The US Supreme Court hasasked the Solicitor General to comment on what is becoming a very closely watched case over sovereign immunity, which protects states - including state universities - from being sued for patent infringement in the federal court system. The concept is contentious, though, because state universities can sue others for patent infringement. In other words, they can have it both ways.
A little-known company, Biomedical Patent Management, is arguing that such immunity is not only unwarranted, but also unfair. Biomedical filed its petition earlier this year to the Supreme Court after a federal appeals court ruled in favor of the University of California in a patent dispute. The outcome has potentially far-reaching ramifications for various industries, notably drugmakers and biotechs, which invest large sums to create and design their inventions.
California has successfully alleged some sizeable patent infringement claims - between 2000 and 2006, there were more than $900 million in judgments and settlements in patent-infringement actions, according to Biomedical's Supreme Court filing. Over the last 20 years, however, sovereign immunity was cited by the university to dismiss a half dozen patent challenges. Biomedical sought royalties on a patented method of screening birth defects, but lost after the University of California raised its patent shield.
Given that the Supreme Court declines to hear the vast majority of petitions, lawyers for Biomedical are encouraged. As they see it, by asking the Solicitor General to "express its views," the court may be signaling an interest in reviewing the issue.
"Most of these petitions are denied. Maybe 20 to 30 times the court will ask the US Solicitor General to weigh in and advise the court on whether the it thinks court should take up the case," says Andrew Dhuey, one of Biomedical's lawyers. "And the Solicitor General, a little more than half the time, will recommend the Supreme Court take the case. So this is a very good sign, because if you get to this point, it's shortened the odds dramatically that the court will hear it. Even though there's no certainty the court will take it up, we've made a humongous leap in that direction."