Biomedical Patent Management Corporation v. California Department of Health Services

1. Whether a state's waiver of Eleventh Amendment immunity in one action extends to a subsequent action involving the same parties and the same underlying transaction or occurrence.

2. Whether a state waives its Eleventh Amendment immunity in patent actions by regularly and voluntarily invoking federal jurisdiction to enforce its own patent rights.

NCLC urged the Supreme Court to consider whether a state waives its claim to sovereign immunity in patent infringement cases if the state itself has filed numerous patent infringement cases in federal court. In its brief, NCLC noted the incongruity between permitting a state to invoke the federal forum repeatedly to protect its patents but resisting the federal forum when accused of patent infringement. NCLC made clear that prior Supreme Court precedent should not upset the careful balance set by Congress in patent litigation when states repeatedly make use of federal courts to assert their rights in other patent infringement cases.

The Supreme Court declined to consider this case.

Amicus brief supporting cert. filed 2/22/08. Call for the views of the Solicitor General issued 4/21/08. Cert. denied 1/12/09.