Federal patent law. It was the

reliability of the Federal patent system that encouraged

Petitioner Chew to obtain a patent. It is the same

system's current unreliability, through improper

application of Atascadero, that has taken her property

right without recourse.

The Court should grant a writ of certiorari.

Respectfully submitted,

EDWIN W. OLDHAM

Counsel of Record

1225 West Market Street

Akron, Ohio 44313

Attorney for Petiticner

Marian F. Chew

Of Counsel:

STEPHEN L. GRANT

OLDHAM & OLDHAM Co., L.P.A.

Al

APPENDIX

DECISION OF THE UNITED STATES COURT

OF APPEALS FOR THE FEDERAL CIRCUIT

(Decided January 3, 1990)

89-1390

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

MARIAN F. CHEW,

Plaintiff-AppeUant,

Vv.

STATE OF CALIFORNIA,

Defendant-Appellee.

Before MARKEY, Chief Judge, FRIEDMAN,' Senior Circuit

Judge, and NIES, Circuit Judge.

NIES, Circuit Judge.

DECISION

Marian F. Chew appeals from the order of the United

States District Court for the Eastern District of

California, Chew v. California, No. S-88245 EJG (E.D.

Cal. Oct. 13, 1988) (Garcia, J.), dismissing her complaint

for failure to state a claim upon which relief may be

granted. Marian Chew, a resident of Ohio, brought a

patent infringement suit against the State of California

' Judge Friedman took senior status on November 1, 1989.

A2

alleging infringement of her United States Patent No.

3,472,067 (‘067 patent) directed towards a method for

testing automobile exhaust emissions. Upon motion by

the State of California asserting immunity from suit in

federal court under the Eleventh Amendment to the

United States Constitution, the district court dismissed.

We affirm.

I

BACKGROUND

Appellant Marian F. Chew, the inventor and owner

of the patent in suit, is a citizen of the State of Ohio.

Chew invented a method for testing automobile engine

exhaust emissions and was awarded the '067 patent on

October 13, 1969. Chew alleges that during the term of

the patent, which expired on October 13, 1986, appellee

State of California required testing of automobile engine

exhaust emissions by a process which she asserts

infringed the '067 patent. She states that she notified the

Governor of California of her claim and then filed a claim

(presumably for compensation) with the State of

California Board of Control, but that her claim was

rejected in August 1987. Chew had six months thereafter

to file suit on her claim, see California Gov't Code $945.6

(Deering 1982), but did not pursue that course of action

in state court. Instead she brought suit for patent

infringement damages against the state under the patent

statute, 35 U.S.C. $1 et seq. (1982 & Supp. 1987), in the

United States District Court for the Eastern District of

California under 28 U.S.C. §1338(a) (1982). The state

immediately moved to dismiss, asserting its sovereign

immunity from suit in the federal court under the

Eleventh Amendment. Before the district court, Chew

opposed the motion, on the grounds: (1) the state itself

A3

had waived its immunity by provisions in the state

constitution and statutes; (2) the state impliedly

consented to her suit by participating in the federally

funded Clean Air Act program; and (3) Congress has

abrogated the states’ immunity by provisions of the

patent statute and by giving exclusive jurisdiction to

federal courts to decide patent infringement claims. The

district court rejected all of Chew’s arguments, the first

two under the Supreme Court’s decision in Atascadero

State Hospitai v. Scanlon, 473 U.S. 234 (1985), in which

similar arguments had been put forth. Chew advances

only her last argument in this appeal.’ On that issue, the

district court held that congressional intent to abrogate

a state’s immunity under the Eleventh Amendment must

be explicit even where the federal courts are given

-exclusive jurisdiction over the asserted claim, and that

no explicit abrogation appears within the patent statute.

* An amicus brief supporting Chew's position has been filed by the

American Intellectual Property Law Association.

A4

ISSUE

May a state invoke the Eleventh Amendment of the

United States Constitution to bar a suit against the

state for patent infringement?

II

OPINION

A. Eieventh Amendment Immunity

The Eleventh Amendment provides that:

The Judicial power of the United States shall not be

construed to extend to any suit in law or equity,

commenced or prosecuted against one of the United

States by Citizens of another State, or by Citizens

or Subjects of any Foreign State.

U.S. Const. amend. XI. By its terms, state sovereign

immunity extends to protect California against every

suit in federal court by citizens of another state, such as

Chew, a resident of Ohio.

Appellant first contends that the doctrine of

sovereign immunity is grounded on the principle that

‘there can be no legal right as against the authority that

makes the law on which the right depends.”

Kawananakoa v. Polyblank, 205 U.S. 349, 353 (1906)

(emphasis added). In appellant’s view, it follows that

states have no sovereign immunity from liability under

the patent statute because the states are not the

‘authority’’ that enacted that statute. However,

appellant fails to note that Kawananakoa did not involve

Eleventh Amendment immunity. Were the principle

stated in Kawananakoa the principle being effectuated

by the Eleventh Amendment, suits against the state

would ipso facto be permitted under all federal statutes,

A5

rendering any further analysis superfluous. Clearly this

has never been a viable interpretation of immunity under

the Eleventh Amendment.’

Contrary to appellant's view, the Supreme Court has

stated that ‘the Eleventh Amendment implicates the

fundamental constitutional balance between the Federal

Government and the States....’’ Atascadero State

Hospital v. Scanlon, 473 U.S. 234, 238 (1985). See also,

Dellmuth v. Muth, 109 S. Ct. 2397, 2400 (1989). While

the immunity of the states from suit in federal courts

under the Eleventh Amendment, on its face, appears to

be absolute, this constitutional prohibition has been

interpreted to be limited by the delegation of powers to

Congress in Article I. As explained by Justice Brennan's

opinion in Pennsylvania v. Union Gas Co., 109 S. Ct.

2273, 2284 (1989):

Because the Commerce Clause withholds power from

the States at the same time as it confers it on

Congress, and because congressional power thus

conferred would be incomplete without the authority

to render States liable in damages, it must be that

to the extent that the States gave Congress

* See, e.g., Hans v. Louisiana, 134 U.S. 1 (1890) (sovereign immunity

under the Eleventh Amendment precludes suit against state in

federal court under Contracts Clause of the Constitution, Art. I, §

10); Hoffman v. Connecticut Dept. of Income Maintenance, 109 S. Cv.

2818 (1989) (sovereign immunity under Eleventh Amendment

precludes cuit against state in federal court under Bankruptcy Code,

1} USC. § 106(c)); Delimuth v. Muth, 109 S. Ct. 2397 (1989)

‘Soyercigm unmmunity under Eleventh Amendment precludes suit

ag’ cat stete in federal court under Education of the Handicapped

Act, 20 U.S.C. § 1400 et seg.); Welch v. Texas Dept. of Highways &

Pub. Transp., 107 S. Ct. 2941 (1987); (sovereign immunity under

Eleventh Amendment precludes suit against state in federal court

under the Jones Act, 46 U.S.C. § 688); Atascadero State Hosp. v.

Scanlon, 473 U.S. 234 (1985) (sovereign immunity under Eleventh

Amendment precludes suit against state in federal court under the

Rehabilitation Act of 1973, 29 U.S.C. § 794).

A6

authority to regulate commerce, they also

relinquished their [Eleventh Amendment] immunity

where Congress found it necessary, in exercising

this authority, to render them liable. The States held

linble under such a congressional enactment are thus

not ‘‘unconsenting’’; they gave their consent all at

once, in ratifying the Constitution containing the

Commerce Clause, rather than on a case-by-case

basis.

The Court went on to find in Union Gas that the text of

the statutes before it clearly evidenced congressional

intent to render the states liable.

Similarly, appellant and amicus urge in this case that

by granting Congress authority to protect inventions in

Article I, § 8, cl. 8 of the Constitution, Congress has

authority to subject the states to patent infringement

suits in federal courts and has done so under the present

patent statute. We disagree. Assuming the Congress has

the power to subject the states to patent infringement

suits, a complex question we do not resolve herein, we

conclude, as a matter of statutory interpretation, that

Congress has evidenced no intent to exercise such power

in the patent statute. Hoffman v. Connecticut Dept. of

Income Maintenance, 109 S. Ct. 2818, 2824 (1989) (‘‘need

not address [congressional] authority under bankruptcy

power’ where statute ‘did not abrogate’ Eleventh

Amendment immunity).

The question of whether Eleventh Amendment

immunity has been abrogated has been addressed in a

number of recent decisions of the Supreme Court. While

the Justices have expressed differing opinions on the

limits of congressional power to abrogate states’

immunity under the delegated powers (see, e.g., the

concurring and dissenting opinions in Union Gas), even

under the broadest view of the power to abrogate,

A7

Congress must “make its intent to do so ‘unmistakably

clear.’ '’ Union Gas, 109 S. Ct. at 2277 (plurality opinion).

In Atascadero, 473 U.S. at 243, the Court stated:

“Congress must express its intention to abrogate the

Eleventh Amendment in unmistakable language in the

statute itself.’’ Evidence of such congressional intent

must be both “unequivocal and textual.’’ Dellmuth, 109

S. Ct. at 2401.

The district court examined the text of the patent

statute and rejected Chew's argument that 35 U.S.C. §

271(a) (1982) contains the requisite intent. In pertinent

part, section 271l(a) reads: ‘‘whoever without authority

makes, uses or sells any patented invention... infringes

the patent.’’ (emphasis added). We agree that the general

term ‘‘whoever’ is not the requisite unmistakable

language of congressional intent necessary to abrogate

Eleventh Amendment immunity. The Supreme Court has

rejected similar arguments based on general language

within a federal statute authorizing suit in federal court

which, when given its broadest interpretation, could

conceivably subject states to suit. For example in

Atascadero, 473 U.S. at 245-46, it was urged that the

language in the Rehabilitation Act providing for

remedies against ‘‘any recipient of Federal assistance’

was broad enough to encompass suit against a

“recipient’’ state. In unequivocably rejecting that

position, the Court held:

General authorization for suit in federal court is not

the kind of unequivocal statutory language

sufficient to abrogate the Eleventh Amendment.

Id. See also Dellmuth, 109 S. Ct. at 2402 (Education of

the Handicapped Act, 20 U.S.C. § 1400(b)(9), ‘‘parties

aggrieved by the Administrative process’’—not

unmistakable language to authorize suit for grievance

A8

against state); Welch v. Texas Dept. of Highways & Pub.

Trans., 107 S. Ct. 2941, 2947 (Jones Act, 46 U.S.C. §

688, ‘‘any seaman’’—not unmistakable language to

authorize suit against state by state ferry boat

empi\=;"2). ‘‘When Congress chooses to subject the states

to federal jurisdiction, it must do so specifically.”

Atascadero, 473 U.S. at 246 (emphasis added). Appellant

refers us to no provision in tne patent statute, and we

find none, which specifically mentions states in

conjunction with enforcing a patentee’s right to exclude

granted bv the patent statute.

The recent Union Gas decision does not lend support

to appellant’s position here. In Union Gas, 109 S. Ct. at

2277-80, the Supreme Court held the states’ immunity to

be abrogated by language in the Comprehensive

Environmental Response, Conservation and Liability Act

(CERCLA), 42 U.S.C. § 9601 et seg. (1982 & Supp. V.

1987), as amended by the Superfund Amendments and

Reauthorization Act of 1986 (SARA), Pub. L. No. 99-499,

100 Stat. 1613 (1986), which made ‘‘persons” and

‘owners and operators”’ liable for the cleanup costs of

contamination. In amended CERCLA, however, states

are explicitly included within the statute's definition of

“persons,” 42 U.S.C. §9601(21), and ‘‘owner or operator”’

is defined by reference to certain activities a ‘‘person’’

may undertake, 42 U.S.C. $9601(20)(A). Id. at 2277.

In contrast to Union Gas, in the present patent

statute Congress has provided no express statutory

definition of “‘whoever,’’ much less one which specifically

includes “‘states.’’ Thus, the statute in Union Gas is

distinguishable from the patent statute.

Amicus and Chew urge that we should discern from

decisions of the Court, the public policy in granting

patents, the exclusivity of Congress’s patent power and

A9

the statutory exclusiveness of federal courts’ jurisdiction

over patent cases, a basis on which to apply a modified,

more liberal standard for abrogation of Eleventh

Amendment immunity. Assuming that the constitutional

and statutory goal of ‘‘promot[ing] the Progress of

Science and useful Arts... ,’’ U.S. Const. art. I, $8, cl. 8,

would be better effectuated by subjecting states to

patent infringement suit in federal court, we cannot

reach the result appellant urges. In Dellmuth, 109 S. Ct.

at 2400-01, the Supreme Court expressly rejected the

nontextual argument that abrogation was

“ ‘necessary ...to achieve the [Education of the

Handicapped Act]’s goals,’’ and further expressly

rejected an approach permitting resort to legislative

history to aid in determining Congressional intent where

the text of the federal legislation bore evidence of such

an intention but not with unmistakable language.

Legislative history generally will be irrelevant to a

judicial inquiry into whether Congress intended to

abrogate the Eleventh Amendment. If Congress’

intention is ‘‘unmistakably clear in the language of

the statute,’’ recourse to legislative history will be

unnecessary; if Congress’ intention is _ not

unmistakably clear, recourse to legislative history

will be futile, because by definition the rule of

Atascadero will not be met.

Id. at 2401. Similarly, the exclusivity of a congressional

power or the exclusiveness of the federal court remedy

has not been relied upon as grounds or support for

abrogation. See Hoffman, 109 S. Ct. at 2822 (rule of

Atascadero applied to Bankruptcy Code). We are

unpersuaded by Chew’s argument that the Supreme

Court would depart from the rule of Atascadero with

respect to suits against the states under the patent

statute.

Al0

We also do not agree with Chew that, because the

interpretation that immunity has not been abrogated

means she has no forum in which to sue California for

patent infringement, the statute must be given the

contrary interpretation. This situation is exactly the

same as depicted in BV Engineering v. UCLA, 858 F.2d

1394, 8 USPQ2d 1421 (9th Cir. 1988), cert. denied, 109 S.

Ct. 1557 (1989). In BV Engineering, 858 F.2d at 1400, 8

USPQ2d at 1425-26, the Ninth Circuit held that

Congress had not abrogated the states’ Eleventh

Amendment immunity in enacting the Copyright Act of

1976, even though it recognized this holding meant that

appellant had no forum for bringing a _ copyright

infringement suit. While we are not bound by this

precedent, see Woodard v. Sage Prods., Inc., 818 F.2d

841, 844, 2 USPQ 2d 1649, 1651 (Fed. Cir. 1987) (in banc),

we find the reasoning generally persuasive. Whether

Chew, had she filed suit in state court, was entitled to a

remedy under state law is a question not before us. See,

infra n.5. We point out that Congress has similarly not

provided a forum for patent infringement suits against

the United States in Title 35. Rather it has provided for

a suit for compensation in the United States Claims

Court where ‘‘a [patented] invention is used or

manufactured by or for the United States.’”’ 28 U.S.C. $

1498 (1982). Such suit is based on principles related to

the taking of property, namely a patent license, and

subjects the United States to payment of appropriate

compensation therefor, not to the liability or relief (such

as treble damages) provided in the patent statute.

All

B. TAKING

Appellant argues that a holding that the Eleventh

Amendment prohibits suits against a state for patent

infringement in federal court necessarily results in a

deprivation of her property without due process of law.

This argument appears to intermix two separate, albeit

related, arguments: (1) that interpreting the patent

statute to preclude patentees from their infringement

remedy against a state in federal court violates

procedural or substantive due process under the Fifth

Amendment; and (2) that the State of California's use of

appellant's patented invention without paying

compensation deprives Chew of her property contrary tc

the Fourteenth Amendment.

With respect to the first argument, Chew's claim in

essence is that Congress’ failure to abrogate states’

Eleventh Amendment immunity takes her preperty. The

proper party for that claim would be the United States,

not the State of California.‘

Similarly, with respect to Chew’s second arguynent

that the state has taken her property, a paient

infringement suit is not the appropriate legal remedy for

vindicating a ‘‘takings”’ claim.*

*See Dames & Moore v. Regan, 453 U.S. 654, 688-90 (1980); Regional

Rail Reorganization Act Cases, 419 U.S. 102, 125-27 (1974).

* While the BV Engineering court expressed concern about reaching a

result that precluded any forum for bringing a copyright infringement

action against a state, we think that this concern is misplaced to the

extent it is premised on the assumption that, without a forum for an

infringement suit, an owner of a patent or copyright has no legal

recourse against a state. This decision, as does the decision in BV

Engineering, simply forecloses one avenue of recourse—the specific

relief for infringement of patent rights otherwise provided by federal

statute. Cf. Welch 107 S. Ct. at 2953 n.19 (availability of worker's

compensation claim against state noted where Jones Act claim

dismissed).

Al2

II]

CONCLUSION

The State of California is immune from suit for

patent infringement under the patent statute by reason

of the Eleventh Amendment. For that reason, we affirm

the district court’s order dismissing appellant’s

complaint.

IV

COSTS

Each party shall bear their own costs.

AFFIRMED

Al3

ORDER OF THE UNITED STATES

DISTRICT COURT

(Filed October 13, 1988)

CIV. NO. S-88-245 EJG

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT

OF CALIFORNIA

MARIAN F. CHEW

Plaintiff,

Vv.

STATE OF CALIFORNIA,

Defendant.

ORDER GRANTING DEFENDANT'S

MOTION TO DISMISS

This matter was before the court on May 27, 1988 on

defendant State of California's motion to dismiss for lack

of personal jurisdiction and for failure to state a claim

upon which relief can be granted. The basis for both

motions was the State’s claim of immunity from suit in

federal court pursuant to the Eleventh Amendment.

After hearing the arguments of counsel concerning the

continuing viability of Mills Music, Inc. v. State of

Arizona, 591 F.2d 1278 (9th Cir. 1979), the court

requested supplemental briefing and took the case under

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submission. Now, having considered all the materials

submitted by the parties, the court finds that

defendant's motion should be granted.

In opposition to the motion, plaintiff makes three

main arguments: (1) that the state has waived its

immunity pursuant to various state constitutional and

statutory provisions, (2) that the state has impliedly

consented to suit in federal court by participating in a

federally funded program; and (3) that Congress has

expressly authorized suit against the state in federal

court by giving federal courts exclusive jurisdiction over

suits involving the patent laws enacted in Title 35 of the

United States Code.

Plaintiff's first two arguments are easily disposed of.

The issues of whether Article III, Section 5 of the

California Constitution provides a waiver of sovereign

immunity has been specifically addressed by the

Supreme Court. In Atascadero State Hospital v. Scanlon,

105 S.Ct. 3142 (1985), the court interpreted Article III,

Section 5 as legislative authorization to waive the state's

immunity to suit in state court. However, ‘“‘[iJn the

absence of an unequivocal waiver specifically applicable

to federal court jurisdiction, we decline to find that

California has waived its constitutional immunity.’’

Atascadero, 105 S.Ct. at 3147.

Plaintiff’s reliance on Cal. Govt. Code § 14781, which

requires bidders on state contracts to indemnify the

state against claims for patent infringement, is also

misplaced. That section was repealed in 1983. In any

event, plaintiff has cited no authority construing that

section as a waiver of the state’s immunity. California

Health & Safety Code § 44036 is equally unavailing.

Contrary to plaintiff’s assertions, nowhere in that section

is there language expressing the state’s consent to be

sued.

Ald

Also without merit is plaintiff's argument that the

state has impliedly consented to suit in federal court by

participating in the Clean Air Act, a federally funded

program. Atascadero teaches that state participation in

federally funded programs authorized by federal statute

does not, by itself, act as a waiver of the state’s

immunity. In addition, the federal statute must contain

‘unmistakable language’ indicating Congress’ intent to

subject unconsenting states to suit in federal court.

Atascadero, 105 S.Ct. at 3149-50. No such language is

present in the Clean Air Act. See 42 U.S.C. §7401 et seq.

Plaintiff's final argument is more difficult to resolve.

Plaintiff contends that in enacting the patent laws under

Title 35 of the United States Code, Congress specifically

abrogated the states’ sovereign immunity by granting

the federal courts exclusive jurisdiction over patent

actions. In support of her position, plaintiff relies on a

Ninth Circuit opinion which has never been expressly

overruled. See Mills Music, supra.

The court cannot argue with plaintiff's reasoning.

Indeed, if the Eleventh Amendment is held to bar suits

against states in federal courts where federal courts

provide the only forum for relief, the result seems unjust.

See eg., B.V. Engineering v. University of California,

657 F.Supp. 1246, 1250 (C.D. Cal. 1987). However,

plaintiff is mistaken when she asserts that no other court

has been faced with the apparent conflict between the

Eleventh Amendment and statutes conferring exclusive

jurisdiction on the federal court. See Charley’s Taxi

Radio Dispatch v. SIDA of Hawaii, 810 F.2d 869 (9th

Cir. 1987) (eleventh amendment barred federal antitrust

action against state and state agency; the federal courts

have exclusive jurisdiction over claims arising under the

Sherman Anti Trust Act).

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Although the court is reluctant to reach a conclusion

contrary to binding Ninth Circuit authority, recent

Supreme Court decisions compel the court to conclude

that Mills Music, supra is no longer a correct statement

of the law. Applying the two most. recent

pronouncements of the Supreme Court in Atascadero,

supra, and Welch v. State Dept. of Highways &

Transportation, 107 S.Ct. 2941 (1987) to the facts of this

case, the court finds that neither §271 nor §281 of Title

35 contain ‘‘unmistakable language’’ indicating

congressional intent to abrogate the state’s immunity

under the Eleventh Amendment. Accordingly,

defendant’s motion must be granted.

IT IS SO ORDERED.

DATED: October 12, 1988.

EDWARD J. GARCIA, Judge

United States District Court

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DECISION OF THE STATE OF CALIFORNIA

BOARD OF CONTROL

(Dated August 19, 1987)

State of California

State Board of Control

P. O. Box 3035

Sacramento, CA 95812-3035

(916) 323-3564 ATSS 473-3564

August 19, 1987

Marian F.Chew

46155 Mather lane

Chagrin Falls, CA 44022

RE: Chew, Marian

Claim Number: G117490 Code: 17

The State Board of Control, at its meeting of August 5,

1987 rejected this claim.

Sincerely,

Government Claims Unit

State Board of Control

cc: B-3 Consumer Affairs Attn: Phyllis Mulvey

B-4 Air Resources

WARNING

“Subject to certain exceptions, you have only six months

from the date this notice was personally delivered or

deposited in the mail to file a court action on this claim.

See government code section 945.6. You may seek the

advice of an attorney of your choice in connection with

this matter. If you desire to consult an attorney, you

should do so immediately.

(REJECT)