State’s Participation in PTO Proceedings Waives Eleventh Amendment Immunity

Case: Vas-Cath, Inc. v. Curators of the Univ. of Missouri, No. 06-1100 (Fed. Cir. January 23, 2007)

The One Sentence Summary: Where University of Missouri requested the Patent Trade Office (“PTO”) to conduct litigation-type activity and obtained a favorable agency ruling for which Federal statute authorizes judicial review, it effectively waived all Eleventh Amendment immunity from suit in Federal court for the remainder of the proceedings.


What They Were Fighting About: The University of Missouri had brought patent interference proceedings in the PTO against Vas-Cath because Vas-Cath had been issued a patent despite the fact that the University had already filed an application on the same patent. After a six-year interference proceeding, during which both sides produced records and witnesses and filed numerous motions and briefs, the PTO awarded priority to the University. When Vas-Cath appealed the PTO ruling to the United States District Court, as authorized by 35 U.S.C. § 146, the University asserted Eleventh Amendment immunity from suit.

Federal Circuit Holdings:

• The interference contest in the PTO was conducted at the University’s request and with its full participation. Thus, this situation is unlike circumstances in which the State is compelled to participate in Federal administrative proceedings. Because the principals of federalism are not designed for tactical advantage, principals of fairness and consistency prohibit the University from selectively asserting Eleventh Amendment immunity.
• University’s argument that the Section 146 proceeding was not a mere continuation of the PTO proceeding because it allowed for live testimony and witnesses in the courtroom is negated by University’s full participation in the PTO proceeding. The University had allowed its witnesses to testify in the proceeding without raising any Eleventh Amendment objections.