Facts
- Florida Prepaid Postsecondary Education Expense Board, a Florida state entity, operated a prepaid college tuition program.
- College Savings Bank owned a patent covering a method of financing college education and alleged Florida Prepaid’s program infringed that patent.
- College Savings sued Florida Prepaid for patent infringement in federal court and relied on the Patent and Plant Variety Protection Remedy Clarification Act (Patent Remedy Act), which purported to abrogate state sovereign immunity in patent suits.
- After Seminole Tribe held Congress may not abrogate state sovereign immunity under Article I, Florida Prepaid moved to dismiss on sovereign-immunity grounds.
- The district court denied dismissal; the Federal Circuit affirmed, holding the Patent Remedy Act valid under § 5 of the Fourteenth Amendment.
- The Supreme Court granted certiorari to determine whether the abrogation provision was a valid exercise of § 5 power.
Issues
- Whether Congress validly abrogated state sovereign immunity for patent infringement suits through the Patent Remedy Act under § 5 of the Fourteenth Amendment.
- Whether Congress identified and targeted conduct that amounts to unconstitutional deprivations of property without due process, as required for remedial § 5 legislation.
- Whether the Patent Remedy Act’s remedies were congruent and proportional to any demonstrated pattern of constitutional violations by states.
Decision
- The Supreme Court reversed the Federal Circuit in a 5–4 decision authored by Chief Justice Rehnquist.
- The Court held the Patent Remedy Act’s abrogation of state sovereign immunity is unconstitutional because it was not valid § 5 legislation enforcing the Due Process Clause.
- The Court accepted that Congress clearly expressed intent to abrogate, but concluded Congress lacked valid constitutional power to do so here.
- Florida Prepaid was immune from the federal patent infringement damages action, and the suit could not proceed.
Legal Principles
- Congressional abrogation of state sovereign immunity requires (1) unequivocal statutory intent and (2) a valid constitutional source of authority; after Seminole Tribe, Article I powers do not supply that authority.
- Congress may abrogate state sovereign immunity only pursuant to § 5 of the Fourteenth Amendment, and § 5 legislation must be remedial.
- Under City of Boerne, § 5 legislation must identify conduct that likely or actually violates the Fourteenth Amendment and must be tailored with “congruence and proportionality” between the injury to be prevented or remedied and the legislative means adopted.
- Patents are property for Fourteenth Amendment purposes, but patent infringement by a state is not necessarily a due process violation; a due process deprivation depends on the absence of an adequate state remedy.
- A federal statute that subjects all states to suit for all patent infringement, without regard to intent, the availability of state remedies, or evidence of widespread unconstitutional conduct, is not congruent and proportional under § 5.
Conclusion
The Court invalidated the Patent Remedy Act’s attempt to subject nonconsenting states to federal patent infringement suits, holding that Congress failed to show a pattern of state conduct amounting to due process violations and adopted a remedy disproportionate to any demonstrated constitutional harm.