OCTOBER TERM, 1998
Syllabus
FLORIDA PREPAID POSTSECONDARY EDUCATION EXPENSE BOARD
v.
COLLEGE SAVINGS BANK ETAL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL
CIRCUIT
No. 98-531. Argued April 20, 1999-Decided June 23, 1999
After the Patent and Plant Variety Protection Remedy
Clarification Act (Act) amended the patent laws to expressly
abrogate the States' sovereign immunity, respondent College Savings
Bank filed a patent infringement suit against petitioner Florida
Prepaid Postsecondary Education Expenses Board (Florida Prepaid), a
Florida state entity. When this Court decided
Seminole Tribe of
Fla. v.
Florida, 517 U. S. 44, Florida
Prepaid moved to dismiss the action, claiming that the Act was an
unconstitutional attempt by Congress to use its Article I powers to
abrogate state sovereign immunity. College Savings countered that
Congress had properly exercised its power pursuant to § 5 of the
Fourteenth Amendment in order to enforce the due process guarantees
in § 1 of the Amendment. The United States intervened to defend the
statute's constitutionality. Agreeing with College Savings, the
District Court denied the motion, and the Federal Circuit
affirmed.
Held: The Act's abrogation of States' sovereign immunity
is invalid because it cannot be sustained as legislation enacted to
enforce the guarantees of the Fourteenth Amendment's Due Process
Clause. Pp. 634-648.
(a) Florida has not expressly consented to suit, or impliedly
waived its immunity, see
College Savings Bank v.
Florida
Prepaid Postsecondary Ed. Expense Bd., post, p. 666. To
determine whether the Act nonetheless validly abrogated that
immunity, the Court must ask: first, whether Congress has
"'unequivocally expresse[d] its intent to abrogate,'" and second,
whether Congress acted "'pursuant to a valid exercise of power.'''
Seminole Tribe, supra, at 55. Congress clearly made known
its intent to abrogate in the Act. Whether it had the power to do
so is another matter. In
Seminole Tribe, this Court held
that Congress does not have such power under Article I but
reaffirmed its holding in
Fitzpatrick v.
Bitzer,
427 U. S. 445,
that Congress has such power under § 5 of the Fourteenth Amendment.
Thus, legislation that is "appropriate" under § 5, as that term was
construed in
City of Boerne v.
Flores, 521 U. S. 507, could
abrogate state sovereignty. Since Congress' enforcement power is
remedial,
id., at 519, to invoke § 5, Congress
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v.
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Syllabus
must identify conduct transgressing the Fourteenth Amendment's
substantive provisions, and must tailor its legislative scheme to
remedying or preventing such conduct. Pp. 634-639.
(b) Here, the underlying conduct is unremedied patent
infringement by States. However, in enacting the Act, Congress
identified no pattern of such infringement, let alone a pattern of
constitutional violations. The House Report provided only two
examples of patent infringement suits against States, and the
Federal Circuit identified only eight such suits in 110 years.
Testimony before the House Subcommittee acknowledged that States
are willing and able to respect patent rights, and the Senate
Report contains no evidence that unremedied patent infringement by
States had become a problem of national import. pp. 639-641.
(c) Although patents may be considered property within the
meaning of the Due Process Clause, the legislative record still
provides little support for the proposition that Congress sought to
remedy a Fourteenth Amendment violation in enacting the Act. Under
the plain terms of the Due Process Clause and the clear import of
this Court's precedent, a State's infringement of a patent violates
the Constitution only where the State provides no remedy, or only
inadequate remedies, to injured patent owners for its infringement
of their patent. Congress, however, barely considered the
availability of state remedies for patent infringement. The primary
point made by the limited testimony on state remedies was not
whether the remedies were constitutionally inadequate, but rather
that they were less convenient than federal remedies and might
undermine the uniformity of patent law. Congress itself said
nothing about the existence or adequacy of state remedies in the
statute or the Senate Report. The need for uniformity in patent law
construction, though undoubtedly important, is a factor belonging
to the Article I patent-power calculus. Moreover, a state actor's
negligent act causing unintended injury to a person's property does
not "deprive" that person of property within the meaning of the Due
Process Clause, and the record suggests that state infringement of
patents was at worst innocent. The legislative record thus suggests
that the Act does not respond to a history of widespread and
persisting deprivation of constitutional rights of the sort
Congress has faced in enacting proper prophylactic § 5 legislation.
Because of the lack of legislative support for Congress'
conclusion, the Act's provisions are so out of proportion to the
supposed remedy or preventive object that they cannot be understood
as responsive to, or designed to prevent, unconstitutional
behavior. Congress did not limit the Act's coverage to cases
involving arguable constitutional violations or confine its reach
by limiting the remedy to certain types of infringement. Instead
Congress made all States immediately amenable to federal-court
suits for all kinds of possible patent
629
infringement and for an indefinite duration. The statute's
appearance and more basic aims-to present a uniform remedy for
patent infringement and place States on the same footing as private
parties under that regime-are proper Article I concerns, but that
Article does not give Congress the power to enact such legislation
after
Seminole Tribe. Pp. 641-648.
148 F.3d
1343, reversed and remanded.
REHNQUIST, C. J., delivered the opinion of the Court, in which
O'CONNOR, SCALIA, KENNEDY, and THOMAS, JJ., joined. STEVENS, J.,
filed a dissenting opinion, in which SOUTER, GINSBURG, and BREYER,
JJ., joined,
post, p. 648.
Jonathan A. Glogau, Assistant Attorney General of
Florida, argued the cause for petitioner. With him on the briefs
were
Louis F. Hubener, Assistant Attorney General,
Anne S.
Mason, Joseph C.
Mason, Jr., William B.
Mallin, Lewis
Kevin J. Culligan argued the cause for
respondent College Savings Bank. With him on the brief were
Steven C.
Cherny and
Robert W Morris.
Solicitor General Waxman argued the cause for the United States,
respondent under this Court's Rule 12.6, urging affirmance. With
him on the brief were Acting Assistant Attorney General Ogden,
Deputy Solicitor General Wallace, Paul R.
Q. Wolfson, and
Mark B. Stern.
*
*Briefs of
amici curiae urging reversal were filed for
the State of Ohio et al. by
Betty D. Montgomery, Attorney
General of Ohio,
Edward B. Foley, State Solicitor, and
Elise W Porter, Assistant Solicitor, and by the Attorneys
General for their respective States as follows:
Bill Pryor
of Alabama,
Bill Lockyer of California,
Ken Salazar
of Colorado,
M. Jane Brady of Delaware,
Margery S.
Bronster of Hawaii,
James E. Ryan of Illinois,
Jeffrey A. Modisett of Indiana,
Richard P. Ieyoub of
Louisiana,
J. Joseph Curran, Jr., of Maryland,
Jennifer M. Granholm of Michigan,
Mike Moore of
Mississippi,
Jeremiah W (Jay) Nixon of Missouri,
Don
Stenberg of Nebraska,
Frankie Sue Del Papa of Nevada,
Philip T. McLaughlin of New Hampshire,
Patricia A.
Madrid of New Mexico,
Eliot Spitzer of New York,
W A.
Drew Edmondson of Oklahoma,
Hardy Myers of Oregon,
D.
Michael Fisher of Pennsylvania,
Sheldon Whitehouse of
Rhode Island,
Charles M. Condon of South Carolina,
Jan
Graham of Utah,
Mark L. Earley of Virginia, and
Gay
Woodhouse of Wyoming; for the National Con-
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CHIEF JUSTICE REHNQUIST delivered the opinion of the Court.
In 1992, Congress amended the patent laws and expressly
abrogated the States' sovereign immunity from claims of patent
infringement. Respondent College Savings then sued the State of
Florida for patent infringement, and the Court of Appeals held that
Congress had validly abrogated the State's sovereign immunity from
infringement suits pursuant to its authority under § 5 of the
Fourteenth Amendment. We hold that, under
City of
Boerne v.
Flores, 521 U. S. 507 (1997), the
statute cannot be sustained as legislation enacted to enforce the
guarantees of the Fourteenth Amendment's Due Process Clause, and
accordingly reverse the decision of the Court of Appeals.
I
Since 1987, respondent College Savings Bank, a New Jersey
chartered savings bank located in Princeton, New Jersey, has
marketed and sold certificates of deposit known as the College Sure
CD, which are essentially annuity contracts for financing future
college expenses. College Savings obtained
ference of State Legislatures et al. by Richard Ruda and James
I. Crowley; and for the Regents of the University of California by
Charles A. Miller, Caroline M. Brown, Jason A. Levine, Gerald P.
Dodson, James E. Holst, P. Martin Simpson, Jr., and Richard L.
Stanley.
Briefs of
amici curiae urging affirmance were filed for
the American Society of Composers, Authors, and Publishers et al.
by
Michael R. Klipper; for the Association of American
Publishers, Inc., et al. by
Charles S.
Sims; for the
Association of American Railroads by
Betty Jo Christian and
Shannen W Coffin; for the Federal Circuit Bar Association by
George E. Hutchinson and
William M. Atkinson; for the
New York Intellectual Property Law Association by
Charles P.
Baker, Bruce M. Wexler, and
Howard B. Barnaby; and for
the Pacific Legal Foundation by
Eric Grant and
James
S.
Burling.
Briefs of
amici curiae were filed for the American
Intellectual Property Law Association by
Joseph R. Re, Michael
K. Friedland, and
Don W Martens; and for the Association
of the Bar of the City of New York by
Leon Friedman, Louis A.
Craco, Jr., and
James F.
Parver.
631
a patent for its financing methodology, designed to guarantee
investors sufficient funds to cover the costs of tuition for
colleges. Petitioner Florida Prepaid Postsecondary Education
Expense Board (Florida Prepaid) is an entity created by the State
of Florida that administers similar tuition prepayment contracts
available to Florida residents and their children. See Fla. Stat. §
240.551(1) (Supp. 1998). College Savings claims that, in the course
of administering its tuition prepayment program, Florida Prepaid
directly and indirectly infringed College Savings' patent.
College Savings brought an infringement action under 35 U. S. C.
§ 271(a) against Florida Prepaid in the United States District
Court for the District of New Jersey in November 1994.1 By the time
College Savings filed its suit, Congress had already passed the
Patent and Plant Variety Protection Remedy Clarification Act
(Patent Remedy Act), 35 U. S. C. §§ 271(h), 296(a). Before this
legislation, the patent laws stated only that "whoever" without
authority made, used, or sold a patented invention infringed the
patent. 35 U. S. C. § 271(a) (1988 ed.).2 Applying this Court's
decision in
Atas-
1 College Savings also filed a separate action alleging that
Florida Prepaid had made false claims about its own product in
violation of the Trademark Act of 1946 (Lanham Act), 15 U. S. C. §
1125(a). The District Court dismissed the Lanham Act suit on
Eleventh Amendment grounds, the Third Circuit affirmed, and we
granted College Savings' petition in that case on the same day we
granted the petition in this case. See 525 U. S. 1063 (1999). The
Lanham Act suit is the subject of our opinion in
College Savings
Bank v.
Florida Prepaid Postsecondary Ed. Expense Bd.,
post, p.666.
2 Section 271 still provides in relevant part:
"(a) Except as otherwise provided in this title, whoever without
authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United
States any patented invention during the term of the patent
therefor, infringes the patent.
"(b) Whoever actively induces infringement of a patent shall be
liable as an infringer.
"(c) Whoever offers to sell or sells within the United States or
imports into the United States a component of a patented machine,
manufacture,
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cadero State Hosp. v.
Scanlon, 473 U. S. 234, 242-243
(1985), the Federal Circuit had held that the patent laws failed to
contain the requisite statement of intent to abrogate state
sovereign immunity from infringement suits. See,
e.
g., Chew v.
California, 893
F.2d 331 (1989). In response to
Chew and similar
decisions, Congress enacted the Patent Remedy Act to "clarify that
States, instrumentalities of States, and officers and employees of
States acting in their official capacity, are subject to suit in
Federal court by any person for infringement of patents and plant
variety protections." Pub. L. 102-560, preamble, 106 Stat. 4230;
see also H. R. Rep. No. 101-960, pt. 1, pp. 7, 33 (1990)
(hereinafter H. R. Rep.); S. Rep. No. 102-280, pp. 1, 5-6 (1992)
(hereinafter S. Rep.). Section 271(h) now states: "As used in this
section, the term 'whoever' includes any State, any instrumentality
of a State, and any officer or employee of a State or
instrumentality of a State acting in his official capacity."
Section 296(a) addresses the sovereign immunity issue even more
specifically:
"Any State, any instrumentality of a State, and any officer or
employee of a State or instrumentality of a State acting in his
official capacity, shall not be immune, under the eleventh
amendment of the Constitution of the United States or under any
other doctrine of sovereign immunity, from suit in Federal court by
any person ... for infringement of a patent under section 271, or
for any other violation under this title."
Relying on these provisions, College Savings alleged that
Florida Prepaid had willfully infringed its patent under
combination or composition, or a material or apparatus for use
in practicing a patented process, constituting a material part of
the invention, knowing the same to be especially made or especially
adapted for use in an infringement of such patent, and not a staple
article or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory infringer." 35
U. S. C. § 271 (1994 ed. and Supp. III).
633
§ 271, as well as contributed to and induced infringement.
College Savings sought declaratory and injunctive relief as well as
damages, attorney's fees, and costs.
After this Court decided
Seminole Tribe of Fla. v.
Florida, 517 U.
S. 44 (1996), Florida Prepaid moved to dismiss the action on
the grounds of sovereign immunity.3 Florida Prepaid argued that the
Patent Remedy Act was an unconstitutional attempt by Congress to
use its Article I powers to abrogate state sovereign immunity.
College Savings responded that Congress had properly exercised its
power pursuant to § 5 of the Fourteenth Amendment to enforce the
guarantees of the Due Process Clause in § 1 of the Amendment. The
United States intervened to defend the constitutionality of the
statute. Agreeing with College Savings, the District Court denied
Florida Prepaid's motion to dismiss, 948 F. Supp. 400 (N. J. 1996),
and the Federal Circuit affirmed,
148 F.3d
1343 (1998).
The Federal Circuit held that Congress had clearly expressed its
intent to abrogate the States' immunity from suit in federal court
for patent infringement, and that Congress had the power under § 5
of the Fourteenth Amendment to do so.
Id., at 1347. The
court reasoned that patents are property subject to the protections
of the Due Process Clause and that Congress' objective in enacting
the Patent Remedy Act was permissible because it sought to prevent
States from depriving patent owners of this property without due
process. See
id., at 1349-1350. The court rejected Florida
Prepaid's argument that it and other States had not deprived patent
owners of their property
without due process, and refused to
"deny Congress the authority to subject all states to suit for
patent infringement in the federal courts, regardless of the extent
of procedural due process that may exist at any particular time."
Id., at 1351. Fi-
3 The District Court concluded that, for purposes of immunity
from suit, Florida Prepaid is an arm of the State of Florida, a
conclusion the parties did not dispute before either the Federal
Circuit or this Court.
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nally, the court held that the Patent Remedy Act was a
proportionate response to state infringement and an appropriate
measure to protect patent owners' property under this Court's
decision in
City of Boerne, 521 U. S., at 519. The court
concluded that significant harm results from state infringement of
patents, 148 F. 3d, at 1353-1354, and "[t]here is no sound reason
to hold that Congress cannot subject a state to the same civil
consequences that face a private party infringer,"
id., at
1355. We granted certiorari, 525 U. S. 1064 (1999), and now
reverse.
II
The Eleventh Amendment provides:
"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."
As the Court recently explained in
Seminole Tribe, supra,
at 54:
"Although the text of the Amendment would appear to restrict
only the Article III diversity jurisdiction of the federal courts,
'we have understood the Eleventh Amendment to stand not so much for
what it says, but for the presupposition ... which it confirms.'
That presupposition, first observed over a century ago in
Hans v. Louisiana, 134 U. S. 1 (1890), has two
parts: first, that each State is a sovereign entity in our federal
system; and second, that' "[i]t is inherent in the nature of
sovereignty not to be amenable to the suit of an individual without
its consent.'" Id., at 13 (emphasis deleted), quoting The
Federalist No. 81 .... For over a century we have reaffirmed that
federal jurisdiction over suits against unconsenting States 'was
not contemplated by
635
the Constitution when establishing the judicial power of the
United States.' Hans, supra, at 15."
Here, College Savings sued the State of Florida in federal
court, and it is undisputed that Florida has not expressly
consented to suit. College Savings and the United States argue that
Florida has impliedly waived its immunity under
Parden v.
Terminal R. Co. of Ala. Docks Dept., 377 U. S. 184 (1964).
That argument, however, is foreclosed by our decision in the
companion case overruling the constructive waiver theory announced
in
Parden. See
College Savings Bank v.
Florida
Prepaid Postsecondary Ed. Expense Bd., post, p. 666.
College Savings and the United States nonetheless contend that
Congress' enactment of the Patent Remedy Act validly abrogated the
States' sovereign immunity. To determine the merits of this
proposition, we must answer two questions: "first, whether Congress
has 'unequivocally expresse[d] its intent to abrogate the
immunity,' ... and second, whether Congress has acted 'pursuant to
a valid exercise of power.'"
Seminole Tribe, supra, at 55.
We agree with the parties and the Federal Circuit that in enacting
the Patent Remedy Act, Congress has made its intention to abrogate
the States' immunity" 'unmistakably clear in the language of the
statute.'"
Dellmuth v.
Muth, 491 U. S. 223, 228
(1989). Indeed, Congress' intent to abrogate could not have been
any clearer. See 35 U. S. C. § 296(a) ("Any State ... shall not be
immune, under the eleventh amendment of the Constitution of the
United States or under any other doctrine of sovereign immunity,
from suit in Federal court ... for infringement of a patent").
Whether Congress had the power to compel States to surrender
their sovereign immunity for these purposes, however, is another
matter. Congress justified the Patent Remedy Act under three
sources of constitutional authority: the Patent Clause, Art. I, §
8, cl. 8; the Interstate Commerce Clause, Art. I, § 8, cl. 3; and §
5 of the Fourteenth Amend-
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ment. See S. Rep., at 7-8; H. R. Rep., at 39-40.4 In
Seminole
Tribe, of course, this Court overruled the plurality opinion in
Pennsylvania v.
Union Gas Co., 491 U. S. 1 (1989), our
only prior case finding congressional authority to abrogate state
sovereign immunity pursuant to an Article I power (the Commerce
Clause). 517 U. S., at 72-73.
Seminole Tribe makes clear
that Congress may not abrogate state sovereign immunity pursuant to
its Article I powers; hence the Patent Remedy Act cannot be
sustained under either the Commerce Clause or the Patent Clause.
Ibid. The Federal Circuit recognized this, and College
Savings and the United States do not contend otherwise.
Instead, College Savings and the United States argue that the
Federal Circuit properly concluded that Congress enacted the Patent
Remedy Act to secure the Fourteenth Amendment's protections against
deprivations of property without due process of law. The Fourteenth
Amendment provides in relevant part:
"Section 1. ... No State shall ... deprive any person of life,
liberty, or property, without due process of law.
"Section 5. The Congress shall have power to enforce, by
appropriate legislation, the provisions of this article."
While reaffirming the view that state sovereign immunity does
not yield to Congress' Article I powers, this Court in
4 The Patent Clause provides that "Congress shall have Power ...
[t]o promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to
their respective Writings and Discoveries." Art. I, § 8, cl. 8. The
Commerce Clause provides that "Congress shall have Power ... [t]o
regulate Commerce with foreign Nations, and among the Several
States, and with the Indian Tribes." Art. I, § 8, cl. 3. The
relevant portions of the Fourteenth Amendment are discussed
below.
637
Seminole Tribe also reaffirmed its holding in
Fitzpatrick v.
Bitzer, 427 U. S. 445 (1976),
that Congress retains the authority to abrogate state sovereign
immunity pursuant to the Fourteenth Amendment. Our opinion
explained that in
Fitzpatrick, "we recognized that the
Fourteenth Amendment, by expanding federal power at the expense of
state autonomy, had fundamentally altered the balance of state and
federal power struck by the Constitution."
Seminole Tribe,
supra, at 59. The Court further described
Fitzpatrick as
holding that "through the Fourteenth Amendment, federal power
extended to intrude upon the province of the Eleventh Amendment and
therefore that § 5 of the Fourteenth Amendment allowed Congress to
abrogate the immunity from suit guaranteed by that Amendment."
Seminole Tribe, supra, at 59.
College Savings and the United States are correct in suggesting
that "appropriate" legislation pursuant to the Enforcement Clause
of the Fourteenth Amendment could abrogate state sovereignty.
Congress itself apparently thought the Patent Remedy Act could be
so justified:
"[T]he bill is justified as an acceptable method of enforcing
the provisions of the fourteenth amendment. The Court in
Lemelson v. Ampex Corp.[, 372 F. Supp. 708 (ND Ill.
1974),] recognized that a patent is a form of property, holding
that a right to compensation exists for patent infringement.
Additionally, because courts have continually recognized patent
rights as property, the fourteenth amendment prohibits a State from
depriving a person of property without due process of law." S.
Rep., at 8 (footnotes omitted).
We have held that "[t]he 'provisions of this article,' to which
§ 5 refers, include the Due Process Clause of the Fourteenth
Amendment."
City of Boerne v.
Flores, 521 U. S., at
519.
But the legislation must nonetheless be "appropriate" under § 5
as that term was construed in
City of Boerne.
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There, this Court held that the Religious Freedom Restoration
Act of 1993 (RFRA), 107 Stat. 1488, 42 U. S. C. § 2000bb
et
seq., exceeded Congress' authority under § 5 of the Fourteenth
Amendment, insofar as RFRA was made applicable to the States. RFRA
was enacted "in direct response to" this Court's decision in
Employment Div., Dept. of Human Resources of Ore. v.
Smith, 494 U.
S. 872 (1990), which construed the Free Exercise Clause of the
First Amendment to hold that "neutral, generally applicable laws
may be applied to religious practices even when not supported by a
compelling governmental interest."
City of Boerne, supra, at
512, 514. Through RFRA, Congress reinstated the compelling
governmental interest test eschewed by
Smith by requiring
that a generally applicable law placing a "substantial burden" on
the free exercise of religion must be justified by a "compelling
governmental interest" and must employ the "least restrictive
means" of furthering that interest. 521 U. S., at 515-516.
In holding that RFRA could not be justified as "appropriate"
enforcement legislation under § 5, the Court emphasized that
Congress' enforcement power is "remedial" in nature.
Id., at
519. We recognized that "[l]egislation which deters or remedies
constitutional violations can fall within the sweep of Congress'
enforcement power even if in the process it prohibits conduct which
is not itself unconstitutional and intrudes into 'legislative
spheres of autonomy previously reserved to the States.'"
Id., at 518 (citation omitted). We also noted, however,
that" '[a]s broad as the congressional enforcement power is, it is
not unlimited,'"
ibid., and held that "Congress does not
enforce a constitutional right by changing what the right is. It
has been given the power 'to enforce,' not the power to determine
what constitutes a constitutional violation,"
id., at 519.
Canvassing the history of the Fourteenth Amendment and
639
case law examining the propriety of Congress' various voting
rights measures,5 the Court explained:
"While the line between measures that remedy or prevent
unconstitutional actions and measures that make a substantive
change in the governing law is not easy to discern, and Congress
must have wide latitude in determining where it lies, the
distinction exists and must be observed. There must be a congruence
and proportionality between the injury to be prevented or remedied
and the means adopted to that end. Lacking such a connection,
legislation may become substantive in operation and effect."
Id., at 519-520.
We thus held that for Congress to invoke § 5, it must identify
conduct transgressing the Fourteenth Amendment's substantive
provisions, and must tailor its legislative scheme to remedying or
preventing such conduct.
RFRA failed to meet this test because there was little support
in the record for the concerns that supposedly animated the law.
Id., at 530-531. And, unlike the measures in the voting
rights cases, RFRA's provisions were "so out of proportion to a
supposed remedial or preventive object" that RFRA could not be
understood "as responsive to, or designed to prevent,
unconstitutional behavior."
Id., at 532; see also
id., at 534 ("Simply put, RFRA is not designed to identify
and counteract state laws likely to be unconstitutional").
Can the Patent Remedy Act be viewed as remedial or preventive
legislation aimed at securing the protections of the Fourteenth
Amendment for patent owners? Following
City of
Boerne, we must first identify the Fourteenth Amendment "evil"
or "wrong" that Congress intended to remedy, guided
5 See
South Carolina v.
Katzenbach, 383 U. S. 301 (1966);
Katzenbach v.
Morgan, 384 U. S. 641 (1966);
Oregon v.
Mitchell, 400 U. S. 112 (1970);
City of Rome v.
United States, 446 U. S. 156 (1980).
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by the principle that the propriety of any § 5 legislation "
'must be judged with reference to the historical experience ... it
reflects.'"
Id., at 525. The underlying conduct at issue
here is state infringement of patents and the use of sovereign
immunity to deny patent owners compensation for the invasion of
their patent rights. See H. R. Rep., at 3738 ("[P]atent owners are
effectively denied a remedy for damages resulting from infringement
by a State or State entity"); S. Rep., at 6 ("[P]laintiffs in
patent infringement cases against a State are foreclosed from
damages, regardless of the State conduct"). It is this conduct
then-unremedied patent infringement by the States-that must give
rise to the Fourteenth Amendment violation that Congress sought to
redress in the Patent Remedy Act.
In enacting the Patent Remedy Act, however, Congress identified
no pattern of patent infringement by the States, let alone a
pattern of constitutional violations. Unlike the undisputed record
of racial discrimination confronting Congress in the voting rights
cases, see
City of Boerne, supra, at 525-527,
Congress came up with little evidence of infringing conduct on the
part of the States. The House Report acknowledged that "many states
comply with patent law" and could provide only two examples of
patent infringement suits against the States. See H. R. Rep., at
38. The Federal Circuit in its opinion identified only eight
patent-infringement suits prosecuted against the States in the 110
years between 1880 and 1990. See 148 F. 3d, at 1353-1354.
Testimony before the House Subcommittee in favor of the bill
acknowledged that "states are willing and able to respect patent
rights. The fact that there are so few reported cases involving
patent infringement claims against states underlies the point."
Patent Remedy Clarification Act:
Hearing on H. R. 3886 before the Subcommittee on Courts,
Intellectual Property, and the Administration of Justice of the
House Committee on the Judiciary, 101st Cong., 2d Sess., 56 (1990)
(hereinafter House Hearings) (statement of William
641
S. Thompson);
id., at 32 (statement of Robert Merges)
("[S]tates do occasionally find themselves in patent infringement
suits"). Even the bill's sponsor conceded that "[w]e do not have
any evidence of massive or widespread violation of patent laws by
the States either with or without this State immunity."
Id.,
at 22 (statement of Rep. Kastenmeier).6 The Senate Report, as well,
contains no evidence that unremedied patent infringement by States
had become a problem of national import. At most, Congress heard
testimony that patent infringement by States might increase in the
future, see House Hearings 22 (statement of Jeffrey Samuels);
id., at 36-37 (statement of Robert Merges);
id., at
57 (statement of William Thompson), and acted to head off this
speculative harm. See H. R. Rep., at 38.
College Savings argues that by infringing a patent and then
pleading immunity to an infringement suit, a State not only
infringes the patent, but deprives the patentee of property without
due process of law and "takes" the property in the patent without
paying the just compensation required
6 Representative Kastenmeier made this statement in the course
of questioning Jeffrey M. Samuels, Acting Commissioner of Patents
and Trademarks, U. S. Department of Commerce. The discussion
continued:
"Mr. KASTENMEIER ....
"Accordingly, could one argue that this legislation may be
premature.
We really do not know whether it will have any affect
[sic] or not.
"Mr. SAMUELS. Well, you are right, Mr. Chairman. There have not
been many cases that have raised this issue. I guess our feeling is
that it is a step that should be taken now because the possibility
exists in light of
Atascadero and in light of the
Chew case that more States will get involved in infringing
patents.
"I guess as a general policy statement, we believe that those
engagedthose who do engage in patent infringement should be subject
to all the remedies that are set forth in the Patent Act and that
the rights of a patent owner should not be dependent upon the
identity of the entity who is infringing, whether it be a private
individual, or corporation, or State.
"So just as a general philosophical matter, we believe that this
law needs to be passed."
642
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by the Fifth Amendment.7 The United States declines to defend
the Act as based on the Just Compensation Clause, but joins in
College Savings' defense of the Act as designed to prevent a State
from depriving a patentee of property without due process of law.
Florida Prepaid contends that Congress may not invoke § 5 to
protect property interests that it has created in the first place
under Article 1. Patents, however, have long been considered a
species of property. See
Brown v.
Duchesne, 19 How.
183, 197 (1857) ("For, by the laws of the United States, the rights
of a party under a patent are his private property"); cf.,
Consolidated Fruit-Jar Co. v.
Wright, 94 U. S. 92, 96 (1877) ("A
patent for an invention is as much property as a patent for land").
As such, they are surely included within the "property" of which no
person may be deprived by a State without due process of law. And
if the Due Process Clause protects patents, we know of no reason
why Congress might not legislate against their deprivation without
due process under § 5 of the Fourteenth Amendment.
Though patents may be considered "property" for purposes of our
analysis, the legislative record still provides little support for
the proposition that Congress sought to remedy a Fourteenth
Amendment violation in enacting the Patent Remedy Act. The Due
Process Clause provides, "nor shall any State deprive any person of
life, liberty, or property,
without due process of law." U.
S. Const., Arndt. 14, § 1 (emphasis added). This Court has
accordingly held that "[i]n procedural due process claims, the
deprivation by
7 There is no suggestion in the language of the statute itself,
or in the House or Senate Reports of the bill which became the
statute, that Congress had in mind the Just Compensation Clause of
the Fifth Amendment. Since Congress was so explicit about invoking
its authority under Article I and its authority to prevent a State
from depriving a person of property without due process of law
under the Fourteenth Amendment, we think this omission precludes
consideration of the Just Compensation Clause as a basis for the
Patent Remedy Act.
643
state action of a constitutionally protected interest .. is not
in itself unconstitutional; what is unconstitutional is the
deprivation of such an interest without due process of law."
Zinermon v.
Burch, 494 U. S. 113, 125 (1990)
(emphasis deleted).
Thus, under the plain terms of the Clause and the clear import
of our precedent, a State's infringement of a patent, though
interfering with a patent owner's right to exclude others, does not
by itself violate the Constitution. Instead, only where the State
provides no remedy, or only inadequate remedies, to injured patent
owners for its infringement of their patent could a deprivation of
property without due process result. See
Parratt v.
Taylor, 451 U.
S. 527, 539541 (1981);
Hudson v.
Palmer, 468 U. S. 517, 532-533
(1984);
id., at 539 (O'CONNOR, J., concurring) ("[I]n
challenging a property deprivation, the claimant must either avail
himself of the remedies guaranteed by state law or prove that the
available remedies are inadequate ... When adequate remedies are
provided and followed, no ... deprivation of property without due
process can result").
Congress, however, barely considered the availability of state
remedies for patent infringement and hence whether the States'
conduct might have amounted to a constitutional violation under the
Fourteenth Amendment. It did hear a limited amount of testimony to
the effect that the remedies available in some States were
uncertain.8
8 See,
e. g., House Hearings 33 (statement of
Robert Merges) ("Thus a patentee ... would apparently have to draft
her cause of action as a general tort claim-or perhaps one for
restitution-to come within the statute. This might be impossible,
or at least difficult under California law");
id., at 43
("[I]t is true that you may have State remedies, alternative State
remedies .... You could bring a deceit suit. You could try just a
general unfair competition suit. A restitution is one that has
occurred to me as a possible basis of recovery");
id., at 34
("Another problem with this approach is that it assumes that such
state law remedies will be available in every state in which the
patentee's product is sold. This mayor may not be true");
id., at 47 (statement of William Thompson) ("In this
case
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The primary point made by these witnesses, however, was not that
state remedies were constitutionally inadequate, but rather that
they were less convenient than federal remedies, and might
undermine the uniformity of patent law. See,
e. g.,
House Hearings 43 (statement of Robert Merges) ("[U]niformity again
dictates that that sovereign immunity is a mistake in this field
because of the variance among the State's laws"),
id., at
34, 41 (Merges);
id., at 58 (statement of William
Thompson).9
Congress itself said nothing about the existence or adequacy of
state remedies in the statute or in the Senate Report, and made
only a few fleeting references to state remedies in the House
Report, essentially repeating the testimony of the witnesses. See
H. R. Rep., at 37, n. 158 ("[T]he availability of a State remedy is
tenuous and could vary significantly State to State");
id.,
at 38 ("[I]f patentees turn to the State courts for alternative
forms of relief from patent infringement, the result will be a
patchwork of State laws, actually undermining the goal of national
uniformity in
there is no balance, since there are no-or at least there are
not very effective patent remedies at the State level");
id., at 57 ("The court in
Lane [v.
First Nat. Bank
of Boston, 687 F. Supp. 11 (Mass. 1988),] pointed out that the
appellant may be able to obtain money damages by recourse to the
Massachusetts tort claims act or sue the state for deceit,
conversion, or unfair competition under Massachusetts law. The
court also noted a Massachusetts statute which provides that
damages may be recovered from the state when private property is
confiscated for a public purpose. While many states may have
similar statutes, the courts' surmise that intellectual property
infringement cases may be pursued in some state courts offer us
little comfort");
id., at 60 ("[I]t sounds to me like it is
a very difficult area to predict what would happen. There is a rich
variety of potential causes of action, as the prior speaker
[Merges] pointed out").
9 It is worth mentioning that the State of Florida provides
remedies to patent owners for alleged infringement on the part of
the State. Aggrieved parties may pursue a legislative remedy
through a claims bill for payment in full, Fla. Stat. § 11.065
(1997), or a judicial remedy through a takings or conversion claim,
see
Jacobs Wind Electric Co. v.
Florida Dept. of
Transp., 626 So. 2d 1333 (Fla. 1993).
645
our patent system"). The need for uniformity in the construction
of patent law is undoubtedly important, but that is a factor which
belongs to the Article I patent-power calculus, rather than to any
determination of whether a state plea of sovereign immunity
deprives a patentee of property without due process of law.
We have also said that a state actor's negligent act that causes
unintended injury to a person's property does not "deprive" that
person of property within the meaning of the Due Process Clause.
See
Daniels v.
Williams, 474 U. S. 327, 328
(1986). Actions predicated on direct patent infringement, however,
do not require any showing of intent to infringe; instead,
knowledge and intent are considered only with respect to damages.
See 35 U. S. C. § 271(a) (1994 ed., Supp. III); 5 D. Chisum,
Patents § 16.02[2], p. 16-31 (rev. ed. 1998) (" 'It is, of course,
elementary, that an infringement may be entirely inadvertent and
unintentional and without knowledge of the patent' "). Congress did
not focus on instances of intentional or reckless infringement on
the part of the States. Indeed, the evidence before Congress
suggested that most state infringement was innocent or at worst
negligent. See S. Rep., at 10 (" 'It is not always clear that with
all the products that [government] buy[s], that anyone is really
aware of the patent status of any particular invention or device or
product' "); H. R. Rep., at 39 ("[I]t should be very rare for a
court to find ... willful infringement on the part of a State or
State agency"). Such negligent conduct, however, does not violate
the Due Process Clause of the Fourteenth Amendment.
The legislative record thus suggests that the Patent Remedy Act
does not respond to a history of "widespread and persisting
deprivation of constitutional rights" of the sort Congress has
faced in enacting proper prophylactic § 5 legislation.
City of
Boerne, 521 U. S., at 526. Instead, Congress appears to have
enacted this legislation in response to a handful of instances of
state patent infringement that do not
646
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necessarily violate the Constitution. Though the lack of support
in the legislative record is not determinative, see
id., at
531, identifying the targeted constitutional wrong or evil is still
a critical part of our § 5 calculus because "[s]trong measures
appropriate to address one harm may be an unwarranted response to
another, lesser one,"
id., at 530. Here, the record at best
offers scant support for Congress' conclusion that States were
depriving patent owners of property without due process of law by
pleading sovereign immunity in federal-court patent actions.
Because of this lack, the provisions of the Patent Remedy Act
are "so out of proportion to a supposed remedial or preventive
object that [they] cannot be understood as responsive to, or
designed to prevent, unconstitutional behavior."
I d., at
532. An unlimited range of state conduct would expose a State to
claims of direct, induced, or contributory patent infringement, and
the House Report itself cited testimony acknowledging "'it[']s
difficult for us to identify a patented product or process which
might not be used by a state.'" H. R. Rep., at 38.10 Despite
subjecting States to this expansive liability, Congress did nothing
to limit the coverage of the Act to cases involving arguable
constitutional violations, such as where a State refuses to offer
any
10 The relevant testimony stated in full:
"The comments regarding copyright centered on substantial use of
copyrighted textbooks by state universities as well as state use of
copyrighted music and computer software. State use of patented
products is more diverse and more substantial. Patented inventions
are involved in all manner of commonly used machines, tools,
instruments, chemicals, compounds, materials, and devices of all
description and purpose. Furthermore, patented processes are
commonplace. States and state instrumentalities own and operate
hospitals, universities, prisons, and libraries. States build and
maintain roads. States provide facilities and equipment for large
numbers of employees who perform all manner of state supported
activities. It[']s difficult for us to identify a patented product
or process which might not be used by a state." House Hearings 55
(statement of William Thompson).
647
state-court remedy for patent owners whose patents it had
infringed. Nor did it make any attempt to confine the reach of the
Act by limiting the remedy to certain types of infringement, such
as nonnegligent infringement or infringement authorized pursuant to
state policy; or providing for suits only against States with
questionable remedies or a high incidence of infringement.
Instead, Congress made all States immediately amenable to suit
in federal court for all kinds of possible patent infringement and
for an indefinite duration. Our opinion in
City of
Boerne discussed with approval the various limits that Congress
imposed in its voting rights measures, see 521 U. S., at 532-533,
and noted that where "a congressional enactment pervasively
prohibits constitutional state action in an effort to remedy or to
prevent unconstitutional state action, limitations of this kind
tend to ensure Congress' means are proportionate to ends legitimate
under § 5,"
id., at 533. The Patent Remedy Act's
indiscriminate scope offends this principle, and is particularly
incongruous in light of the scant support for the predicate
unconstitutional conduct that Congress intended to remedy. In sum,
it simply cannot be said that "many of [the acts of infringement]
affected by the congressional enactment have a significant
likelihood of being unconstitutional."
Id., at 532.
The historical record and the scope of coverage therefore make
it clear that the Patent Remedy Act cannot be sustained under § 5
of the Fourteenth Amendment. The examples of States avoiding
liability for patent infringement by pleading sovereign immunity in
a federal-court patent action are scarce enough, but any plausible
argument that such action on the part of the State deprived
patentees of property and left them without a remedy under state
law is scarcer still. The statute's apparent and more basic aims
were to provide a uniform remedy for patent infringement and to
place States on the same footing as private parties under
648
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that regime.ll These are proper Article I concerns, but that
Article does not give Congress the power to enact such legislation
after
Seminole Tribe.
The judgment of the Court of Appeals is reversed, and the case
is remanded for proceedings consistent with this
opinion.
It is so ordered.
JUSTICE STEVENS, with whom JUSTICE SOUTER, JUSTICE GINSBURG, and
JUSTICE BREYER join, dissenting.
The Constitution vests Congress with plenary authority over
patents and copyrights. U. S. Const., Art. I, § 8, cl. 8. Nearly
200 years ago, Congress provided for exclusive jurisdiction of
patent infringement litigation in the federal courts.1 See
Campbell v.
Haverhill, 155 U. S. 610, 620
11 See 35 U. S. C. § 271 (h) (stating that States and state
entities "shall be subject to the provisions of this title in the
same manner and to the same extent as any nongovernmental entity");
see also H. R. Rep., at 40 ("The Committee believes that the full
panoply of remedies provided in the patent law should be available
to patentees whose legitimate rights have been infringed by States
or State entities"); S. Rep., at 14. Thus, contrary to the
dissent's intimation, see
post, at 663 (opinion of STEVENS,
J.), the Patent Remedy Act does not put States in the same position
as the United States. Under the Patent Remedy Act, States are
subject to all the remedies available to plaintiffs in infringement
actions, which include punitive damages and attorney's fees, see 35
U. S. C. §§284, 285, as well as injunctive relief, see § 283. In
waiving its own immunity from patent infringement actions in 28 U.
S. C. § 1498(a) (1994 ed. and Supp. III), however, the United
States did not consent to either treble damages or injunctive
relief, and allowed reasonable attorney's fees only in a narrow
class of specified instances.
1 See Act of Apr. 17, 1800, ch. 25,2 Stat. 37; Act of Feb. 19,
1819, ch. 19, 3 Stat. 481. There is some dispute about whether
federal jurisdiction over patent cases became exclusive in 1800 or
in 1836. See 7 D. Chisum, Patents § 20.02[1][a], n. 9 (1998). In
any event, 28 U. S. C. § 1338(a) now provides: "The district courts
shall have original jurisdiction of any civil action arising under
any Act of Congress relating to patents, plant variety protection,
copyrights and trade-marks. Such ju-
649
(1895). In 1992 Congress clarified that jurisdictional grant by
an amendment to the patent law that unambiguously authorizes patent
infringement actions against States, state instrumentalities, and
any officer or employee of a State acting in his official capacity.
Pub. L. 102-560, 106 Stat. 4230, 35 U. S. C. § 271(h). Given the
absence of effective state remedies for patent infringement by
States and the statutory pre-emption of such state remedies, the
1992 Patent and Plant Variety Protection Remedy Clarification Act
(Patent Remedy Act) was an appropriate exercise of Congress' power
under § 5 of the Fourteenth Amendment to prevent state deprivations
of property without due process of law.
This Court's recent decision in
City of Boerne v.
Flores, 521 U.
S. 507 (1997), amply supports congressional authority to enact
the Patent Remedy Act, whether one assumes that States seldom
infringe patents, see
ante, at 640-641, 645646, or that
patent infringements potentially permeate an "unlimited range of
state conduct," see
ante, at 646. Before discussing
City
of Boerne, however, I shall comment briefly on the principle
that undergirds all aspects of our patent system: national
uniformity.
I
In his commentaries on the Federal Constitution, Justice Story
said of the Patent and Copyright Clauses:
"It is beneficial to all parties, that the national government
should possess this power; to authors and inven-
risdiction shall be exclusive of the courts of the states in
patent, plant variety protection and copyright cases." The second
sentence of § 1338(a) (excluding the reference to plant variety
protection cases) has been worded in essentially the same way since
1878. See Rev. Stat. § 711 (1878). This Court has used various
criteria for determining when an action "arises under" the patent
law, see,
e. g., Dale Tile Mfg. Co. v.
Hyatt,
125 U. S. 46,
52-53 (1888), but it is well established that a patent infringement
claim is "the paradigm of an action 'arising under' the patent
laws." 8 Chisum, Patents § 21.02[1][b].
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tors, because, otherwise, they would be subjected to the varying
laws and systems of the different states on this subject, which
would impair, and might even destroy the value of their rights; to
the public, as it will promote the progress of science and the
useful arts, and admit the people at large, after a short interval,
to the full possession and enjoyment of all writings and inventions
without restraint." J. Story, Commentaries on the Constitution of
the United States § 502, p. 402 (R. Rotunda & J. Nowak eds.
1987).
James Madison said of the same Clause, "The utility of this
power will scarcely be questioned .... The States cannot separately
make effectual provision for either [copyrights or patents], and
most of them have anticipated the decision of this point, by laws
passed at the instance of Congress." The Federalist No. 43, p. 267
(H. Lodge ed. 1908) (J. Madison).
Sound reasons support both Congress' authority over patents and
its subsequent decision in 1800 to vest exclusive jurisdiction over
patent infringement litigation in the federal courts. The
substantive rules of law that are applied in patent infringement
cases are entirely federal. From the beginning, Congress has given
the patentee the right to bring an action for patent infringement.
§ 4, 1 Stat. 111. There is, accordingly, a strong federal interest
in an interpretation of the patent statutes that is both uniform
and faithful to the constitutional goals of stimulating invention
and rewarding the disclosure of novel and useful advances in
technology. See
Graham v.
John Deere Co. of Kansas City,
383 U. S. 1, 9 (1966). Federal interests are threatened, not
only by inadequate protection for patentees, but also when
overprotection may have an adverse impact on a competitive economy.
See
Bonito Boats, Inc. v.
Thunder Craft Boats, Inc.,
489 U. S. 141,
162-163 (1989). Therefore, consistency, uniformity, and familiarity
with the extensive and relevant body of patent jurisprudence are
matters of overriding significance in this area of the law.
651
Patent infringement litigation often raises difficult technical
issues that are unfamiliar to the average trial judge.2 That
consideration, as well as the divergence among the federal circuits
in their interpretation of patent issues, provided support for the
congressional decision in 1982 to consolidate appellate
jurisdiction of patent appeals in the Court of Appeals for the
Federal Circuit.3 Although that court has jurisdiction over all
appeals from federal trial courts in patent infringement cases, it
has no power to review state-court decisions on questions of patent
law. See 28 U. S. C. § 1295.
2 The Advisory Commission on Patent Law Reform recommended in
1992 that patent jurisdiction be restricted to a single district
court per circuit and that district courts designate and use judges
with special expertise in patent litigation. "With this increased
expertise, courts would be able to more effectively control
litigation proceedings, and ensure consistency in the application
of substantive patent law .... Of course, the restricted
jurisdictional provision would reduce the flexibility currently
available to parties to file actions pursuant to the general
jurisdictional authority. Yet patent practice is an essentially
national practice in the United States. The 'costs' in terms of
lost flexibility associated with this change would appear to be
relatively minor in comparison to the prospective benefits in
uniformity of practice." Advisory Commission on Patent Law Reform,
D. Comer et al., Report to the Secretary of Commerce 99 (Aug.
1992).
3 In its Report on the Federal Courts Improvement Act of 1982,
the House stated, "Patent litigation long has been identified as a
problem area, characterized by undue forum-shopping and unsettling
inconsistency in adjudications. Based on the evidence it compiled
during the course of thorough hearings on the subject, the
Commission on Revision of the Federal Court Appellate
System-created by Act of Congress-concluded that patent law is an
area in which the application of the law to the facts of a case
often produces different outcomes in different courtrooms in
substantially similar cases. As a result, some circuit courts are
regarded as 'pro-patent' and other 'anti-patent,' and much time and
money is expended in 'shopping' for a favorable venue. In a
Commission survey of practitioners, the patent bar reported that
uncertainty created by the lack of national law precedent was a
significant problem; the Commission found patent law to be an area
in which widespread forum-shopping was particularly acute." H. R.
Rep. No. 97-312, pp. 20-21 (1981) (footnotes omitted); see also S.
Rep. No. 97-275, p. 5 (1981).
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The reasons that motivated the creation of the Federal Circuit
would be undermined by any exception that allowed patent
infringement claims to be brought in state court.
Today the Court first acknowledges that the "need for uniformity
in the construction of patent law is undoubtedly important,"
ante, at 645, but then discounts its significance as merely
"a factor which belongs to the Article I patent-power calculus,
rather than to any determination of whether a state plea of
sovereign immunity deprives a patentee of property without due
process of law."
Ibid. But the "Article I patent-power
calculus" is directly relevant to this case because it establishes
the constitutionality of the congressional decision to vest
exclusive jurisdiction over patent infringement cases in the
federal courts. That basic decision was unquestionably appropriate.
It was equally appropriate for Congress to abrogate state sovereign
immunity in patent infringement cases in order to close a potential
loophole in the uniform federal scheme, which, if undermined, would
necessarily decrease the efficacy of the process afforded to patent
holders.
II
Our recent decision in
City of Boerne v.
Flores,
521 U. S. 507
(1997), sets out the general test for determining whether Congress
has enacted "appropriate" legislation pursuant to § 5 of the
Fourteenth Amendment. "There must be a congruence and
proportionality between the injury to be prevented or remedied and
the means adopted to that end."
I d., at 520. The first step
of the inquiry, then, is to determine what injury Congress sought
to prevent or remedy with the relevant legislation.
As the Court recognizes, Congress' authority under § 5 of the
Fourteenth Amendment extends to enforcing the Due Process Clause of
that Amendment.
Ante, at 637. Congress decided, and I agree,
that the Patent Remedy Act was a proper exercise of this power.
653
The Court acknowledges, as it must, that patents are property.
Ante, at 642; see also
Consolidated Fruit-Jar Co. v.
Wright, 94 U. S.
92, 96 (1877). Every valid patent "gives the patentee or his
assignee the 'exclusive right to make, use, and vend the invention
or discovery' for a limited period."
Transparent- Wrap Machine
Corp. v.
Stokes &
Smith Co., 329 U. S. 637,
643 (1947). The Court suggests, however, that a State's
infringement of a patent does not necessarily constitute a
"deprivation" within the meaning of the Due Process Clause, because
the infringement may be done negligently.
Ante, at 645.
As part of its attempt to stem the tide of prisoner litigation,
and to avoid making "the Fourteenth Amendment a font of tort law to
be superimposed upon whatever systems may already be administered
by the States,"
Daniels v.
Williams, 474 U. S. 327, 332-334
(1986), this Court has drawn a constitutional distinction between
negligent and intentional misconduct. Injuries caused by the mere
negligence of state prison officials-in leaving a pillow on the
stairs of the jail, for example-do not "deprive" anyone of liberty
or property within the meaning of the Due Process Clause of that
Amendment.
Ibid. On the other hand, willful misconduct, and
perhaps "recklessness or gross negligence," may give rise to such a
deprivation.
Id., at 334.
While I disagree with the Court's assumption that this standard
necessarily applies to deprivations of patent rights, the
Daniels line of cases has only marginal relevance to this
case: Respondent College Savings Bank has alleged that petitioner's
infringement was willfu1.4 The question presented by this case,
then, is whether the Patent Remedy Act,
4 Paragraph 7 of College Savings' complaint alleges that"
'[d]efendant Florida Prepaid with actual knowledge of the '055
patent, with knowledge of its infringement, and without lawful
justification, has willfully infringed the '055 patent.''' App. to
Pet. for Cert. 30a.
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which clarified Congress' intent to subject state infringers to
suit in federal court, may be applied to willful infringement.5
As I read the Court's opinion, its negative answer to that
question has nothing to do with the facts of this case. Instead, it
relies entirely on perceived deficiencies in the evidence reviewed
by Congress before it enacted the clarifying amendment. "In
enacting the Patent Remedy Act ... Congress identified no pattern
of patent infringement by the States, let alone a pattern of
constitutional violations."
Ante, at 640.
It is quite unfair for the Court to strike down Congress' Act
based on an absence of findings supporting a requirement this Court
had not yet articulated. The legislative history of the Patent
Remedy Act makes it abundantly clear that Congress was attempting
to hurdle the then-mostrecent barrier this Court had erected in the
Eleventh Amendment course-the "clear statement" rule of
Atascadero State Hospital v.
Scanlon, 473 U. S. 234
(1985).6
5 As a practical matter, infringement actions based on mere
negligence rarely arise. Most patent infringers are put on notice
that their conduct may be actionable before an infringement suit is
filed. "The first step in enforcing a patent is usually to send a
cease-and-desist or charge-ofinfringement letter." Pokotilow &
Siegal, Cease and Desist Letters: The Legal Pitfalls for Patentees,
4 Intellectual Property Strategist, No.3,
6 The Chairman of the House Subcommittee considering the Patent
Remedy Act, Representative Kastenmeier, engaged in the following
dialogue with William Thompson, President of the American
Intellectual Property Law Association, about whether States were
definitively immune from suit under the Eleventh Amendment
following the Federal Circuit's recent decision in
Chew v.
California, 893 F.2d
331 (1990):
"Mr. KASTENMEIER. You mentioned that you do not see the
likelihood of further cases in this area since the
Atascadero and
Chew cases seem to be fairly
definitive on this question, unless there were in fact remedial
legislation. Do you anticipate that remedial legislation, such as
the bill before us, if passed into law, would be the subject of
litigation?
"Mr. THOMPSON. No, I think it would be very clear. Your
legislation is very clearly drawn. It seems to match the tests set
forth in
Atascadero
655
Nevertheless, Congress did hear testimony about inadequate state
remedies for patent infringement when considering the Patent Remedy
Act. The leading case referred to in the congressional hearing was
Chew v.
California, 893 F. 2d 331
(CA Fed.
1990). In fact,
Chew prompted Congress to consider the
legislation that became the Patent Remedy Act. See H. R. Rep. No.
101-960, pt. 1, p. 7, and n. 20 (1990). The Federal Circuit held in
that case that congressional intent to abrogate state sovereign
immunity under the patent laws was not "unmistakably clear," as
this Court had required in
Atascadero. Chew, 893 F. 2d, at
334.
The facts of
Chew clearly support both Congress' decision
and authority to enact the Patent Remedy Act. Marian Chew had
invented a method for testing automobile engine exhaust emissions
and secured a patent on her discovery. Her invention was primarily
used by States and other governmental entities. In 1987, Chew, an
Ohio resident, sued the State of California in federal court for
infringing her patent. California filed a motion to dismiss on
Eleventh Amendment grounds, which the District Court granted. The
Federal Circuit affirmed,
id., at 332, expressly stating
that the question whether Chew had a remedy under California law
"is a question not before us." Nevertheless, it implied that its
decision would have been the same even if Chew were left without
any remedy.
Id., at 336. During its hearing on the Patent
Remedy Act, Congress heard testimony about the
Chew case.
Professor Merges stated that Chew might not have been able to draft
her infringement suit as a tort claim. "This might be impossible,
oCr] at least
of making it very clear that the patent statute is one that
would qualify as an abrogation area
[sic] in the 11th
amendment.
"I can never guarantee exactly how attorneys are going to read
statutes, Mr. Chairman, but all of the sane ones would not bring an
action." Hearing before the Subcommittee on Courts, Intellectual
Property, and the Administration of Justice of the House Committee
on the Judiciary, 101st Cong., 2d Sess., 60 (1990) (House
Hearing).
656
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difficult, under California law. Consequently, relief under
[state statutes] may be not be a true alternative avenue of
recovery." House Hearing 33.7
Congress heard other general testimony that state remedies would
likely be insufficient to compensate inventors whose patents had
been infringed. The Acting Commissioner of Patents stated: "If
States and their instrumentalities were immune from suit in federal
court for patent infringement, patent holders would be forced to
pursue uncertain, perhaps even non-existent, remedies under State
law."
Id., at 15. The legislative record references several
cases of patent infringement involving States. See
Paperless
Accounting, Inc. v.
Mass Transit Administration, Civil
No. HAR 84-2922 (D. Md. 1985) (cited in House Hearing
56);
Hercules, Inc. v.
Minnesota State Highway Dept., 337 F.
Supp. 795 (Minn. 1972) (House Hearing 51);
Lemelson v.
Ampex Corp., 372 F. Supp. 708 (ND Ill. 1974) (same).
In addition, Congress found that state infringement of patents
was likely to increase. H. R. Rep. No. 101-960, pt. 1, at 38. The
Court's opinion today dismisses this rationale: "At most, Congress
heard testimony that patent infringement by States might increase
in the future and acted to head off this speculative harm."
Ante, at 641 (citations omitted). In fact, States and their
instrumentalities, especially state universities, have been
involved in many patent cases since 1992. See
Regents of Univ.
of Minn. v.
Glaxo Wellcome, Inc., 44 F. Supp. 2d 998
(Minn. 1999) (declaratory
7 Merges continued: "Another problem with this approach is that
it assumes that such state law remedies will be available in every
state in which the patentee's product is sold. This mayor may not
be true. In any event, requiring a potential plaintiff (patentee)
to ascertain the validity of her claims under the differing
substantive and procedural laws of the fifty states may well prove
a very substantial disincentive to the commencement of such suits.
Moreover, it would vitiate a major goal of the federal intellectual
property system: national uniformity. In short, these remedies are
simply no substitute for patent infringement actions."
Id.,
at 34.
657
judgment action filed by the University of Minnesota);
University of Colo. Foundation, Inc. v.
American
Cyanamid Co., 974 F. Supp. 1339 (Colo. 1997) (patent
infringement action filed by University of Colorado);
Gen-Probe,
Inc. v.
Amoco Corp., Inc., 926 F. Supp. 948 (SD Cal.
1996) (suit filed against various parties, alleging,
inter
alia, that Regents of the University of California induced
patent infringement by Amoco);
Genentech v.
Regents of
Univ. of Cal., 143 F.3d
1446 (CA Fed. 1998) (declaratory judgment suit filed by
Genentech);
Ciba-Geigy v.
Alza Corp., 804 F. Supp.
614 (NJ 1992) (counterclaim brought by Alza against Regents of the
University of California).
Furthermore, States and their instrumentalities are heavily
involved in the federal patent system.8 The United States Patent
and Trademark Office issued more than 2,000 patents to universities
(both public and private) in 1986 alone. Chakansky, Patent
Profiles, 13 Computer Law Strategist, No.9, p. 8 (1997). Royalty
earnings from licenses at United States universities totaled $273.5
million in 1995, a 12% increase over the prior year. 2 Eckstrom's
Licensing in Foreign and Domestic Operations § 11.06 (D. Epstein
ed. 1998). The State of Florida has obtained over 200 United States
patents since the beginning of 1995. Brief for New York
Intellectual Property Law Association as
Amicus Curiae 2.
All 50 States own or have obtained patents. Brief for United States
44.
It is true that, when considering the Patent Remedy Act,
Congress did not review the remedies available in each State for
patent infringements and surmise what kind of recovery
8 See generally Dueker, Biobusiness on Campus: Commercialization
of University-Developed Biomedical Technologies, 52 Food & Drug
L. J. 453 (1997); Bertha, Intellectual Property Activities in U. S.
Research Universities, 36 IDEA: J. L. & Tech. 513 (1996);
Eisenberg, Public Research and Private Development: Patents and
Technology Transfer in Government-Sponsored Research, 82 Va. L.
Rev. 1663 (1996).
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a plaintiff might obtain in a tort suit in all 50
jurisdictions.9 See
ante, at 643. But, it is particularly
ironic that the Court should view this fact as support for its
holding. Given that Congress had long ago pre-empted state
jurisdiction over patent infringement cases, it was surely
reasonable for Congress to assume that such remedies simply did not
exist.10 Furthermore, it is well known that not all States have
9 To the extent that a majority of this Court finds this factor
dispositive, there is hope that the Copyright Remedy Clarification
Act of 1990 may be considered "appropriate" § 5 legislation. The
legislative history of that Act includes many examples of copyright
infringements by States-especially state universities. See Hearings
on H. R. 1131 before the Subcommittee on Courts, Intellectual
Property, and the Administration of Justice of the House Committee
on the Judiciary, 101st Cong., 1st Sess., 93, 148 (1989); Hearing
on S. 497 before the Subcommittee on Patents, Copyrights, and
Trademarks of the Senate Committee on the Judiciary, 101st Cong.,
1st Sess., 148 (1989). Perhaps most importantly, the House
requested that the Register of Copyrights prepare a study, which he
described in his transmittal letter as, "a factual inquiry about
enforcement of copyright against state governments and about unfair
copyright licensing practices, if any, with respect to state
government use of copyrighted works. I have also prepared an
in-depth analysis of the current state of Eleventh Amendment law
and the decisions relating to copyright liability of states,
including an assessment of any constitutional limitations on
Congressional action. Finally, as you requested, the American Law
Division of the Congressional Research Service has conducted a 50
state survey of the statutes and case law concerning waiver of
state sovereign immunity." Register of Copyrights, R. Oman,
Copyright Liability of States and the Eleventh Amendment (June
1988) (transmittal letter). This report contains comments from
industry groups, statistics, and legal analysis relating to
copyright violations, actual and potential, by States. See
id., at 5, 12, 14, 93-95.
10 After the 1992 Act was passed, the Florida Supreme Court did
hold that a patentee might bring some sort of "takings" claim in a
state court, or might seek a legislative remedy. See
Jacobs Wind
Electric Co. v.
Florida Dept. of Transp., 626 So. 2d
1333 (1993). Given the unambiguous text of 28 U. S. C. § 1338,
there is (a) no reason why Congress could have anticipated that
decision, and (b) good reason to believe a well-motivated court may
have misinterpreted federal law. See
Jacobs Wind, 626 So.
2d, at 1337-1338 (Harding, J., dissenting).
659
waived their sovereign immunity from suit,l1 and among those
States that have, the contours of this waiver vary widely.12
Even if such remedies might be available in theory, it would
have been "appropriate" for Congress to conclude that they would
not guarantee patentees due process in infringement actions against
state defendants. State judges have never had the exposure to
patent litigation that federal judges have experienced for decades,
and, unlike infringement actions brought in federal district
courts, their decisions would not be reviewable in the Court of
Appeals for the Federal Circuit. Surely this Court would not
undertake the task of reviewing every state-court decision that
arguably misapplied patent law.13 And even if 28 U. S. C. § 1338 is
amended or construed to permit state courts to entertain
infringement actions when a State is named as a defendant, given
the Court's opinion in
Alden v.
Maine, it is by no
means clear that state courts could be required to hear these cases
at all.
Post, at 712.
11 See,
e. g., Ala. Code § 41-9-60 (1991) (claims
may only be brought administratively); W. Va. Const., Art. VI, § 35
("The State of West Virginia shall never be made a defendant in any
court oflaw or equity ... ").
12 See,
e. g., Colo. Rev. Stat. § 24-10-106 (1998)
(waiving immunity in tort claims only for injuries resulting from
operation of a motor vehicle, operation of a public hospital or a
correctional facility, the dangerous condition of a public
building, the dangerous condition of a public highway or road, a
dangerous condition caused by snow or ice, or from the operation of
any public utility facility); Minn. Stat. Ann. § 3.736 (Supp.
1998-1999) (waiver of immunity invalid when loss arises from state
employee who exercises due care or performance or failure to
perform discretionary duty); Md. Cts. & Jud. Proc. Code Ann. §
5-522(a)(5) (1998) (immunity not waived if a claim from a single
occurrence exceeds $100,000).
13 In the House Report advocating the creation of the Federal
Circuit, Congress noted, "The infrequency of Supreme Court review
of patent cases leaves the present judicial system without any
effective means of assuring even-handedness nationwide in the
administration of the patent laws." H. R. Rep. No. 97-312, at
22.
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660 FLORIDA PREPAID POSTSECONDARY ED. EXPENSE ED.
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Even if state courts elected to hear patent infringement cases
against state entities, the entire category of such cases would
raise questions of impartiality. This concern underlies both the
constitutional authorization of diversity jurisdiction and the
statutory provisions for removal of certain cases from state to
federal courts, 28 U. S. C. § 1441
et seq. The same concern
justified John Marshall's narrow construction of the Eleventh
Amendment in
Cohens v.
Virginia, 6 Wheat. 264 (1821).
As he there noted, when there is a conflict between a State's
interest and a federal right, it "would be hazarding too much to
assert, that the judicatures of the States will be exempt from the
prejudices by which the legislatures and people are influenced, and
will constitute perfectly impartial tribunals."
Id., at
386.
Finally, this Court has never mandated that Congress must find
"'widespread and persisting deprivation of constitutional rights,'"
ante, at 645, in order to employ its § 5 authority. It is
not surprising, therefore, that Congress did not compile an
extensive legislative record analyzing the due process (or lack
thereof) that each State might afford for a patent infringement
suit retooled as an action in tort. In 1992, Congress had no reason
to believe it needed to do such a thing; indeed, it should not have
to do so today.
III
In my view, Congress had sufficient evidence of due process
violations, whether actual or potential, to meet the requirement we
expressed in
City of Boerne that Congress can act under § 5
only to "remedy or prevent unconstitutional actions." See 521 U.
S., at 519. The Court's opinion today threatens to read Congress'
power to pass prophylactic legislation out of § 5 altogether; its
holding is unsupported by
City of Boerne and in fact
conflicts with our reasoning in that case.
In
City of Boerne we affirmed the well-settled principle
that the broad sweep of Congress' enforcement power en-
661
compasses legislation that deters or remedies constitutional
violations, even if it prohibits conduct that is not itself
unconstitutional, and even if it intrudes into spheres of autonomy
previously reserved to the States.
Id., at 518.
Nevertheless, we held that the enactment of the Religious Freedom
Restoration Act of 1993 (RFRA) was not an "appropriate" exercise of
Congress' enforcement power under § 5 of the Fourteenth Amendment.
I d., at 536.
By enacting RFRA Congress sought to change the meaning of the
Free Exercise Clause of the First Amendment as it had been
interpreted by this Court, rather than to remedy or to prevent
violations of the Clause as we had interpreted it. We held that
RFRA had crossed "the line between measures that remedy or prevent
unconstitutional actions and measures that make a substantive
change in the governing law."
Id., at 519-520. Congress' § 5
power is "corrective or preventive, not definitional."
Id.,
at 525. Our extensive review of the legislative history of RFRA
made it clear that the statute could not be fairly characterized as
a remedial measure, but rather was a legislative attempt "to
interpret and elaborate on the meaning" of the Free Exercise
Clause. By doing so, Congress had violated the principle that the
"power to interpret the Constitution in a case or controversy
remains in the Judiciary."
Id., at 524.
The difference between the harm targeted by RFRA and the harm
that motivated the enactment of the Patent Remedy Act is striking.
In RFRA Congress sought to overrule this Court's interpretation of
the First Amendment. The Patent Remedy Act, however, was passed to
prevent future violations of due process, based on the
substantiated fear that States would be unable or unwilling to
provide adequate remedies for their own violations of patent
holders' rights. Congress' "wide latitude" in determining remedial
or preventive measures, see
id., at 520, has suddenly become
very narrow indeed.
662
662 FLORIDA PREPAID POSTSECONDARY ED. EXPENSE ED.
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STEVENS, J., dissenting
City of Boerne also identified a "proportionality"
component to "appropriate" legislation under § 5. Our opinion
expressly recognized that "preventive rules are sometimes
appropriate" if there is
"a congruence between the means used and the ends to be
achieved. The appropriateness of remedial measures must be
considered in light of the evil presented. See South
Carolina v. Katzenbach, 383 U. S., at 308. Strong
measures appropriate to address one harm may be an unwarranted
response to another, lesser one. I d., at 334." Id.,
at 530.
In RFRA we found no such congruence, both because of the absence
of evidence of widespread violations that were in need of redress,
and because the sweeping coverage of the statute ensured "its
intrusion at every level of government, displacing laws and
prohibiting official actions of almost every description and
regardless of subject matter."
Id., at 532.
Again, the contrast between RFRA and the Act at issue in this
case could not be more stark. The sole purpose of this amendment is
to abrogate the States' sovereign immunity as a defense to a charge
of patent infringement. It has no impact whatsoever on any
substantive rule of state law, but merely effectuates settled
federal policy to confine patent infringement litigation to federal
judges. There is precise congruence between "the means used"
(abrogation of sovereign immunity in this narrow category of cases)
and "the ends to be achieved" (elimination of the risk that the
defense of sovereign immunity will deprive some patentees of
property without due process of law).
That congruence is equally precise whether infringement of
patents by state actors is rare or frequent. If they are indeed
unusual, the statute will operate only in those rare cases. But if
such infringements are common, or should become common as state
activities in the commercial
663
arena increase, the impact of the statute will likewise expand
in precise harmony with the growth of the problem that Congress
anticipated and sought to prevent. In either event the statute will
have no impact on the States' enforcement of their own laws. None
of the concerns that underlay our decision in
City of
Boerne are even remotely implicated in this case.
The Patent Remedy Act merely puts States in the same position as
all private users of the patent system,14 and in virtually the same
posture as the United States.15 "When
14 As the Senate said in its Report on the Act, "the current
state of the law leaves the protection afforded to patent and
trademark holders dependant on the status of the infringing party.
A public school such as UCLA can sue a private school such as USC
for patent infringement, yet USC cannot sue UCLA for the same act."
S. Rep. No. 102-280, p. 9 (1992).
15 The majority's assertion that "the Patent Remedy Act does not
put States in the same position as the United States,"
ante,
at 648, n. 11, is misleading. In the case of private infringement
suits, treble damages are available only "where the infringer acted
in wanton disregard of the patentee's patent rights, that is, where
the infringement is willful."
Read Corp. v.
Portee,
Inc., 970 F.2d
816, 826
(CA Fed. 1992) (reversing the District Court's
award of enhanced damages). "On the other hand, a finding of
willful infringement does not mandate that damages be enhanced,
much less mandate treble damages."
Ibid. Attorney's fees are
available only in "exceptional" circumstances. 35 U. S. C. § 285.
Once it has determined that the case is "exceptional," the district
court has discretion whether or not to award attorney's fees and
the fees "must be reasonable."
Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d
1473, 1480
(CA Fed. 1998). In addition, attorney's fees
are available in limited circumstances in suits against the United
States.
Ante, at 648, n. 11.
The remaining differences between the United States' waiver of
sovereign immunity and the Patent Remedy Act are supported by
quintessentially federal concerns. This Court has found that "the
procurement of equipment by the United States is an area of
uniquely federal interest."
Boyle v.
United Technologies
Corp., 487 U. S.
500,507 (1988). Indeed, the importance of the federal interest
in military procurement led this Court to fashion the doctrine of
"Government contractors' immunity" without waiting for Congress to
consider the question.
Id., at 531 (STEVENS, J.,
dissenting). Injunctions are not available against the United
States be-
664
664 FLORIDA PREPAID POSTSECONDARY ED. EXPENSE BD.
v.
COLLEGE SAVINGS BANK
STEVENS, J., dissenting
Congress grants an exclusive right or monopoly, its effects are
pervasive; no citizen or State may escape its reach."
Goldstein v.
California, 412 U. S. 546, 560 (1973)
(analyzing Copyright Clause). Recognizing the injustice of
sovereign immunity in this context, the United States has waived
its immunity from suit for patent violations. In 1910, Congress
enacted a statute entitled, "An Act to provide additional
protection for owners of patents of the United States." Ch. 423, 36
Stat. 851. The Act provided that owners of patents infringed by the
United States "may recover reasonable compensation for such use by
suit in the Court of Claims." The United States has consistently
maintained this policy for the last 90 years. See 28 U. S. C. §
1498.
In my judgment, the 1992 Act is a paradigm of an appropriate
exercise of Congress' § 5 power.16
IV
For these reasons, I am convinced that the 1992 Act should be
upheld even if full respect is given to the Court's recent cases
cloaking the States with increasing protection from congressional
legislation. I do, however, note my continuing dissent from the
Court's aggressive sovereign immunity jurisprudence; today, this
Court once again demonstrates itself to be the champion of States'
rights. In this case, it seeks to guarantee rights the States
themselves did not express any particular desire in possessing:
during Congress' hearings on the Patent Remedy Act, although
invited to do so,
cause of the Federal Government's extensive investment in
patented military inventions. "[T]he right to enjoin the officer of
the United States ... virtually asserts the existence of a judicial
power to close every arsenal of the United States."
Crozier
v.
Krupp A. G., 224 U. S. 290, 302
(1912).
16 I am also persuaded that a State like Florida that has
invoked the benefits of the federal patent system should be deemed
to have waived any defense of sovereign immunity in patent
litigation. The reasoning in JUSTICE BREYER'S dissent in
College
Savings Bank v.
Florida Prepaid Postsecondary Ed. Expense
Bd., post, at 693-699, applies with special force to this
case.
665
the States chose not to testify in opposition to the abrogation
of their immunity.17
The statute that the Court invalidates today was only one of
several "clear statements" that Congress enacted in response to the
decision in
Atascadero State Hospital v.
Scanlon,
473 U. S. 234
(1985).18 In each of those clarifications Congress was fully
justified in assuming that it had ample authority to abrogate
sovereign immunity defenses to federal claims, an authority that
the Court squarely upheld in
Pennsylvania v.
Union Gas
Co., 491 U. S.
1 (1989). It was that
holding-not just the "plurality
opinion," see
ante, at 636-that was overruled in
Seminole
Tribe of Fla. v.
Florida, 517 U. S. 44 (1996). The
full reach of that case's dramatic expansion of the judge-made
doctrine of sovereign immunity is unpredictable; its dimensions are
defined only by the present majority's perception of constitutional
penumbras rather than constitutional text. See
id., at 54
(acknowledging" 'we have understood the Eleventh Amendment to stand
not so much for what it says'" (citation omitted)). Until this
expansive and judicially crafted protection of States' rights runs
its course, I shall continue to register my agreement with the
views expressed in the
Seminole dissents and in the
scholarly commentary on that case.
I respectfully dissent.
17H. R. Rep. No. 101-960, p. 7 (1990) ("The Subcommittee invited
State attorneys general and representatives of State universities
to testify, but none made themselves available for the
hearing").
18 See,
e. g., 42 U. S. C. § 12202 (Americans with
Disabilities Act of 1990); 11 u. S. C. § 106(a) (Bankruptcy Reform
Act of 1994); 29 U. S. C. §2617(a)(2) (Family and Medical Leave Act
of 1993); 15 U. S. C. § 1125(a) (Trademark Remedy Clarification
Act); 20 U. S. C. § 1403(a) (Individuals with Disabilities
Education Act); 17 U. S. C. § 511 (Copyright Remedy Clarification
Act).
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