No. 98-731
In the Supreme Court of the United States
OCTOBER TERM, 1998
REGENTS OF UNIVERSITY OF CALIFORNIA, PETITIONER
v.
GENENTECH, INC., AND UNITED STATES OF AMERICA
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES
SETH P. WAXMAN
Solicitor General
Counsel of Record
FRANK W. HUNGER
Assistant Attorney General
MARK B. STERN
MICHAEL S. RAAB
Attorneys
Department of Justice
Washington, D.C. 20530-0001
(202) 514-2217
QUESTIONS PRESENTED
1. Whether petitioner waived its Eleventh Amendment immunity from this action
for declaratory relief.
2. Whether Congress has validly abrogated petitioner's immunity from this
lawsuit pursuant to its authority under Section 5 of the Fourteenth Amendment.
In the Supreme Court of the United States
OCTOBER TERM, 1998
No. 98-731
REGENTS OF UNIVERSITY OF CALIFORNIA, PETITIONER
v.
GENENTECH, INC., AND UNITED STATES OF AMERICA
ON PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
BRIEF FOR THE UNITED STATES
OPINIONS BELOW
The opinion of the court of appeals (Pet. App. 1a-17a) is reported at 143
F.3d 1446. The opinion of the district court (Pet. App. 18a-30a) is reported
at 939 F. Supp. 639. An earlier opinion of the court of appeals (Pet. App.
31a-59a) is reported at 998 F.2d 931. An earlier opinion of the district
court is reported at 952 F. Supp. 617. Another opinion of the district court
(Pet. App. 60a-66a) is unreported.
JURISDICTION
The judgment of the court of appeals was entered on May 4, 1998. A petition
for rehearing was denied on August 5, 1998. Pet. App. 67a-68a. The petition
for a writ of certiorari was filed on November 3, 1998. The jurisdiction
of this Court is invoked under 28 U.S.C. 1254(1).
STATEMENT
1. This case concerns a patent owned by petitioner, U.S. Patent No. 4,363,877,
which arose out of research relating to the production of human growth hormone
by means of recombinant DNA technology. In re Recombinant DNA Tech. Patent
& Contract Litig., 874 F. Supp. 904, 907 (S.D. Ind. 1994); Genentech,
Inc. v. Regents of the Univ. of Cal., 952 F. Supp. 617, 618 (S.D. Ind. 1996).
The patent application was filed on April 12, 1978, and the patent was issued
on December 14, 1982. 874 F. Supp. at 907, 908. In September 1978, petitioner
and Eli Lilly and Company (Eli Lilly) entered into an option agreement,
which provided Eli Lilly with the exclusive right to obtain a license to
certain patents that might eventually issue from petitioner's research relating
to human growth hormone, including the research that resulted in the patent
at issue here. 952 F. Supp. at 618-619. After obtaining the approval of
the federal government, which had provided funding for the research that
led to petitioner's patent, petitioner entered into an exclusive licensing
agreement with Eli Lilly in March 1989. 874 F. Supp. at 907-908; 952 F.
Supp. at 619.
On August 6, 1990, respondent Genentech, Inc. (Genentech) commenced this
lawsuit against petitioner and Eli Lilly in the United States District Court
for the Southern District of Indiana. The gravamen of the suit was that
petitioner had accused Genentech of infringing petitioner's patent and had
threatened to file suit against Genentech. Pet. App. 27a, 69a. The complaint
requested a declaratory judgment that petitioner's patent is invalid and
unenforceable, and that the patent was not infringed by Genentech. Id. at
19a-20a; 952 F. Supp. at 619. The day after Genentech's suit was filed,
petitioner filed an action in the Northern District of California, alleging
that Genentech had infringed the patent. Pet. App. 20a. The Judicial Panel
on Multidistrict Litigation later transferred petitioner's lawsuit to the
Southern District of Indiana for pretrial proceedings with five other related
cases. See id. at 19a.
2. On February 4, 1991, the district court granted petitioner's motion to
dismiss Genentech's declaratory judgment action on Eleventh Amendment and
other grounds. Pet. App. 60a-66a. The court of appeals reversed. Genentech,
Inc. v. Eli Lilly & Co., 998 F.2d 931, 941-944 (Fed. Cir. 1993), cert.
denied, 510 U.S. 1140 (1994) (Pet. App. 31a-59a). The court held, inter
alia, that the Patent Act, 35 U.S.C. 1 et seq., as amended by the Patent
and Plant Variety Protection Remedy Clarification Act, Pub. L. No. 102-560,
106 Stat. 4230, expressly abrogated petitioner's Eleventh Amendment immunity
from suit in federal court. 998 F.2d at 941-944 (Pet. App. 42a-50a).
After this Court issued its decision in Seminole Tribe v. Florida, 517 U.S.
44 (1996), petitioner again moved to dismiss the lawsuit on Eleventh Amendment
grounds. The district court granted petitioner's motion to dismiss the case.
Pet. App. 18a-30a. Under Seminole Tribe, the court held, Congress is foreclosed
from abrogating petitioner's sovereign immunity under its Article I powers.
Id. at 24a. The court also held that Congress lacked authority under Section
5 of the Fourteenth Amendment to abrogate petitioner's sovereign immunity
in this case, since Genentech's declaratory judgment action did not allege
a deprivation of any property right. Id. at 25a-26a.
Finally, the district court concluded that petitioner had not waived its
immunity from suit. Pet. App. 26a-30a. The court explained that petitioner's
procurement of a patent, its grant of an exclusive license to Eli Lilly,
and its alleged accusations of infringement and threats of suit against
Genentech did not constitute an unambiguous expression of consent to this
lawsuit. Id. at 27a-29a.
3. The court of appeals reversed. Pet. App. 1a-17a. Pursuant to 28 U.S.C.
2403(a), the United States intervened to defend the constitutionality of
the relevant Patent Act provisions. Pet. App. 13a n.7. The court held that
petitioner had waived its Eleventh Amendment immunity by voluntarily participating
in the patent system and by "actively invok[ing] federal judicial power"
to protect its patent rights against Genentech's allegedly infringing conduct.
Id. at 11a. The court did not reach the abrogation issues addressed by the
district court. See id. at 4a, 10a.
DISCUSSION
On January 8, 1999, this Court granted petitions for certiorari in No. 98-149,
College Savings Bank v. Florida Prepaid Postsecondary Education Expense
Board, and No. 98-531, Florida Prepaid Postsecondary Education Expense Board
v. College Savings Bank. The Court's decisions in those cases may bear on
the proper resolution of the waiver and abrogation questions presented by
the petition in the instant case. The petition for a writ of certiorari
should therefore be held pending this Court's decisions in Nos. 98-149 and
98-531, and disposed of as appropriate in light of those decisions.
1. The practical effect of the court of appeals' decision in this case is
likely to be modest. Under the doctrine of Ex parte Young, 209 U.S. 123
(1908), the Eleventh Amendment does not preclude private parties from obtaining
prospective declaratory relief against individual state officials for ongoing
violations of federal law. Unlike the statute at issue in Seminole Tribe,
the Patent Act expressly authorizes suits against state officers and employees.
See 35 U.S.C. 271(h), 296; compare Seminole Tribe, 517 U.S. at 73-75. Enforcement
of the patent laws does not implicate any "special sovereignty interests"
that might render relief under Ex parte Young unavailable. Compare Idaho
v. Coeur d'Alene Tribe, 521 U.S. 261, 281 (1997). The Federal Circuit's
determination that a declaratory judgment action may also be brought against
the State itself is of little practical significance.*
Even in the present case, where Genentech did not name any individual state
official as a defendant (see note *, supra), the practical significance
of the court of appeals' decision is minimal. As noted above, petitioner
filed a patent infringement suit against Genentech in the United States
District Court for the Northern District of California, and that pending
suit raises essentially the same patent law issues as those presented in
this case. See Pet. App. 3a (referring to petitioner's suit as a "mirror-image"
of the suit filed by Genentech); see also Pet. 4 & n.1. Thus, the only
practical effect of the court of appeals' resolution of the Eleventh Amendment
question is to determine which of two federal district courts will adjudicate
those patent law issues, not whether the issues will be resolved in federal
court at all. And no matter which of the two district courts resolves those
issues, exclusive appellate jurisdiction will lie in the Federal Circuit.
See 28 U.S.C. 1295(a)(1).
2. On January 8, 1999, this Court granted petitions for certiorari in No.
98-149, College Savings Bank v. Florida Prepaid Postsecondary Education
Expense Board, and No. 98-531, Florida Prepaid Postsecondary Education Expense
Board v. College Savings Bank. No. 98-149 presents the question whether
the state defendant in that case waived its Eleventh Amendment immunity
from suits for violations of Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a). This Court's decision in No. 98-149 may clarify the legal rules
concerning the circumstances under which a State will be deemed to have
waived its Eleventh Amendment immunity from suit in federal court.
Petitioner also seeks review (Pet. 18-22) of the question whether Congress
has validly abrogated the State's immunity from suit in federal court for
violations of the Patent Act. The court of appeals did not address that
issue, and this Court ordinarily does not consider issues that are not resolved
by the court below. See, e.g., Patrick v. Burget, 486 U.S. 94, 99 n.5 (1988).
However, Nos. 98-149 and 98-531 both present questions concerning the scope
of congressional authority to abrogate a State's Eleventh Amendment immunity
pursuant to Section 5 of the Fourteenth Amendment. The Court's decisions
in those cases may bear on the proper resolution of the abrogation question
in this case.
CONCLUSION
The petition for a writ of certiorari should be held pending this Court's
decisions in No. 98-149, College Savings Bank v. Florida Prepaid Postsecondary
Education Expense Board, and No. 98-531, Florida Prepaid Postsecondary Education
Expense Board v. College Savings Bank, and disposed of as appropriate in
light of those decisions.
Respectfully submitted.
SETH P. WAXMAN
Solicitor General
FRANK W. HUNGER
Assistant Attorney General
MARK B. STERN
MICHAEL S. RAAB
Attorneys
FEBRUARY 1999
* After the district court initially held (see Pet. App. 60a-66a) that Genentech's
suit against petitioner was barred by the Eleventh Amendment, Genentech
sought leave to amend its complaint to name the individual Regents of the
University of California as defendants. Id. at 42a. The district court denied
leave to amend the complaint. Ibid. The Federal Circuit in Genentech's prior
appeal declined to address the propriety of the denial of leave to amend,
in light of its holding that Congress had properly abrogated petitioner's
Eleventh Amendment immunity. See ibid.