Chew v. State of Cal.

• Citation: 893 F.2d 331
• Decision Date: 03 January 1990
• Docket Number: No. 89-1390,89-1390
• Parties: , 13 U.S.P.Q.2d 1393 Marian F. CHEW, Plaintiff-Appellant, v. STATE OF CALIFORNIA, Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 331

893 F.2d 331

58 USLW 2400, 13 U.S.P.Q.2d 1393

Marian F. CHEW, Plaintiff-Appellant, v. STATE OF CALIFORNIA, Defendant-Appellee.

No. 89-1390.

United States Court of Appeals, Federal Circuit.

Jan. 3, 1990.

Edwin W. Oldham, Oldham & Oldham Co., LPA, Akron, Ohio, argued, for plaintiff-appellant. With him on the brief, was Stephen L. Grant.

Kathleen E. Gnekow, Deputy Atty. Gen., of Sacramento, Cal., for defendant-appellee. With her on the brief, were John K. Van De Kamp, Atty. Gen. of the State of Cal., R.H. Connett, Asst. Atty. Gen., and Walter E. Wunderlich, Supervising Deputy Atty. Gen.

Donald S. Chisum, of Seattle, Washington, on the brief, for amicus curiae, American Intellectual Property Law Assn. With him on the brief, were Michael W. Blommer, Charles L. Gholz, Jack C. Goldstein, I. Fred Koenigsberg and William L. LaFuze.

Before MARKEY, Chief Judge, FRIEDMAN, Senior Circuit Judge, ¹ and NIES, Circuit Judge.

DECISION

NIES, Circuit Judge.

Marian F. Chew appeals from the order of the United States District Court for the Eastern District of California, Chew v. California, No. S-88-245 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 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 Sec. 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. Sec. 1 et seq.  (1982 & Supp. 1987), in the United States District Court for the Eastern District of California under 28 U.S.C. Sec. 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 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 Hospital v. Scanlon, 473 U.S. 234, 105 S.Ct. 3142, 87 L.Ed.2d 171 (1985), in which similar arguments had been put forth.  Chew advances only her last argument in this appeal. 2   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
                

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. Eleventh 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, 27 S.Ct. 526, 527, 51 L.Ed. 834 (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, rendering any further analysis superfluous. Clearly this has never been a viable interpretation of immunity under the Eleventh Amendment. ³

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, 105 S.Ct. 3142, 3145, 87 L.Ed.2d 171 (1985). See also, Dellmuth v. Muth, --- U.S. ----, 109 S.Ct. 2397, 2400, 105 L.Ed.2d 181 (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., --- U.S. ----, 109 S.Ct. 2273, 2284, 105 L.Ed.2d 1 (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 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 liable 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, Sec. 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, --- U.S. ----, 109 S.Ct. 2818, 2824, 106 L.Ed.2d 76 (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, 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, 105 S.Ct. at 3147, 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. Sec. 271(a) (1982) contains the requisite intent. In pertinent part, section 271(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, 105 S.Ct. at 3148-49, 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, ...