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July 22, 2018


I am curious as to the "leaving for another day" statement - how in the world does the "logic" of the Fed being a superior sovereign coupled with the patent being a [federal] franchise right POSSIBLY set up a different result vis a vis State sovereignty?

A: it does not. Not only does it not - it CANNOT.

While there are difference in State and tribal sovereignty, those differences find no foothold whatsoever in how this court answered the question put to it.

When it comes to the [federal] question of patents (and patent law), the Fed has preempted the States, and the same "superior" qualifier MUST apply.

For discussions of interesting issues as to what may happen next after this decision see the discussion in comments number 9 et sec under the July 19 Patently-O blog.

For someone with the nom de blog "skeptical" you are charmingly trusting with regard to the Supreme Court. "Tribes are tribes and states are states" might be all they need to say (no doubt supported by historical precedent from the 18th Century).

Stayed tuned.

Dr. Noonan,

Your reply made me chuckle.

Yes, I realize that what SHOULD happen and what DOES happen are often (and especially in patent law matters) not necessarily the same thing in regards to the Supreme Court.

But I will shoot back and challenge(even if only pedantically) the choice of the phrase "all they need to say" with the same sense of humor that what the Court NEEDS to do and what it actually does are similarly two different things.

"Need to say," of course meaning "sufficient for them to reach a conclusion contrary to the one you posit they must reach.

To paraphrase, no one ever went broke betting that this Court would do something other than what pundits think they should do.

I agree with your conclusion, given your stated meaning. Nonetheless, my point still holds.

Behind a paywall, a LAW360 article today by y Matthew Bultman reinforces my first post, and includes the following snippets:

"The Federal Circuit was careful to limit its ruling to tribal immunity, saying that it was not deciding whether state sovereign immunity applies at the PTAB, which is at issue in a separate case at the court. But attorneys said the reasoning in the ruling would appear to apply equally to state protections."

"Unlike tribal immunity, the PTAB has ruled that state sovereign immunity does apply in IPRs. And the board has cited the FMC ruling in those decisions. Attorneys said the Federal Circuit's decision in the Saint Regis case raises some questions about those holdings.

"It is hard to imagine how — given that the court here applied [FMC] to tribal immunity — the application of that very same case to states in the very same proceeding could come out differently," Tamara Fraizer of Squire Patton Boggs LLP said."


"Although there are differences between state and tribal immunity, Fraizer and others said there did not appear to be anything in the Federal Circuit's opinion that was unique to tribes. The factors the court considered were related to IPR proceedings, not the parties involved.

"The court basically made this decision based on the nature of what an IPR is, not really on the nature of what tribal sovereign immunity is," Zachary Silbersher of Kroub Silbersher & Kolmykov PLLC said."

"The language [in Judge Dyk's concurrence] is fairly sweeping in saying that there should be no sovereign immunity in the PTAB, period," Williams said.

I will grant that the Supreme Court "may" attempt to do as it pleases, without regard to pretty much anything (and especially so in patent cases), but the point here - at law and immediately flowing from THIS case - is strongly as I suggest.

"'Tribes are tribes and states are states' might be all they need to say... ."

This is true as far as it goes, but that seems to me to underplay the differences between the two sorts of immunity. State sovereign immunity is codified in the constitution. Tribal sovereign immunity is a creature of federal common law. The federal courts can, therefore, feel much more free in defining the boundaries of tribal sovereign immunity than they can the boundaries of state sovereign immunity.

I will not lay odds one way or the other (especially because I do not know the composition of the panel that is to hear Ericson) as to how the statue question will come out, but *if* that panel wants to hold for Minnesota, it will scarcely require stiff logical contortions. They can simply say "the constitution permitted this court to hold as it did in St. Regis Mohawks, but the constitution compels a different outcome in the present case."

"as to how the statue question..."

Sorry about that. This should read "as to how the stated question... ." The silly autocorrect strikes again.

Greg: thanks for saying more fully what I was trying to say. The Eleventh Amendment is a strong impediment to any court wishing to circumscribe State sovereign immunity in ways that just don't apply to tribal immunity, for all the reasons you mentioned.

But I also am not willing to speculate on how the CAFC panel will rule in Ericsson, much less what the Supreme Court will eventually say.

Greg states "The federal courts can, therefore, feel much more free in defining the boundaries of tribal sovereign immunity than they can the boundaries of state sovereign immunity."

but this is not so.

It is not the courts that have the power to sculpt the contours of Tribal immunity - it is Congress (and the distinction is that Congress may do so without the level of agreement that a Constitutional change would require).

As the article I offered indicates: the logic of the present case - notwithstanding its caveat - simply does not impinge on any distinction of State versus Tribal immunity that looks to interject into the results of the decision.

Both Greg and Dr. Noonan are missing the point that THIS court's "logic" - as applied to a case of STATE immunity - has NO hook upon which the State fares any better than the Tribe.

The comments to this entry are closed.

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