527 u.s. 627 florida prepaid postsecondary v. college · pdf filedo not contend that their...

2199FLORIDA PREPAID POSTSECONDARY v. COLLEGE SAV.Cite as 119 S.Ct. 2199 (1999)

527 U.S. 627

tary of Health and Human Services (HHS) ]to commandeer state agencies TTT. [These]agencies are S 625not field offices of the HHSbureaucracy, and they may not be conscript-ed against their will as the foot soldiers in afederal crusade’’). The majority’s affirmativedefense will likely come as cold comfort tothe States that will now be forced to defendthemselves in federal court every time re-sources prevent the immediate placement ofa qualified individual. In keeping with ourtraditional deference in this area, see Alex-ander, supra, the appropriate course wouldbe to respect the States’ historical role as thedominant authority responsible for providingservices to individuals with disabilities.

The majority may remark that it actuallydoes properly compare members of differentgroups. Indeed, the majority mentions inpassing the ‘‘[d]issimilar treatment’’ of per-sons with and without disabilities. Ante, at2187. It does so in the context of supportingits conclusion that institutional isolation is aform of discrimination. It cites two cases asstanding for the unremarkable propositionthat discrimination leads to deleterious ster-eotyping, ibid. (citing Allen v. Wright, 468U.S. 737, 755, 104 S.Ct. 3315, 82 L.Ed.2d 556(1984); Manhart, 435 U.S., at 707, n. 13, 98S.Ct. 1370), and an amicus brief which indi-cates that confinement diminishes certain ev-eryday life activities, ante, at 2187 (citingBrief for American Psychiatric Association etal. as Amici Curiae 20–22). The majoritythen observes that persons without disabili-ties ‘‘can receive the services they need with-out’’ institutionalization and thereby avoidthese twin deleterious effects. Ante, at 2187.I do not quarrel with the two general propo-sitions, but I fail to see how they assist inresolving the issue before the Court. Fur-ther, the majority neither specifies what ser-vices persons with disabilities might need norcontends that persons without disabilitiesneed the same services as those with disabili-ties, leading to the inference that the dissimi-lar treatment the majority observes resultsmerely from the fact that different classes ofpersons receive different services—not from‘‘discrimination’’ as traditionally defined.

S 626Finally, it is also clear petitioners didnot ‘‘discriminate’’ against respondents ‘‘by

reason of [their] disabili[ties],’’ as § 12132requires. We have previously interpretedthe phrase ‘‘by reason of’’ as requiring proxi-mate causation. See, e.g., Holmes v. Securi-ties Investor Protection Corporation, 503U.S. 258, 265–266, 112 S.Ct. 1311, 117L.Ed.2d 532 (1992); see also id., at 266, n. 11,112 S.Ct. 1311 (citation of cases). Such aninterpretation is in keeping with the vernacu-lar understanding of the phrase. See Ameri-can Heritage Dictionary 1506 (3d ed.1992)(defining ‘‘by reason of’’ as ‘‘because of’’).This statute should be read as requiringproximate causation as well. Respondentsdo not contend that their disabilities consti-tuted the proximate cause for their exclusion.Nor could they—community placement sim-ply is not available to those without disabili-ties. Continued institutional treatment ofpersons who, though now deemed treatablein a community placement, must wait theirturn for placement does not establish thatthe denial of community placement occurred‘‘by reason of’’ their disability. Rather, itestablishes no more than the fact that peti-tioners have limited resources.

* * *

For the foregoing reasons, I respectfullydissent.

,

527 U.S. 627, 144 L.Ed.2d 575

S 627FLORIDA PREPAID POSTSECOND-ARY EDUCATION EXPENSE

BOARD, Petitioner,

v.

COLLEGE SAVINGS BANKand United States.

No. 98–531.Argued April 20, 1999.

Decided June 23, 1999.

Patentee brought action against stateagency, alleging infringement of patentedapparatus and method for administering col-lege investment program. The United States

2200 119 SUPREME COURT REPORTER 527 U.S. 627

intervened. The United States District Courtfor the District of New Jersey, Garrett E.Brown, Jr., J., denied agency’s motion todismiss for lack of subject matter jurisdic-tion, and agency appealed. The Court of Ap-peals for the Federal Circuit, 148 F.3d 1343,affirmed. Certiorari was granted. The Su-preme Court, Chief Justice Rehnquist, heldthat: (1) Congressional intent to abrogatestates’ immunity from patent infringementclaims was unmistakably clear in languageof Patent and Plant Variety Protection Rem-edy Clarification Act; (2) neither CommerceClause nor Patent Clause provided Congresswith authority to abrogate state sovereignimmunity in Act; and (3) FourteenthAmendment’s authorization for ‘‘appropriatelegislation’’ to protect against deprivations ofproperty without due process of law did notprovide Congress with authority to abrogatestate sovereign immunity in Act.

Judgment of the Court of Appeals re-versed and remanded.

Justice Stevens filed a dissenting opinionin which Justices Souter, Ginsburg, andBreyer joined.

1. Federal Courts O265Determination of whether Congress’ en-

actment of act validly abrogated states’ sov-ereign immunity requires consideration oftwo questions: first, whether Congress hasunequivocally expressed its intent to abro-gate immunity, and second, whether Con-gress has acted pursuant to a valid exerciseof power.

2. Federal Courts O265In enacting the Patent and Plant Variety

Protection Remedy Clarification Act, Con-gress made its intention to abrogate states’immunity from patent infringement claimsunmistakably clear in language of Act.U.S.C.A. Const.Amend. 11; 35 U.S.C.A.§§ 271(h), 296(a).

3. Federal Courts O265Neither Commerce Clause nor Patent

Clause provided Congress with authority toabrogate state sovereign immunity from pat-ent infringement claims in Patent and PlantVariety Protection Remedy Clarification Act.

U.S.C.A. Const. Art. 1, § 8, cls. 3, 8; Amend.11; 35 U.S.C.A. §§ 271(h), 296(a).

4. Constitutional Law O299.2 Federal Courts O265

Fourteenth Amendment’s authorizationfor ‘‘appropriate legislation’’ to protectagainst deprivations of property without dueprocess of law did not provide Congress withauthority to abrogate state sovereign immu-nity from claims of patent infringement inPatent and Plant Variety Protection RemedyClarification Act, absent identification of his-torical pattern of states infringing patentsand then providing inadequate remedies orpleading sovereign immunity from infringe-ment claims so as to deprive patentees’ ofproperty without due process of law, andabsent limits in Act to confine its scope toremedying acts of state infringement havingsignificant likelihood of being unconstitution-al. U.S.C.A. Const.Amend. 14, §§ 1, 5; 35U.S.C.A. §§ 271(h), 296(a).

See publication Words and Phrasesfor other judicial constructions and def-initions.

5. Constitutional Law O82(6.1)‘‘Appropriate legislation’’ pursuant to the

Enforcement Clause of the FourteenthAmendment can abrogate state sovereignty.U.S.C.A. Const.Amends. 11, 14, § 5.

6. Constitutional Law O82(6.1)Propriety of any legislation enacted un-

der authority of the Enforcement Clause ofthe Fourteenth Amendment must be judgedwith reference to the historical experience itreflects. U.S.C.A. Const.Amend. 14, § 5.

7. Constitutional Law O277(1)Patents are included within the ‘‘proper-

ty’’ of which no person may be deprived by aState without due process of law. U.S.C.A.Const.Amend. 14, § 1.

See publication Words and Phrasesfor other judicial constructions and def-initions.

8. Constitutional Law O278(1.3) Patents O280

State’s infringement of a patent, thoughinterfering with a patent owner’s right toexclude others, does not by itself violate the


527 U.S. 628

Constitution; only where the state providesno remedy, or only inadequate remedies, toinjured patent owners for its infringement oftheir patent could a deprivation of propertywithout due process result. U.S.C.A. Const.Amend. 14, § 1.

9. Patents O227Actions predicated on direct patent in-

fringement do not require any showing ofintent to infringe; instead, knowledge andintent are considered only with respect todamages. 35 U.S.C.A. § 271(a).

Syllabus *

After the Patent and Plant Variety Pro-tection Remedy Clarification Act (Act)amended the patent laws to expressly abro-gate the States’ sovereign immunity, respon-dent College Savings Bank filed a patentinfringement suit against petitioner FloridaPrepaid Postsecondary Education ExpensesBoard (Florida Prepaid), a Florida state enti-ty. When this Court decided Seminole Tribeof Fla. v. Florida, 517 U.S. 44, 116 S.Ct.1114, 134 L.Ed.2d 252, Florida Prepaidmoved to dismiss the action, claiming thatthe Act was an unconstitutional attempt byCongress to use its Article I powers to abro-gate state sovereign immunity. College Sav-ings countered that Congress had properlyexercised its power pursuant to § 5 of theFourteenth Amendment in order to enforcethe due process guarantees in § 1 of theAmendment. The United States intervenedto defend the statute’s constitutionality.Agreeing with College Savings, the DistrictCourt denied the motion, and the FederalCircuit affirmed.

Held: The Act’s abrogation of States’sovereign immunity is invalid because it can-not be sustained as legislation enacted toenforce the guarantees of the FourteenthAmendment’s Due Process Clause. Pp.2204–2211.

(a) Florida has not expressly consentedto suit, or impliedly waived its immunity, seeCollege Savings Bank v. Florida PrepaidPostsecondary Ed. Expense Bd., 527 U.S.

666, 119 S.Ct. 2219, 144 L.Ed.2d 605. Todetermine whether the Act nonetheless valid-ly abrogated that immunity, the Court mustask: first, whether Congress has ‘‘ ‘unequivo-cally expresse[d] its intent to abrogate,’ ’’ andsecond, whether Congress acted ‘‘ ‘pursuantto a valid exercise of power.’ ’’ SeminoleTribe, supra, at 55, 116 S.Ct. 1114. Con-gress clearly made known its intent to abro-gate in the Act. Whether it had the powerto do so is another matter. In SeminoleTribe, this Court held that Congress does nothave such power under Article I but reaf-firmed its holding in Fitzpatrick v. Bitzer,427 U.S. 445, 96 S.Ct. 2666, 49 L.Ed.2d 614,that Congress has such power under § 5 ofthe Fourteenth Amendment. Thus, legisla-tion that is ‘‘appropriate’’ under § 5, as thatterm was construed in City of Boerne v.Flores, 521 U.S. 507, 117 S.Ct. 2157, 138L.Ed.2d 624, could abrogate state sovereign-ty. Since Congress’ enforcement power isremedial, id., at 519, 117 S.Ct. 2157, to invoke§ 5, Congress S 628must identify conducttransgressing the Fourteenth Amendment’ssubstantive provisions, and must tailor itslegislative scheme to remedying or prevent-ing such conduct. Pp. 2204–2207.

(b) Here, the underlying conduct is un-remedied patent infringement by States.However, in enacting the Act, Congress iden-tified no pattern of such infringement, letalone a pattern of constitutional violations.The House Report provided only two exam-ples of patent infringement suits againstStates, and the Federal Circuit identifiedonly eight such suits in 110 years. Testimo-ny before the House Subcommittee acknowl-edged that States are willing and able torespect patent rights, and the Senate Reportcontains no evidence that unremedied patentinfringement by States had become a prob-lem of national import. Pp. 2207–2208.

(c) Although patents may be consideredproperty within the meaning of the Due Pro-cess Clause, the legislative record still pro-vides little support for the proposition thatCongress sought to remedy a FourteenthAmendment violation in enacting the Act.Under the plain terms of the Due Process

* The syllabus constitutes no part of the opinion ofthe Court but has been prepared by the Reporterof Decisions for the convenience of the reader.

See United States v. Detroit Timber & Lumber Co.,200 U.S. 321, 337, 26 S.Ct. 282, 50 L.Ed. 499.


Clause and the clear import of this Court’sprecedent, a State’s infringement of a patentviolates the Constitution only where theState provides no remedy, or only inadequateremedies, to injured patent owners for itsinfringement of their patent. Congress,however, barely considered the availability ofstate remedies for patent infringement. Theprimary point made by the limited testimonyon state remedies was not whether the reme-dies were constitutionally inadequate, butrather that they were less convenient thanfederal remedies and might undermine theuniformity of patent law. Congress itselfsaid nothing about the existence or adequacyof state remedies in the statute or the SenateReport. The need for uniformity in patentlaw construction, though undoubtedly impor-tant, is a factor belonging to the Article Ipatent-power calculus. Moreover, a state ac-tor’s negligent act causing unintended injuryto a person’s property does not ‘‘deprive’’that person of property within the meaningof the Due Process Clause, and the recordsuggests that state infringement of patentswas at worst innocent. The legislative rec-ord thus suggests that the Act does notrespond to a history of widespread and per-sisting deprivation of constitutional rights ofthe sort Congress has faced in enacting prop-er prophylactic § 5 legislation. Because ofthe lack of legislative support for Congress’conclusion, the Act’s provisions are so out ofproportion to the supposed remedy or pre-ventive object that they cannot be under-stood as responsive to, or designed to pre-vent, unconstitutional behavior. Congressdid not limit the Act’s coverage to casesinvolving arguable constitutional violations orconfine its reach by limiting the remedy tocertain types of infringement. Instead Con-gress made all States immediately amenableto federal-court suits for all kinds of possiblepatent S 629infringement and for an indefiniteduration. The statute’s appearance andmore basic aims—to present a uniform reme-dy for patent infringement and place Stateson the same footing as private parties underthat regime—are proper Article I concerns,but that Article does not give Congress thepower to enact such legislation after Semi-nole Tribe. Pp. 2208–2211.

148 F.3d 1343, reversed and remanded.

REHNQUIST, C.J., delivered theopinion of the Court, in which O’CONNOR,SCALIA, KENNEDY, and THOMAS, JJ.,joined. STEVENS, J., filed a dissentingopinion, in which SOUTER, GINSBURG,and BREYER, JJ., joined, post, p. 2211.

Jonathan A. Glogau, Tallahassee, FL, forpetitioner.

Kevin J. Culligan, New York City, for Col-lege Savings Bank.

Seth P. Waxman, Washington, DC, forUnited States.

For U.S. Supreme Court briefs, see:

1999 WL 86486 (Pet.Brief)

1999 WL 161075 (Resp.Brief)

1999 WL 164439 (Resp.Brief)

1999 WL 203475 (Reply.Brief)

S 630Chief Justice REHNQUIST deliveredthe opinion of the Court.

In 1992, Congress amended the patentlaws and expressly abrogated the States’ sov-ereign immunity from claims of patent in-fringement. Respondent College Savingsthen sued the State of Florida for patentinfringement, and the Court of Appeals heldthat Congress had validly abrogated theState’s sovereign immunity from infringe-ment suits pursuant to its authority under§ 5 of the Fourteenth Amendment. We holdthat, under City of Boerne v. Flores, 521 U.S.507, 117 S.Ct. 2157, 138 L.Ed.2d 624 (1997),the statute cannot be sustained as legislationenacted to enforce the guarantees of theFourteenth Amendment’s Due ProcessClause, and accordingly reverse the decisionof the Court of Appeals.

I

Since 1987, respondent College SavingsBank, a New Jersey chartered savings banklocated in Princeton, New Jersey, has mar-keted and sold certificates of deposit knownas the CollegeSure CD, which are essentiallyannuity contracts for financing future collegeexpenses. College Savings obtained S 631apatent for its financing methodology, de-


527 U.S. 633

signed to guarantee investors sufficient fundsto cover the costs of tuition for colleges.Petitioner Florida Prepaid PostsecondaryEducation Expense Board (Florida Prepaid)is an entity created by the State of Floridathat administers similar tuition prepaymentcontracts available to Florida residents andtheir children. See Fla. Stat. § 240.551(1)(Supp.1998). College Savings claims that, inthe course of administering its tuition pre-payment program, Florida Prepaid directlyand indirectly infringed College Savings’ pat-ent.

College Savings brought an infringementaction under 35 U.S.C. § 271(a) against Flor-ida Prepaid in the United States DistrictCourt for the District of New Jersey in No-vember 1994.1 By the time College Savingsfiled its suit, Congress had already passedthe Patent and Plant Variety ProtectionRemedy Clarification Act (Patent RemedyAct), 35 U.S.C. §§ 271(h), 296(a). Beforethis legislation, the patent laws stated onlythat ‘‘whoever’’ without authority made, used,or sold a patented invention infringed thepatent. 35 U.S.C. § 271(a) (1988 ed.).2 Ap-plying this Court’s decision in AtasScadero632

State Hosp. v. Scanlon, 473 U.S. 234, 242–243, 105 S.Ct. 3142, 87 L.Ed.2d 171 (1985),the Federal Circuit had held that the patentlaws failed to contain the requisite statementof intent to abrogate state sovereign immuni-ty from infringement suits. See, e.g., Chewv. California, 893 F.2d 331 (1990). In re-sponse to Chew and similar decisions, Con-gress enacted the Patent Remedy Act to‘‘clarify that States, instrumentalities ofStates, and officers and employees of States

acting in their official capacity, are subject tosuit in Federal court by any person for in-fringement of patents and plant variety pro-tections.’’ Pub.L. 102–560, preamble, 106Stat. 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) (herein-after S. Rep.). Section 271(h) now states:‘‘As used in this section, the term ‘whoever’includes any State, any instrumentality of aState, and any officer or employee of a Stateor instrumentality of a State acting in hisofficial capacity.’’ Section 296(a) addressesthe sovereign immunity issue even more spe-cifically:

‘‘Any State, any instrumentality of a State,and any officer or employee of a State orinstrumentality of a State acting in hisofficial capacity, shall not be immune, un-der the eleventh amendment of the Consti-tution of the United States or under anyother doctrine of sovereign immunity, fromsuit in Federal court by any person TTT forinfringement of a patent under section 271,or for any other violation under this title.’’

Relying on these provisions, College Savingsalleged that Florida Prepaid had willfullyinfringed its patent under S 633§ 271, as wellas contributed to and induced infringement.College Savings sought declaratory and in-junctive relief as well as damages, attorney’sfees, and costs.

After this Court decided Seminole Tribe ofFla. v. Florida, 517 U.S. 44, 116 S.Ct. 1114,134 L.Ed.2d 252 (1996), Florida Prepaidmoved to dismiss the action on the grounds

1. College Savings also filed a separate actionalleging that Florida Prepaid had made falseclaims about its own product in violation of theTrademark Act of 1946 (Lanham Act), 15 U.S.C.§ 1125(a). The District Court dismissed the Lan-ham Act suit on Eleventh Amendment grounds,the Third Circuit affirmed, and we granted Col-lege Savings’ petition in that case on the sameday we granted the petition in this case. See 525U.S. 1063, 119 S.Ct. 790, 142 L.Ed.2d 653(1999). The Lanham Act suit is the subject ofour opinion in College Savings Bank v. FloridaPrepaid Postsecondary Ed. Expense Bd., 527 U.S.666, 119 S.Ct. 2219, 144 L.Ed.2d 605 (1999).

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 theUnited States or imports into the United Statesany patented invention during the term of thepatent therefor, infringes the patent.

‘‘(b) Whoever actively induces infringement ofa patent shall be liable as an infringer.

‘‘(c) Whoever offers to sell or sells within theUnited States or imports into the United States acomponent of a patented machine, manufacture,combination or composition, or a material orapparatus for use in practicing a patented pro-cess, constituting a material part of the inven-tion, knowing the same to be especially made orespecially adapted for use in an infringement ofsuch patent, and not a staple article or commodi-ty of commerce suitable for substantial nonin-fringing use, shall be liable as a contributoryinfringer.’’ 35 U.S.C. § 271 (1994 ed. and Supp.III).


of sovereign immunity.3 Florida Prepaid ar-gued that the Patent Remedy Act was anunconstitutional attempt by Congress to useits Article I powers to abrogate state sover-eign immunity. College Savings respondedthat Congress had properly exercised itspower pursuant to § 5 of the FourteenthAmendment to enforce the guarantees of theDue Process Clause in § 1 of the Amend-ment. The United States intervened to de-fend the constitutionality of the statute.Agreeing with College Savings, the DistrictCourt denied Florida Prepaid’s motion todismiss, College Savings Bank v. FloridaPrepaid Postsecondary Education ExpenseBoard, 948 F.Supp. 400 (N.J.1996), and theFederal Circuit affirmed, 148 F.3d 1343(1998).

The Federal Circuit held that Congresshad clearly expressed its intent to abrogatethe States’ immunity from suit in federalcourt for patent infringement, and that Con-gress had the power under § 5 of the Four-teenth Amendment to do so. Id., at 1347.The court reasoned that patents are proper-ty subject to the protections of the DueProcess Clause and that Congress’ objectivein enacting the Patent Remedy Act was per-missible because it sought to prevent Statesfrom depriving patent owners of this proper-ty without due process. See id., at 1349–1350. The court rejected Florida Prepaid’sargument that it and other States had notdeprived patent owners of their propertywithout due process, and refused to ‘‘denyCongress the authority to subject all statesto suit for patent infringement in the federalcourts, regardless of the extent of proceduraldue process that may exist at any particulartime.’’ Id., at 1351. FiSnally,634 the courtheld that the Patent Remedy Act was aproportionate response to state infringementand an appropriate measure to protect pat-ent owners’ property under this Court’s deci-sion in City of Boerne, 521 U.S., at 519, 117S.Ct. 2157. The court concluded that signifi-cant harm results from state infringement ofpatents, 148 F.3d, at 1353–1354, and ‘‘[t]hereis no sound reason to hold that Congress

cannot subject a state to the same civil con-sequences that face a private party infring-er,’’ id., at 1355. We granted certiorari, 525U.S. 1064, 119 S.Ct. 790, 142 L.Ed.2d 653(1999), and now reverse.

II

The Eleventh Amendment provides:

‘‘The Judicial Power of the UnitedStates shall not be construed to extend toany suit in law or equity, commenced orprosecuted against one of the UnitedStates by Citizens of another State, or byCitizens or Subjects of any Foreign State.’’

As the Court recently explained in SeminoleTribe, supra, at 54, 116 S.Ct. 1114:

‘‘Although the text of the Amendmentwould appear to restrict only the ArticleIII diversity jurisdiction of the federalcourts, ‘we have understood the EleventhAmendment to stand not so much for whatit says, but for the presupposition TTT

which it confirms.’ That presupposition,first observed over a century ago in Hansv. Louisiana, 134 U.S. 1, 10 S.Ct. 504, 33L.Ed. 842 (1890), has two parts: first, thateach State is a sovereign entity in ourfederal system; and second, that ‘ ‘‘[i]t isinherent in the nature of sovereignty notto be amenable to the suit of an individualwithout its consent.’’ ’ Id., at 13, 10 S.Ct.504 (emphasis deleted), quoting The Fed-eralist No. 81TTTT For over a century wehave reaffirmed that federal jurisdictionover suits against unconsenting States ‘wasnot contemplated by S 635the Constitutionwhen establishing the judicial power of theUnited States.’ Hans, supra, at 15, 10S.Ct. 504.’’

Here, College Savings sued the State of Flor-ida in federal court, and it is undisputed thatFlorida has not expressly consented to suit.College Savings and the United States arguethat Florida has impliedly waived its immuni-ty under Parden v. Terminal Ry. Co. of Ala.Docks Dept., 377 U.S. 184, 84 S.Ct. 1207, 12L.Ed.2d 233 (1964). That argument, howev-er, is foreclosed by our decision in the com-

3. The District Court concluded that, for purposesof immunity from suit, Florida Prepaid is an armof the State of Florida, a conclusion the parties

did not dispute before either the Federal Circuitor this Court.


527 U.S. 637

panion case overruling the constructive waiv-er theory announced in Parden. See CollegeSavings Bank v. Florida Prepaid, Postsec-ondary Ed. Expense Bd., 527 U.S. 666, 119S.Ct. 2219, 144 L.Ed.2d 605 (1999).

[1, 2] College Savings and the UnitedStates nonetheless contend that Congress’enactment of the Patent Remedy Act validlyabrogated the States’ sovereign immunity.To determine the merits of this proposition,we must answer two questions: ‘‘first, wheth-er Congress has ‘unequivocally expresse[d]its intent to abrogate the immunity,’ TTT andsecond, whether Congress has acted ‘pursu-ant to a valid exercise of power.’ ’’ SeminoleTribe, supra, at 55, 116 S.Ct. 1114. Weagree with the parties and the Federal Cir-cuit that in enacting the Patent Remedy Act,Congress has made its intention to abrogatethe States’ immunity ‘‘ ‘unmistakably clear inthe language of the statute.’ ’’ Dellmuth v.Muth, 491 U.S. 223, 228, 109 S.Ct. 2397, 105L.Ed.2d 181 (1989). Indeed, Congress’ in-tent to abrogate could not have been anyclearer. See 35 U.S.C. § 296(a) (‘‘Any StateTTT shall not be immune, under the eleventhamendment of the Constitution of the UnitedStates or under any other doctrine of sover-eign immunity, from suit in Federal courtTTT for infringement of a patent’’).

[3] Whether Congress had the power tocompel States to surrender their sovereignimmunity for these purposes, however, isanother matter. Congress justified the Pat-ent Remedy Act under three sources of con-stitutional authority: the Patent Clause, Art.I, § 8, cl. 8; the Interstate CommerceClause, Art. I, § 8, cl. 3; and § 5 of theFourteenth AmendSment.636 See S. Rep., at7–8; H.R. Rep., at 39–40.4 In SeminoleTribe, of course, this Court overruled theplurality opinion in Pennsylvania v. UnionGas Co., 491 U.S. 1, 109 S.Ct. 2273, 105L.Ed.2d 1 (1989), our only prior case findingcongressional authority to abrogate statesovereign immunity pursuant to an Article I

power (the Commerce Clause). 517 U.S., at72–73, 116 S.Ct. 1114. Seminole Tribemakes clear that Congress may not abrogatestate sovereign immunity pursuant to its Ar-ticle I powers; hence the Patent Remedy Actcannot be sustained under either the Com-merce Clause or the Patent Clause. Ibid.The Federal Circuit recognized this, and Col-lege Savings and the United States do notcontend otherwise.

[4] Instead, College Savings and theUnited States argue that the Federal Circuitproperly concluded that Congress enactedthe Patent Remedy Act to secure the Four-teenth Amendment’s protections against de-privations of property without due process oflaw. The Fourteenth Amendment providesin relevant part:

‘‘Section 1TTTT No State shall TTT de-prive any person of life, liberty, or proper-ty, without due process of law.

. . . . .‘‘Section 5. The Congress shall have

power to enforce, by appropriate legisla-tion, the provisions of this article.’’

While reaffirming the view that state sover-eign immunity does not yield to Congress’Article I powers, this Court in S 637SeminoleTribe also reaffirmed its holding in Fitz-patrick v. Bitzer, 427 U.S. 445, 96 S.Ct. 2666,49 L.Ed.2d 614 (1976), that Congress retainsthe authority to abrogate state sovereign im-munity pursuant to the Fourteenth Amend-ment. Our opinion explained that in Fitz-patrick, ‘‘we recognized that the FourteenthAmendment, by expanding federal power atthe expense of state autonomy, had funda-mentally altered the balance of state andfederal power struck by the Constitution.’’Seminole Tribe, supra, at 59, 116 S.Ct. 1114.The Court further described Fitzpatrick asholding that ‘‘through the FourteenthAmendment, federal power extended to in-trude upon the province of the EleventhAmendment and therefore that § 5 of theFourteenth Amendment allowed Congress to

4. The Patent Clause provides that ‘‘Congressshall have Power TTT [t]o promote the Progressof Science and useful Arts, by securing for limit-ed Times to Authors and Inventors the exclusiveRight to their respective Writings and Discover-ies.’’ Art. I, § 8, cl. 8. The Commerce Clause

provides that ‘‘Congress shall have Power TTT

[t]o regulate Commerce with foreign Nations,and among the Several States, and with theIndian Tribes.’’ Art. I, § 8, cl. 3. The relevantportions of the Fourteenth Amendment are dis-cussed below.


abrogate the immunity from suit guaranteedby that Amendment.’’ Seminole Tribe, su-pra, at 59, 116 S.Ct. 1114.

[5] College Savings and the UnitedStates are correct in suggesting that ‘‘appro-priate’’ legislation pursuant to the Enforce-ment Clause of the Fourteenth Amendmentcould abrogate state sovereignty. Congressitself apparently thought the Patent RemedyAct could be so justified:

‘‘[T]he bill is justified as an acceptablemethod of enforcing the provisions of thefourteenth amendment. The Court in Le-melson v. Ampex Corp.[, 372 F.Supp. 708(N.D.Ill.1974),] recognized that a patent isa form of property, holding that a right tocompensation exists for patent infringe-ment. Additionally, because courts havecontinually recognized patent rights asproperty, the fourteenth amendment pro-hibits a State from depriving a person ofproperty without due process of law.’’ S.Rep., at 8 (footnotes omitted).

We have held that ‘‘[t]he ‘provisions of thisarticle,’ to which § 5 refers, include the DueProcess Clause of the Fourteenth Amend-ment.’’ City of Boerne v. Flores, 521 U.S., at519, 117 S.Ct. 2157.

But the legislation must nonetheless be‘‘appropriate’’ under § 5 as that term wasconstrued in City of Boerne. S 638There, thisCourt held that the Religious Freedom Res-toration Act of 1993 (RFRA), 107 Stat. 1488,42 U.S.C. § 2000bb et seq., exceeded Con-gress’ authority under § 5 of the FourteenthAmendment, insofar as RFRA was made ap-plicable to the States. RFRA was enacted‘‘in direct response to’’ this Court’s decisionin Employment Div., Dept. of Human Re-sources of Or. v. Smith, 494 U.S. 872, 110S.Ct. 1595, 108 L.Ed.2d 876 (1990), whichconstrued the Free Exercise Clause of theFirst Amendment to hold that ‘‘neutral, gen-erally applicable laws may be applied to reli-gious practices even when not supported by acompelling governmental interest.’’ City ofBoerne, supra, at 512, 514, 117 S.Ct. 2157.Through RFRA, Congress reinstated the

compelling governmental interest test es-chewed by Smith by requiring that a gener-ally applicable law placing a ‘‘substantial bur-den’’ on the free exercise of religion must bejustified by a ‘‘compelling governmental in-terest’’ and must employ the ‘‘least restric-tive means’’ of furthering that interest. 521U.S., at 515–516, 117 S.Ct. 2157.

In holding that RFRA could not be justi-fied as ‘‘appropriate’’ enforcement legislationunder § 5, the Court emphasized that Con-gress’ enforcement power is ‘‘remedial’’ innature. Id., at 519, 117 S.Ct. 2157. Werecognized that ‘‘[l]egislation which deters orremedies constitutional violations can fallwithin the sweep of Congress’ enforcementpower even if in the process it prohibitsconduct which is not itself unconstitutionaland intrudes into ‘legislative spheres of au-tonomy previously reserved to the States.’ ’’Id., at 518, 117 S.Ct. 2157 (citation omitted).We also noted, however, that ‘‘ ‘[a]s broad asthe congressional enforcement power is, it isnot unlimited,’ ’’ ibid., and held that ‘‘Con-gress does not enforce a constitutional rightby changing what the right is. It has beengiven the power ‘to enforce,’ not the power todetermine what constitutes a constitutionalviolation,’’ id., at 519, 117 S.Ct. 2157. Can-vassing the history of the FourteenthAmendment and S 639case law examining thepropriety of Congress’ various voting rightsmeasures,5 the Court explained:

‘‘While the line between measures thatremedy or prevent unconstitutional actionsand measures that make a substantivechange in the governing law is not easy todiscern, and Congress must have wide lati-tude in determining where it lies, the dis-tinction exists and must be observed.There must be a congruence and propor-tionality between the injury to be prevent-ed or remedied and the means adopted tothat end. Lacking such a connection, leg-islation may become substantive in opera-tion and effect.’’ Id., at 519–520, 117 S.Ct.2157.

5. See South Carolina v. Katzenbach, 383 U.S.301, 86 S.Ct. 803, 15 L.Ed.2d 769 (1966); Kat-zenbach v. Morgan, 384 U.S. 641, 86 S.Ct. 1717,16 L.Ed.2d 828 (1966); Oregon v. Mitchell, 400

U.S. 112, 91 S.Ct. 260, 27 L.Ed.2d 272 (1970);City of Rome v. United States, 446 U.S. 156, 100S.Ct. 1548, 64 L.Ed.2d 119 (1980).


527 U.S. 641

We thus held that for Congress to invoke§ 5, it must identify conduct transgressingthe Fourteenth Amendment’s substantiveprovisions, and must tailor its legislativescheme to remedying or preventing such con-duct.

RFRA failed to meet this test becausethere was little support in the record for theconcerns that supposedly animated the law.Id., at 530–531, 117 S.Ct. 2157. And, unlikethe measures in the voting rights cases,RFRA’s provisions were ‘‘so out of propor-tion to a supposed remedial or preventiveobject’’ that RFRA could not be understood‘‘as responsive to, or designed to prevent,unconstitutional behavior.’’ Id., at 532, 117S.Ct. 2157; see also id., at 534, 117 S.Ct.2157 (‘‘Simply put, RFRA is not designed toidentify and counteract state laws likely to beunconstitutional’’).

[6] Can the Patent Remedy Act beviewed as remedial or preventive legislationaimed at securing the protections of theFourteenth Amendment for patent owners?Following City of Boerne, we must first iden-tify the Fourteenth Amendment ‘‘evil’’ or‘‘wrong’’ that Congress intended to remedy,guided S 640by the principle that the proprietyof any § 5 legislation ‘‘ ‘must be judged withreference to the historical experience TTT itreflects.’ ’’ Id., at 525, 117 S.Ct. 2157. Theunderlying conduct at issue here is stateinfringement of patents and the use of sover-eign immunity to deny patent owners com-pensation for the invasion of their patentrights. See H.R. Rep., at 37–38 (‘‘[P]atentowners are effectively denied a remedy fordamages resulting from infringement by aState or State entity’’); S. Rep., at 6(‘‘[P]laintiffs in patent infringement casesagainst a State are foreclosed from damages,regardless of the State conduct’’). It is thisconduct then—unremedied patent infringe-

ment by the States—that must give rise tothe Fourteenth Amendment violation thatCongress sought to redress in the PatentRemedy Act.

In enacting the Patent Remedy Act, how-ever, Congress identified no pattern of pat-ent infringement by the States, let alone apattern of constitutional violations. Unlikethe undisputed record of racial discriminationconfronting Congress in the voting rightscases, see City of Boerne, supra, at 525–527,117 S.Ct. 2157, Congress came up with littleevidence of infringing conduct on the part ofthe States. The House Report acknowl-edged that ‘‘many states comply with patentlaw’’ and could provide only two examples ofpatent infringement suits against the States.See H.R. Rep., at 38. The Federal Circuit inits opinion identified only eight patent-in-fringement suits prosecuted against theStates in the 110 years between 1880 and1990. See 148 F.3d, at 1353–1354.

Testimony before the House Subcommit-tee in favor of the bill acknowledged that‘‘states are willing and able to respect patentrights. The fact that there are so few re-ported cases involving patent infringementclaims against states underlies the point.’’Patent Remedy Clarification Act: Hearingon H.R. 3886 before the Subcommittee onCourts, Intellectual Property, and the Ad-ministration of Justice of the House Commit-tee on the Judiciary, 101st Cong., 2d Sess.,56 (1990) (hereinafter House Hearings)(statement of William S 641S. Thompson); id.,at 32 (statement of Robert Merges)(‘‘[S]tates do occasionally find themselves inpatent infringement suits’’). Even the bill’ssponsor conceded that ‘‘[w]e do not have anyevidence of massive or widespread violationof patent laws by the States either with orwithout this State immunity.’’ Id., at 22(statement of Rep. Kastenmeier).6 The Sen-

6. Representative Kastenmeier made this state-ment in the course of questioning Jeffrey M.Samuels, Acting Commissioner of Patents andTrademarks, U.S. Department of Commerce.The discussion continued:

‘‘Mr. KASTENMEIERTTTT

‘‘Accordingly, could one argue that this legisla-tion may be premature. We really do not knowwhether it will have any affect [sic] or not.

‘‘Mr. SAMUELS. Well, you are right, Mr. Chair-man. There have not been many cases that haveraised this issue. I guess our feeling is that it isa step that should be taken now because thepossibility exists in light of Atascadero and inlight of the Chew case that more States will getinvolved in infringing patents.

‘‘I guess as a general policy statement, webelieve that those engaged—those who do engagein patent infringement should be subject to all


ate Report, as well, contains no evidence thatunremedied patent infringement by Stateshad become a problem of national import.At most, Congress heard testimony that pat-ent infringement by States might increase inthe future, see House Hearings 22 (state-ment of Jeffrey Samuels); id., at 36–37(statement of Robert Merges); id., at 57(statement of William Thompson), and actedto head off this speculative harm. See H.R.Rep., at 38.

[7] College Savings argues that by in-fringing a patent and then pleading immunityto an infringement suit, a State not onlyinfringes the patent, but deprives the paten-tee of property without due process of lawand ‘‘takes’’ the property in the patent with-out paying the just compensation requiredS 642by the Fifth Amendment.7 The UnitedStates declines to defend the Act as based onthe Just Compensation Clause, but joins inCollege Savings’ defense of the Act as de-signed to prevent a State from depriving apatentee of property without due process oflaw. Florida Prepaid contends that Con-gress may not invoke § 5 to protect propertyinterests that it has created in the first placeunder Article I. Patents, however, have longbeen considered a species of property. SeeBrown v. Duchesne, 19 How. 183, 197, 15L.Ed. 595 (1856) (‘‘For, by the laws of theUnited States, the rights of a party under apatent are his private property’’); cf., Con-solidated Fruit–Jar Co. v. Wright, 94 U.S.92, 96, 24 L.Ed. 68 (1876) (‘‘A patent for aninvention is as much property as a patent forland’’). As such, they are surely includedwithin the ‘‘property’’ of which no personmay be deprived by a State without dueprocess of law. And if the Due ProcessClause protects patents, we know of no rea-son why Congress might not legislate against

their deprivation without due process under§ 5 of the Fourteenth Amendment.

Though patents may be considered ‘‘prop-erty’’ for purposes of our analysis, the legis-lative record still provides little support forthe proposition that Congress sought to rem-edy a Fourteenth Amendment violation inenacting the Patent Remedy Act. The DueProcess Clause provides, ‘‘nor shall any Statedeprive any person of life, liberty, or proper-ty, without due process of law.’’ U.S. Const.,Amdt. 14, § 1 (emphasis added). This Courthas accordingly held that ‘‘[i]n proceduraldue process claims, the deprivation byS 643state action of a constitutionally protectedinterest TTT is not in itself unconstitutional;what is unconstitutional is the deprivation ofsuch an interest without due process of law.’’Zinermon v. Burch, 494 U.S. 113, 125, 110S.Ct. 975, 108 L.Ed.2d 100 (1990) (emphasisdeleted).

[8] Thus, under the plain terms of theClause and the clear import of our precedent,a State’s infringement of a patent, thoughinterfering with a patent owner’s right toexclude others, does not by itself violate theConstitution. Instead, only where the Stateprovides no remedy, or only inadequate rem-edies, to injured patent owners for its in-fringement of their patent could a depriva-tion of property without due process result.See Parratt v. Taylor, 451 U.S. 527, 539–541,101 S.Ct. 1908, 68 L.Ed.2d 420 (1981); Hud-son v. Palmer, 468 U.S. 517, 532–533, 104S.Ct. 3194, 82 L.Ed.2d 393 (1984); id., at 539,104 S.Ct. 3194 (O’CONNOR, J., concurring)(‘‘[I]n challenging a property deprivation, theclaimant must either avail himself of theremedies guaranteed by state law or provethat the available remedies are inade-quateTTTT When adequate remedies areprovided and followed, no TTT deprivation ofproperty without due process can result’’).

the remedies that are set forth in the Patent Actand that the rights of a patent owner should notbe dependent upon the identity of the entity whois infringing, whether it be a private individual,or corporation, or State.

‘‘So just as a general philosophical matter, webelieve that this law needs to be passed.’’

7. There is no suggestion in the language of thestatute itself, or in the House or Senate Reportsof the bill which became the statute, that Con-

gress had in mind the Just Compensation Clauseof the Fifth Amendment. Since Congress was soexplicit about invoking its authority under ArticleI and its authority to prevent a State from depriv-ing a person of property without due process oflaw under the Fourteenth Amendment, we thinkthis omission precludes consideration of the JustCompensation Clause as a basis for the PatentRemedy Act.


527 U.S. 645

Congress, however, barely considered theavailability of state remedies for patent in-fringement and hence whether the States’conduct might have amounted to a constitu-tional violation under the FourteenthAmendment. It did hear a limited amount oftestimony to the effect that the remediesavailable in some States were uncertain.8

S 644The primary point made by these wit-nesses, however, was not that state remedieswere constitutionally inadequate, but ratherthat they were less convenient than federalremedies, and might undermine the uniformi-ty of patent law. See, e.g., House Hearings43 (statement of Robert Merges) (‘‘[U]nifor-mity again dictates that that sovereign im-munity is a mistake in this field because ofthe variance among the State’s laws’’), id., at34, 41 (Merges); id., at 58 (statement ofWilliam Thompson).9

Congress itself said nothing about the exis-tence or adequacy of state remedies in thestatute or in the Senate Report, and madeonly a few fleeting references to state reme-dies in the House Report, essentially repeat-ing the testimony of the witnesses. See H.R.Rep., at 37, n. 158 (‘‘[T]he availability of aState remedy is tenuous and could vary sig-nificantly State to State’’); id., at 38 (‘‘[I]fpatentees turn to the State courts for alter-native forms of relief from patent infringe-ment, the result will be a patchwork of Statelaws, actually undermining the goal of nation-

al uniformity in S 645our patent system’’). Theneed for uniformity in the construction ofpatent law is undoubtedly important, but thatis a factor which belongs to the Article Ipatent-power calculus, rather than to anydetermination of whether a state plea of sov-ereign immunity deprives a patentee of prop-erty without due process of law.

[9] We have also said that a state actor’snegligent act that causes unintended injuryto a person’s property does not ‘‘deprive’’that person of property within the meaningof the Due Process Clause. See Daniels v.Williams, 474 U.S. 327, 328, 106 S.Ct. 662, 88L.Ed.2d 662 (1986). Actions predicated ondirect patent infringement, however, do notrequire any showing of intent to infringe;instead, knowledge and intent are consideredonly 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 in-fringement may be entirely inadvertent andunintentional and without knowledge of thepatent’ ’’). Congress did not focus on in-stances of intentional or reckless infringe-ment on the part of the States. Indeed, theevidence before Congress suggested thatmost state infringement was innocent or atworst negligent. See S. Rep., at 10 (‘‘ ‘It isnot always clear that with all the productsthat [government] buy[s], that anyone is real-

8. See, e.g., House Hearings 33 (statement of Rob-ert Merges) (‘‘Thus a patentee TTT would appar-ently have to draft her cause of action as ageneral tort claim—or perhaps one for restitu-tion—to come within the statute. This might beimpossible, or at least difficult under Californialaw’’); id., at 43 (‘‘[I]t is true that you may haveState remedies, alternative State remediesTTTT

You could bring a deceit suit. You could try justa general unfair competition suit. A restitutionis one that has occurred to me as a possible basisof recovery’’); id., at 34 (‘‘Another problem withthis approach is that it assumes that such statelaw remedies will be available in every state inwhich the patentee’s product is sold. This mayor may not be true’’); id., at 47 (statement ofWilliam Thompson) (‘‘In this case there is nobalance, since there are no—or at least there arenot very effective patent remedies at the Statelevel’’); id., at 57 (‘‘The court in Lane [v. FirstNat. Bank of Boston, 687 F.Supp. 11 (D.Mass.1988),] pointed out that the appellant may beable to obtain money damages by recourse to theMassachusetts tort claims act or sue the state for

deceit, conversion, or unfair competition underMassachusetts law. The court also noted a Mas-sachusetts statute which provides that damagesmay be recovered from the state when privateproperty is confiscated for a public purpose.While many states may have similar statutes, thecourts’ surmise that intellectual property in-fringement cases may be pursued in some statecourts offer us little comfort’’); id., at 60 (‘‘[I]tsounds to me like it is a very difficult area topredict what would happen. There is a richvariety of potential causes of action, as the priorspeaker [Merges] pointed out’’).

9. It is worth mentioning that the State of Floridaprovides remedies to patent owners for allegedinfringement on the part of the State. Aggrievedparties may pursue a legislative remedy througha claims bill for payment in full, Fla. Stat.§ 11.065 (1997), or a judicial remedy through atakings or conversion claim, see Jacobs WindElectric Co. v. Florida Dept. of Transp., 626 So.2d1333 (Fla.1993).


ly aware of the patent status of any particu-lar invention or device or product’ ’’); H.R.Rep., at 39 (‘‘[I]t should be very rare for acourt to find TTT willful infringement on thepart of a State or State agency’’). Suchnegligent conduct, however, does not violatethe Due Process Clause of the FourteenthAmendment.

The legislative record thus suggests thatthe Patent Remedy Act does not respond toa history of ‘‘widespread and persisting de-privation of constitutional rights’’ of the sortCongress has faced in enacting proper pro-phylactic § 5 legislation. City of Boerne, 521U.S., at 526, 117 S.Ct. 2157. Instead, Con-gress appears to have enacted this legislationin response to a handful of instances of statepatent infringement that do notS 646necessarily violate the Constitution.Though the lack of support in the legislativerecord is not determinative, see id., at 531,117 S.Ct. 2157, identifying the targeted con-stitutional wrong or evil is still a critical partof our § 5 calculus because ‘‘[s]trong mea-sures appropriate to address one harm maybe an unwarranted response to another, less-er one,’’ id., at 530, 117 S.Ct. 2157. Here,the record at best offers scant support forCongress’ conclusion that States were de-priving patent owners of property withoutdue process of law by pleading sovereignimmunity in federal-court patent actions.

Because of this lack, the provisions of thePatent Remedy Act are ‘‘so out of proportionto a supposed remedial or preventive objectthat [they] cannot be understood as respon-sive to, or designed to prevent, unconstitu-tional behavior.’’ Id., at 532, 117 S.Ct. 2157.An unlimited range of state conduct wouldexpose a State to claims of direct, induced, orcontributory patent infringement, and theHouse Report itself cited testimony acknowl-edging ‘‘ ‘it[’]s difficult for us to identify a

patented product or process which might notbe used by a state.’ ’’ H.R. Rep., at 38.10

Despite subjecting States to this expansiveliability, Congress did nothing to limit thecoverage of the Act to cases involving argua-ble constitutional violations, such as where aState refuses to offer any S 647state-court rem-edy for patent owners whose patents it hadinfringed. Nor did it make any attempt toconfine the reach of the Act by limiting theremedy to certain types of infringement,such as nonnegligent infringement or in-fringement authorized pursuant to state poli-cy; or providing for suits only against Stateswith questionable remedies or a high inci-dence of infringement.

Instead, Congress made all States immedi-ately amenable to suit in federal court for allkinds of possible patent infringement and foran indefinite duration. Our opinion in Cityof Boerne discussed with approval the vari-ous limits that Congress imposed in its vot-ing rights measures, see 521 U.S., at 532–533, 117 S.Ct. 2157, and noted that where ‘‘acongressional enactment pervasively prohib-its constitutional state action in an effort toremedy or to prevent unconstitutional stateaction, limitations of this kind tend to ensureCongress’ means are proportionate to endslegitimate under § 5,’’ id., at 533, 117 S.Ct.2157. The Patent Remedy Act’s indiscrimi-nate scope offends this principle, and is par-ticularly incongruous in light of the scantsupport for the predicate unconstitutionalconduct that Congress intended to remedy.In sum, it simply cannot be said that ‘‘manyof [the acts of infringement] affected by thecongressional enactment have a significantlikelihood of being unconstitutional.’’ Id., at532, 117 S.Ct. 2157.

The historical record and the scope of cov-erage therefore make it clear that the PatentRemedy Act cannot be sustained under § 5

10. The relevant testimony stated in full:‘‘The comments regarding copyright centered

on substantial use of copyrighted textbooks bystate universities as well as state use of copy-righted music and computer software. State useof patented products is more diverse and moresubstantial. Patented inventions are involved inall manner of commonly used machines, tools,instruments, chemicals, compounds, materials,and devices of all description and purpose. Fur-

thermore, patented processes are commonplace.States and state instrumentalities own and oper-ate hospitals, universities, prisons, and libraries.States build and maintain roads. States providefacilities and equipment for large numbers ofemployees who perform all manner of state sup-ported activities. It[’]s difficult for us to identifya patented product or process which might notbe used by a state.’’ House Hearings 55 (state-ment of William Thompson).


527 U.S. 649

of the Fourteenth Amendment. The exam-ples of States avoiding liability for patentinfringement by pleading sovereign immunityin a federal-court patent action are scarceenough, but any plausible argument thatsuch action on the part of the State deprivedpatentees of property and left them without aremedy under state law is scarcer still. Thestatute’s apparent and more basic aims wereto provide a uniform remedy for patent in-fringement and to place States on the samefooting as private parties under S 648that re-gime.11 These are proper Article I concerns,but that Article does not give Congress thepower to enact such legislation after Semi-nole Tribe.

The judgment of the Court of Appeals isreversed, and the case is remanded for pro-ceedings consistent with this opinion.

It is so ordered.

Justice STEVENS, with whom JusticeSOUTER, Justice GINSBURG, and JusticeBREYER join, dissenting.

The Constitution vests Congress with ple-nary authority over patents and copyrights.U.S. Const., Art. I, § 8, cl. 8. Nearly 200years ago, Congress provided for exclusivejurisdiction of patent infringement litigationin the federal courts.1 See Campbell v. Cityof Haverhill, 155 U.S. 610, 620, 15 S.Ct. 217,39 L.Ed. 280 S 649(1895). In 1992 Congressclarified that jurisdictional grant by an

amendment to the patent law that unambigu-ously authorizes patent infringement actionsagainst States, state instrumentalities, andany officer or employee of a State acting inhis official capacity. Pub.L. 102–560, 106Stat. 4230, 35 U.S.C. § 271(h). Given theabsence of effective state remedies for patentinfringement by States and the statutorypre-emption of such state remedies, the 1992Patent and Plant Variety Protection RemedyClarification Act (Patent Remedy Act) wasan appropriate exercise of Congress’ powerunder § 5 of the Fourteenth Amendment toprevent state deprivations of property with-out due process of law.

This Court’s recent decision in City ofBoerne v. Flores, 521 U.S. 507, 117 S.Ct.2157, 138 L.Ed.2d 624 (1997), amply supportscongressional authority to enact the PatentRemedy Act, whether one assumes thatStates seldom infringe patents, see ante, at2207–2208, 2210, or that patent infringementspotentially permeate an ‘‘unlimited range ofstate conduct,’’ see ante, at 2210. Beforediscussing City of Boerne, however, I shallcomment briefly on the principle that under-girds all aspects of our patent system: na-tional uniformity.

IIn his commentaries on the Federal Con-

stitution, Justice Story said of the Patent andCopyright Clauses:

11. See 35 U.S.C. § 271(h) (stating that Statesand state entities ‘‘shall be subject to the provi-sions of this title in the same manner and to thesame extent as any nongovernmental entity’’);see also H.R. Rep., at 40 (‘‘The Committee be-lieves that the full panoply of remedies providedin the patent law should be available to patenteeswhose legitimate rights have been infringed byStates or State entities’’); S. Rep., at 14. Thus,contrary to the dissent’s intimation, see post, at2218 (opinion of STEVENS, J.), the Patent Rem-edy Act does not put States in the same positionas the United States. Under the Patent RemedyAct, States are subject to all the remedies avail-able to plaintiffs in infringement actions, whichinclude punitive damages and attorney’s fees, see35 U.S.C. §§ 284, 285, as well as injunctive re-lief, see § 283. In waiving its own immunityfrom patent infringement actions in 28 U.S.C.§ 1498(a) (1994 ed. and Supp. III), however, theUnited States did not consent to either trebledamages or injunctive relief, and allowed reason-able attorney’s fees only in a narrow class ofspecified instances.

1. See Act of Apr. 17, 1800, ch. 25, 2 Stat. 37; Actof Feb. 19, 1819, ch. 19, 3 Stat. 481. There issome dispute about whether federal jurisdictionover patent cases became exclusive in 1800 or in1836. See 7 D. Chisum, Patents § 20.02[1][a], n.9 (1998). In any event, 28 U.S.C. § 1338(a) nowprovides: ‘‘The district courts shall have originaljurisdiction of any civil action arising under anyAct of Congress relating to patents, plant varietyprotection, copyrights and trade-marks. Suchjurisdiction shall be exclusive of the courts of thestates in patent, plant variety protection andcopyright cases.’’ The second sentence of§ 1338(a) (excluding the reference to plant vari-ety protection cases) has been worded in essen-tially the same way since 1878. See Rev. Stat.§ 711 (1878). This Court has used various crite-ria for determining when an action ‘‘arises un-der’’ the patent law, see, e.g., Dale Tile Mfg. Co. v.Hyatt, 125 U.S. 46, 52–53, 8 S.Ct. 756, 31 L.Ed.683 (1888), but it is well established that a patentinfringement claim is ‘‘the paradigm of an action‘arising under’ the patent laws.’’ 8 Chisum, Pat-ents § 21.02[1][b].


‘‘It is beneficial to all parties, that thenational government should possess thispower; to authors and inven Stors,650 be-cause, otherwise, they would be subjectedto the varying laws and systems of thedifferent states on this subject, whichwould impair, and might even destroy thevalue of their rights; to the public, as itwill promote the progress of science andthe useful arts, and admit the people atlarge, after a short interval, to the fullpossession and enjoyment of all writingsand inventions without restraint.’’ J. Sto-ry, Commentaries on the Constitution ofthe United States § 502, p. 402 (R. Rotun-da & J. Nowak eds.1987).

James Madison said of the same Clause,‘‘The utility of this power will scarcely bequestionedTTTT The States cannot separate-ly make effectual provision for either [copy-rights or patents], and most of them haveanticipated the decision of this point, by lawspassed at the instance of Congress.’’ TheFederalist No. 43, p. 267 (H. Lodge ed.1908) (J. Madison).

Sound reasons support both Congress’ au-thority over patents and its subsequent deci-sion in 1800 to vest exclusive jurisdiction overpatent infringement litigation in the federalcourts. The substantive rules of law that areapplied in patent infringement cases are en-tirely federal. From the beginning, Con-gress has given the patentee the right tobring an action for patent infringement. § 4,

1 Stat. 111. There is, accordingly, a strongfederal interest in an interpretation of thepatent statutes that is both uniform andfaithful to the constitutional goals of stimu-lating invention and rewarding the disclosureof novel and useful advances in technology.See Graham v. John Deere Co. of KansasCity, 383 U.S. 1, 9, 86 S.Ct. 684, 15 L.Ed.2d545 (1966). Federal interests are threat-ened, not only by inadequate protection forpatentees, but also when overprotection mayhave an adverse impact on a competitiveeconomy. See Bonito Boats, Inc. v. ThunderCraft Boats, Inc., 489 U.S. 141, 162–163, 109S.Ct. 971, 103 L.Ed.2d 118 (1989). There-fore, consistency, uniformity, and familiaritywith the extensive and relevant body of pat-ent jurisprudence are matters of overridingsignificance in this area of the law.

S 651Patent infringement litigation oftenraises difficult technical issues that are unfa-miliar to the average trial judge.2 That con-sideration, as well as the divergence amongthe federal circuits in their interpretation ofpatent issues, provided support for the con-gressional decision in 1982 to consolidate ap-pellate jurisdiction of patent appeals in theCourt of Appeals for the Federal Circuit.3

Although that court has jurisdiction over allappeals from federal trial courts in patentinfringement cases, it has no power to reviewstate-court decisions on questions of patentlaw. See 28 U.S.C. § 1295. S 652The reasonsthat motivated the creation of the Federal

2. The Advisory Commission on Patent Law Re-form recommended in 1992 that patent jurisdic-tion be restricted to a single district court percircuit and that district courts designate and usejudges with special expertise in patent litigation.‘‘With this increased expertise, courts would beable to more effectively control litigation pro-ceedings, and ensure consistency in the applica-tion of substantive patent lawTTTT Of course, therestricted jurisdictional provision would reducethe flexibility currently available to parties to fileactions pursuant to the general jurisdictional au-thority. Yet patent practice is an essentially na-tional practice in the United States. The ‘costs’in terms of lost flexibility associated with thischange would appear to be relatively minor incomparison to the prospective benefits in unifor-mity of practice.’’ Advisory Commission on Pat-ent Law Reform, D. Comer et al., Report to theSecretary of Commerce 99 (Aug.1992).

3. In its Report on the Federal Courts Improve-ment Act of 1982, the House stated, ‘‘Patentlitigation long has been identified as a problem

area, characterized by undue forum-shoppingand unsettling inconsistency in adjudications.Based on the evidence it compiled during thecourse of thorough hearings on the subject, theCommission on Revision of the Federal CourtAppellate System—created by Act of Congress—concluded that patent law is an area in which theapplication of the law to the facts of a case oftenproduces different outcomes in different court-rooms in substantially similar cases. As a result,some circuit courts are regarded as ‘pro-patent’and other ‘anti-patent,’ and much time and mon-ey is expended in ‘shopping’ for a favorable ven-ue. In a Commission survey of practitioners, thepatent bar reported that uncertainty created bythe lack of national law precedent was a signifi-cant problem; the Commission found patent lawto be an area in which widespread forum-shop-ping was particularly acute.’’ H.R.Rep. No. 97–312, pp. 20–21 (1981) (footnotes omitted); seealso S.Rep. No. 97–275, p. 5 (1981).


527 U.S. 654

Circuit would be undermined by any excep-tion that allowed patent infringement claimsto be brought in state court.

Today the Court first acknowledges thatthe ‘‘need for uniformity in the constructionof patent law is undoubtedly important,’’ante, at 2209, but then discounts its signifi-cance as merely ‘‘a factor which belongs tothe Article I patent-power calculus, ratherthan to any determination of whether a stateplea of sovereign immunity deprives a paten-tee of property without due process of law.’’Ibid. But the ‘‘Article I patent-power calcu-lus’’ is directly relevant to this case becauseit establishes the constitutionality of the con-gressional decision to vest exclusive jurisdic-tion over patent infringement cases in thefederal courts. That basic decision was un-questionably appropriate. It was equally ap-propriate for Congress to abrogate state sov-ereign immunity in patent infringement casesin order to close a potential loophole in theuniform federal scheme, which, if under-mined, would necessarily decrease the effica-cy of the process afforded to patent holders.

IIOur recent decision in City of Boerne v.

Flores, 521 U.S. 507, 117 S.Ct. 2157, 138L.Ed.2d 624 (1997), sets out the general testfor determining whether Congress has enact-ed ‘‘appropriate’’ legislation pursuant to § 5of the Fourteenth Amendment. ‘‘There mustbe a congruence and proportionality betweenthe injury to be prevented or remedied andthe means adopted to that end.’’ Id., at 520,117 S.Ct. 2157. The first step of the inquiry,then, is to determine what injury Congresssought to prevent or remedy with the rele-vant legislation.

As the Court recognizes, Congress’ author-ity under § 5 of the Fourteenth Amendmentextends to enforcing the Due Process Clauseof that Amendment. Ante, at 2206. Con-gress decided, and I agree, that the PatentRemedy Act was a proper exercise of thispower.

S 653The Court acknowledges, as it must,that patents are property. Ante, at 2208;see also Consolidated Fruit–Jar Co. v.Wright, 94 U.S. 92, 96, 24 L.Ed. 68 (1876).Every valid patent ‘‘gives the patentee or hisassignee the ‘exclusive right to make, use,and vend the invention or discovery’ for alimited period.’’ Transparent–Wrap Ma-chine Corp. v. Stokes & Smith Co., 329 U.S.637, 643, 67 S.Ct. 610, 91 L.Ed. 563 (1947).The Court suggests, however, that a State’sinfringement of a patent does not necessarilyconstitute a ‘‘deprivation’’ within the meaningof the Due Process Clause, because the in-fringement may be done negligently. Ante,at 2209–2210.

As part of its attempt to stem the tide ofprisoner litigation, and to avoid making ‘‘theFourteenth Amendment a font of tort law tobe superimposed upon whatever systemsmay already be administered by the States,’’Daniels v. Williams, 474 U.S. 327, 332–334,106 S.Ct. 662, 88 L.Ed.2d 662 (1986), thisCourt has drawn a constitutional distinctionbetween negligent and intentional miscon-duct. Injuries caused by the mere negli-gence of state prison officials—in leaving apillow on the stairs of the jail, for example—do not ‘‘deprive’’ anyone of liberty or proper-ty within the meaning of the Due ProcessClause of that Amendment. Ibid. On theother hand, willful misconduct, and perhaps‘‘recklessness or gross negligence,’’ may giverise to such a deprivation. Id., at 334, 106S.Ct. 662.

While I disagree with the Court’s assump-tion that this standard necessarily applies todeprivations of patent rights, the Danielsline of cases has only marginal relevance tothis case: Respondent College Savings Bankhas alleged that petitioner’s infringementwas willful.4 The question presented by thiscase, then, is whether the Patent RemedyAct, S 654which clarified Congress’ intent tosubject state infringers to suit in federalcourt, may be applied to willful infringe-ment.5

4. Paragraph 7 of College Savings’ complaint al-leges that ‘‘ ‘[d]efendant Florida Prepaid withactual knowledge of the ’055 patent, with knowl-edge of its infringement, and without lawful justi-

fication, has willfully infringed the ’055 patent.’ ’’App. to Pet. for Cert. 30a.

5. As a practical matter, infringement actionsbased on mere negligence rarely arise. Most


As I read the Court’s opinion, its negativeanswer to that question has nothing to dowith the facts of this case. Instead, it reliesentirely on perceived deficiencies in the evi-dence reviewed by Congress before it enact-ed the clarifying amendment. ‘‘In enactingthe Patent Remedy Act TTT Congress identi-fied no pattern of patent infringement by theStates, let alone a pattern of constitutionalviolations.’’ Ante, at 2207.

It is quite unfair for the Court to strikedown Congress’ Act based on an absence offindings supporting a requirement this Courthad not yet articulated. The legislative his-tory of the Patent Remedy Act makes itabundantly clear that Congress was attempt-ing to hurdle the then-most-recent barrierthis Court had erected in the EleventhAmendment course—the ‘‘clear statement’’rule of Atascadero State Hospital v. Scanlon,473 U.S. 234, 105 S.Ct. 3142, 87 L.Ed.2d 171(1985).6

S 655Nevertheless, Congress did hear testi-mony about inadequate state remedies forpatent infringement when considering thePatent Remedy Act. The leading case re-ferred to in the congressional hearing wasChew v. California, 893 F.2d 331 (C.A.Fed.1990). In fact, Chew prompted Congress toconsider the legislation that became the Pat-ent Remedy Act. See H.R.Rep. No. 101–960,pt. 1, p. 7, and n. 20 (1990). The FederalCircuit held in that case that congressional

intent to abrogate state sovereign immunityunder the patent laws was not ‘‘unmistakablyclear,’’ as this Court had required in Atas-cadero. Chew, 893 F.2d, at 334.

The facts of Chew clearly support bothCongress’ decision and authority to enact thePatent Remedy Act. Marian Chew had in-vented a method for testing automobile en-gine exhaust emissions and secured a patenton her discovery. Her invention was primar-ily used by States and other governmentalentities. In 1987, Chew, an Ohio resident,sued the State of California in federal courtfor infringing her patent. California filed amotion to dismiss on Eleventh Amendmentgrounds, which the District Court granted.The Federal Circuit affirmed, id., at 332,expressly stating that the question whetherChew had a remedy under California law ‘‘isa question not before us.’’ Nevertheless, itimplied that its decision would have been thesame even if Chew were left without anyremedy. Id., at 336. During its hearing onthe Patent Remedy Act, Congress heard tes-timony about the Chew case. ProfessorMerges stated that Chew might not havebeen able to draft her infringement suit as atort claim. ‘‘This might be impossible, o[r] atleast S 656difficult, under California law. Con-sequently, relief under [state statutes] maybe not be a true alternative avenue of recov-ery.’’ House Hearing 33.7

patent infringers are put on notice that theirconduct may be actionable before an infringe-ment suit is filed. ‘‘The first step in enforcing apatent is usually to send a cease-and-desist orcharge-of-infringement letter.’’ Pokotilow & Sie-gal, Cease and Desist Letters: The Legal Pitfallsfor Patentees, 4 Intellectual Property Strategist,No. 3, p. 1 (1997).

6. The Chairman of the House Subcommittee con-sidering the Patent Remedy Act, RepresentativeKastenmeier, engaged in the following dialoguewith William Thompson, President of the Ameri-can Intellectual Property Law Association, aboutwhether States were definitively immune fromsuit under the Eleventh Amendment followingthe Federal Circuit’s recent decision in Chew v.California, 893 F.2d 331 (1990):

‘‘Mr. KASTENMEIER. You mentioned that you donot see the likelihood of further cases in this areasince the Atascadero and Chew cases seem to befairly definitive on this question, unless therewere in fact remedial legislation. Do you antici-pate that remedial legislation, such as the bill

before us, if passed into law, would be the sub-ject of litigation?

‘‘Mr. THOMPSON. No, I think it would be veryclear. Your legislation is very clearly drawn. Itseems to match the tests set forth in Atascaderoof making it very clear that the patent statute isone that would qualify as an abrogation area[sic] in the 11th amendment.

‘‘I can never guarantee exactly how attorneysare going to read statutes, Mr. Chairman, but allof the sane ones would not bring an action.’’Hearing before the Subcommittee on Courts, In-tellectual Property, and the Administration ofJustice of the House Committee on the Judiciary,101st Cong., 2d Sess., 60 (1990) (House Hear-ing).

7. Merges continued: ‘‘Another problem with thisapproach is that it assumes that such state lawremedies will be available in every state in whichthe patentee’s product is sold. This may or maynot be true. In any event, requiring a potentialplaintiff (patentee) to ascertain the validity of herclaims under the differing substantive and proce-


527 U.S. 658

Congress heard other general testimonythat state remedies would likely be insuffi-cient to compensate inventors whose patentshad been infringed. The Acting Commis-sioner of Patents stated: ‘‘If States and theirinstrumentalities were immune from suit infederal court for patent infringement, patentholders would be forced to pursue uncertain,perhaps even non-existent, remedies underState law.’’ Id., at 15. The legislative rec-ord references several cases of patent in-fringement involving States. See PaperlessAccounting, Inc. v. Mass Transit Adminis-tration, Civil No. HAR 84–2922 (D.Md.1985)(cited in House Hearing 56); Hercules, Inc.v. Minnesota State Highway Dept., 337F.Supp. 795 (D.Minn.1972) (House Hearing51); Lemelson v. Ampex Corp., 372 F.Supp.708 (N.D.Ill.1974) (same).

In addition, Congress found that state in-fringement of patents was likely to increase.H.R.Rep. No. 101–960, pt. 1, at 38. TheCourt’s opinion today dismisses this ratio-nale: ‘‘At most, Congress heard testimonythat patent infringement by States mightincrease in the future and acted to head offthis speculative harm.’’ Ante, at 2208 (cita-tions omitted). In fact, States and theirinstrumentalities, especially state universi-ties, have been involved in many patent casessince 1992. See Regents of Univ. of Minn. v.Glaxo Welcome, Inc., 44 F.Supp.2d 998(D.Minn.1999) (declaratory S 657judgment ac-tion filed by the University of Minnesota);University of Colo. Foundation, Inc. v.American Cyanamid Co., 974 F.Supp. 1339(D.Colo.1997) (patent infringement action

filed by University of Colorado); Gen–Probe,Inc. v. Amoco Corp., Inc., 926 F.Supp. 948(S.D.Cal.1996) (suit filed against various par-ties, alleging, inter alia, that Regents of theUniversity of California induced patent in-fringement by Amoco); Genentech v. Regentsof Univ. of Cal., 143 F.3d 1446 (C.A.Fed.1998) (declaratory judgment suit filed byGenentech); Ciba–Geigy v. Alza Corp., 804F.Supp. 614 (D.N.J.1992) (counterclaimbrought by Alza against Regents of the Uni-versity of California).

Furthermore, States and their instrumen-talities are heavily involved in the federalpatent system.8 The United States Patentand Trademark Office issued more than 2,000patents to universities (both public and pri-vate) in 1986 alone. Chakansky, Patent Pro-files, 13 Computer Law Strategist, No. 9, p. 8(1997). Royalty earnings from licenses atUnited States universities totaled $273.5 mil-lion in 1995, a 12% increase over the prioryear. 2 Eckstrom’s Licensing in Foreignand Domestic Operations § 11.06 (D. Epsteined.1998). The State of Florida has obtainedover 200 United States patents since thebeginning of 1995. Brief for New York In-tellectual Property Law Association as Ami-cus Curiae 2. All 50 States own or haveobtained patents. Brief for United States 44.

It is true that, when considering the Pat-ent Remedy Act, Congress did not review theremedies available in each State for patentinfringements and surmise what kind of re-covery S 658a plaintiff might obtain in a tortsuit in all 50 jurisdictions.9 See ante, at

dural laws of the fifty states may well prove avery substantial disincentive to the commence-ment of such suits. Moreover, it would vitiate amajor goal of the federal intellectual propertysystem: national uniformity. In short, theseremedies are simply no substitute for patent in-fringement actions.’’ Id., at 34.

8. See generally Dueker, Biobusiness on Campus:Commercialization of University–DevelopedBiomedical Technologies, 52 Food & Drug L.J.453 (1997); Bertha, Intellectual Property Activi-ties in U.S. Research Universities, 36 IDEA: J.L.& Tech. 513 (1996); Eisenberg, Public Researchand Private Development: Patents and Technolo-gy Transfer in Government–Sponsored Research,82 Va. L.Rev. 1663 (1996).

9. To the extent that a majority of this Court findsthis factor dispositive, there is hope that the

Copyright Remedy Clarification Act of 1990 maybe considered ‘‘appropriate’’ § 5 legislation.The legislative history of that Act includes manyexamples of copyright infringements by States—especially state universities. See Hearings onH.R. 1131 before the Subcommittee on Courts,Intellectual Property, and the Administration ofJustice of the House Committee on the Judiciary,101st Cong., 1st Sess., 93, 148 (1989); Hearingon S. 497 before the Subcommittee on Patents,Copyrights, and Trademarks of the Senate Com-mittee on the Judiciary 101st Cong., 1st Sess.,148 (1989). Perhaps most importantly, theHouse requested that the Register of Copyrightsprepare a study, which he described in his trans-mittal letter as, ‘‘a factual inquiry about enforce-ment of copyright against state governments andabout unfair copyright licensing practices, if any,with respect to state government use of copy-


2209. But, it is particularly ironic that theCourt should view this fact as support for itsholding. Given that Congress had long agopre-empted state jurisdiction over patent in-fringement cases, it was surely reasonablefor Congress to assume that such remediessimply did not exist.10 Furthermore, it iswell known that not all States have S 659waivedtheir sovereign immunity from suit,11 andamong those States that have, the contoursof this waiver vary widely.12

Even if such remedies might be availablein theory, it would have been ‘‘appropriate’’for Congress to conclude that they would notguarantee patentees due process in infringe-ment actions against state defendants. Statejudges have never had the exposure to pat-ent litigation that federal judges have experi-enced for decades, and, unlike infringementactions brought in federal district courts,their decisions would not be reviewable in theCourt of Appeals for the Federal Circuit.Surely this Court would not undertake thetask of reviewing every state-court decisionthat arguably misapplied patent law.13 Andeven if 28 U.S.C. § 1338 is amended or con-strued to permit state courts to entertaininfringement actions when a State is named

as a defendant, given the Court’s opinion inAlden v. Maine, 527 U.S. 706, 119 S.Ct. 2240,144 L.Ed.2d 636 (1999), it is by no meansclear that state courts could be required tohear these cases at all. Id., at 712, 119 S.Ct.2240.

S 660Even if state courts elected to hearpatent infringement cases against state enti-ties, the entire category of such cases wouldraise questions of impartiality. This concernunderlies both the constitutional authoriza-tion of diversity jurisdiction and the statuto-ry provisions for removal of certain casesfrom state to federal courts, 28 U.S.C. § 1441et seq. The same concern justified JohnMarshall’s narrow construction of the Elev-enth Amendment in Cohens v. Virginia, 6Wheat. 264, 5 L.Ed. 257 (1821). As he therenoted, when there is a conflict between aState’s interest and a federal right, it ‘‘wouldbe hazarding too much to assert, that thejudicatures of the States will be exempt fromthe prejudices by which the legislatures andpeople are influenced, and will constitute per-fectly impartial tribunals.’’ Id., at 386, 5L.Ed. 257.

righted works. I have also prepared an in-depthanalysis of the current state of Eleventh Amend-ment law and the decisions relating to copyrightliability of states, including an assessment of anyconstitutional limitations on Congressional ac-tion. Finally, as you requested, the AmericanLaw Division of the Congressional Research Ser-vice has conducted a 50 state survey of the stat-utes and case law concerning waiver of statesovereign immunity.’’ Register of Copyrights, R.Oman, Copyright Liability of States and the Elev-enth Amendment (June 1988) (transmittal letter).This report contains comments from industrygroups, statistics, and legal analysis relating tocopyright violations, actual and potential, byStates. See id., at 5, 12, 14, 93–95.

10. After the 1992 Act was passed, the FloridaSupreme Court did hold that a patentee mightbring some sort of ‘‘takings’’ claim in a statecourt, or might seek a legislative remedy. SeeJacobs Wind Electric Co. v. Florida Dept. ofTransp., 626 So.2d 1333 (1993). Given the un-ambiguous text of 28 U.S.C. § 1338, there is (a)no reason why Congress could have anticipatedthat decision, and (b) good reason to believe awell-motivated court may have misinterpretedfederal law. See Jacobs Wind, 626 So.2d, at1337–1338 (Harding, J., dissenting).

11. See, e.g., Ala.Code § 41–9–60 (1991) (claimsmay only be brought administratively); W. Va.Const., Art. VI, § 35 (‘‘The State of West Virginiashall never be made a defendant in any court oflaw or equity TTT’’).

12. See, e.g., Colo.Rev.Stat. § 24–10–106 (1998)(waiving immunity in tort claims only for injuriesresulting from operation of a motor vehicle, op-eration of a public hospital or a correctionalfacility, the dangerous condition of a publicbuilding, the dangerous condition of a publichighway or road, a dangerous condition causedby snow or ice, or from the operation of anypublic utility facility); Minn.Stat. Ann. § 3.736(Supp.1998–1999) (waiver of immunity invalidwhen loss arises from state employee who exer-cises due care or performance or failure to per-form discretionary duty); Md. Cts. & Jud. Proc.Code Ann. § 5–522(a)(5) (1998) (immunity notwaived if a claim from a single occurrence ex-ceeds $100,000).

13. In the House Report advocating the creationof the Federal Circuit, Congress noted, ‘‘The in-frequency of Supreme Court review of patentcases leaves the present judicial system withoutany effective means of assuring even-handednessnationwide in the administration of the patentlaws.’’ H.R.Rep. No. 97–312, at 22.


527 U.S. 662

Finally, this Court has never mandatedthat Congress must find ‘‘ ‘widespread andpersisting deprivation of constitutionalrights,’ ’’ ante, at 2210, in order to employ its§ 5 authority. It is not surprising, therefore,that Congress did not compile an extensivelegislative record analyzing the due process(or lack thereof) that each State might affordfor a patent infringement suit retooled as anaction in tort. In 1992, Congress had noreason to believe it needed to do such athing; indeed, it should not have to do sotoday.

IIIIn my view, Congress had sufficient evi-

dence of due process violations, whether ac-tual or potential, to meet the requirement weexpressed in City of Boerne that Congresscan act under § 5 only to ‘‘remedy or preventunconstitutional actions.’’ See 521 U.S., at519., 138 L.Ed.2d 624 The Court’s opiniontoday threatens to read Congress’ power topass prophylactic legislation out of § 5 alto-gether; its holding is unsupported by City ofBoerne and in fact conflicts with our reason-ing in that case.

In City of Boerne we affirmed the well-settled principle that the broad sweep ofCongress’ enforcement power enScompasses661

legislation that deters or remedies constitu-tional violations, even if it prohibits conductthat is not itself unconstitutional, and even ifit intrudes into spheres of autonomy previ-ously reserved to the States. Id., at 518, 117S.Ct. 2157. Nevertheless, we held that theenactment of the Religious Freedom Resto-ration Act of 1993 (RFRA) was not an ‘‘ap-propriate’’ exercise of Congress’ enforcementpower under § 5 of the Fourteenth Amend-ment. Id., at 536, 117 S.Ct. 2157.

By enacting RFRA Congress sought tochange the meaning of the Free ExerciseClause of the First Amendment as it hadbeen interpreted by this Court, rather thanto remedy or to prevent violations of theClause as we had interpreted it. We heldthat RFRA had crossed ‘‘the line betweenmeasures that remedy or prevent unconstitu-tional actions and measures that make asubstantive change in the governing law.’’Id., at 519–520, 117 S.Ct. 2157. Congress’

§ 5 power is ‘‘corrective or preventive, notdefinitional.’’ Id., at 525, 117 S.Ct. 2157.Our extensive review of the legislative histo-ry of RFRA made it clear that the statutecould not be fairly characterized as a remedi-al measure, but rather was a legislative at-tempt ‘‘to interpret and elaborate on themeaning’’ of the Free Exercise Clause. Bydoing so, Congress had violated the principlethat the ‘‘power to interpret the Constitutionin a case or controversy remains in the Judi-ciary.’’ Id., at 524, 117 S.Ct. 2157.

The difference between the harm targetedby RFRA and the harm that motivated theenactment of the Patent Remedy Act is strik-ing. In RFRA Congress sought to overrulethis Court’s interpretation of the FirstAmendment. The Patent Remedy Act, how-ever, was passed to prevent future violationsof due process, based on the substantiatedfear that States would be unable or unwillingto provide adequate remedies for their ownviolations of patent holders’ rights. Con-gress’ ‘‘wide latitude’’ in determining remedi-al or preventive measures, see id., at 520, 117S.Ct. 2157, has suddenly become very narrowindeed.

S 662City of Boerne also identified a ‘‘propor-tionality’’ component to ‘‘appropriate’’ legisla-tion under § 5. Our opinion expressly recog-nized that ‘‘preventive rules are sometimesappropriate’’ if there is

‘‘a congruence between the means usedand the ends to be achieved. The appro-priateness of remedial measures must beconsidered in light of the evil presented.See South Carolina v. Katzenbach, 383U.S., at 308, 86 S.Ct. 803. Strong mea-sures appropriate to address one harmmay be an unwarranted response to anoth-er, lesser one. Id., at 334, 86 S.Ct. 803.’’Id., at 530, 117 S.Ct. 2157.

In RFRA we found no such congruence, bothbecause of the absence of evidence of wide-spread violations that were in need of re-dress, and because the sweeping coverage ofthe statute ensured ‘‘its intrusion at everylevel of government, displacing laws and pro-hibiting official actions of almost every de-scription and regardless of subject matter.’’Id., at 532, 117 S.Ct. 2157.


Again, the contrast between RFRA andthe Act at issue in this case could not bemore stark. The sole purpose of this amend-ment is to abrogate the States’ sovereignimmunity as a defense to a charge of patentinfringement. It has no impact whatsoeveron any substantive rule of state law, butmerely effectuates settled federal policy toconfine patent infringement litigation to fed-eral judges. There is precise congruencebetween ‘‘the means used’’ (abrogation ofsovereign immunity in this narrow categoryof cases) and ‘‘the ends to be achieved’’ (elim-ination of the risk that the defense of sover-eign immunity will deprive some patentees ofproperty without due process of law).

That congruence is equally precise wheth-er infringement of patents by state actors israre or frequent. If they are indeed unusual,the statute will operate only in those rarecases. But if such infringements are com-mon, or should become common as stateactivities in the commercial S 663arena in-crease, the impact of the statute will likewiseexpand in precise harmony with the growthof the problem that Congress anticipated andsought to prevent. In either event the stat-

ute will have no impact on the States’ en-forcement of their own laws. None of theconcerns that underlay our decision in City ofBoerne are even remotely implicated in thiscase.

The Patent Remedy Act merely putsStates in the same position as all privateusers of the patent system,14 and in virtuallythe same posture as the United States.15

‘‘When S 664Congress grants an exclusive rightor monopoly, its effects are pervasive; nocitizen or State may escape its reach.’’ Gold-stein v. California, 412 U.S. 546, 560, 93S.Ct. 2303, 37 L.Ed.2d 163 (1973) (analyzingCopyright Clause). Recognizing the injus-tice of sovereign immunity in this context,the United States has waived its immunityfrom suit for patent violations. In 1910,Congress enacted a statute entitled, ‘‘An Actto provide additional protection for owners ofpatents of the United States.’’ Ch. 423, 36Stat. 851. The Act provided that owners ofpatents infringed by the United States ‘‘mayrecover reasonable compensation for suchuse by suit in the Court of Claims.’’ TheUnited States has consistently maintainedthis policy for the last 90 years. See 28U.S.C. § 1498.

14. As the Senate said in its Report on the Act,‘‘the current state of the law leaves the protectionafforded to patent and trademark holders depen-dant on the status of the infringing party. Apublic school such as UCLA can sue a privateschool such as USC for patent infringement, yetUSC cannot sue UCLA for the same act.’’ S.Rep.No. 102–280, p. 9 (1992).

15. The majority’s assertion that ‘‘the Patent Rem-edy Act does not put States in the same positionas the United States,’’ ante, at 2211, n. 11, ismisleading. In the case of private infringementsuits, treble damages are available only ‘‘wherethe infringer acted in wanton disregard of thepatentee’s patent rights, that is, where the in-fringement is willful.’’ Read Corp. v. Portec, Inc.,970 F.2d 816, 826 (C.A.Fed.1992) (reversing theDistrict Court’s award of enhanced damages).‘‘On the other hand, a finding of willful infringe-ment does not mandate that damages be en-hanced, much less mandate treble damages.’’Ibid. Attorney’s fees are available only in ‘‘excep-tional’’ circumstances. 35 U.S.C. § 285. Onceit has determined that the case is ‘‘exceptional,’’the district court has discretion whether or not toaward attorney’s fees and the fees ‘‘must be

reasonable.’’ Gentry Gallery, Inc. v. BerklineCorp., 134 F.3d 1473, 1480 (C.A.Fed.1998). Inaddition, attorney’s fees are available in limitedcircumstances in suits against the United States.Ante, at 2211, n. 11.

The remaining differences between the UnitedStates’ waiver of sovereign immunity and thePatent Remedy Act are supported by quintessen-tially federal concerns. This Court has foundthat ‘‘the procurement of equipment by the Unit-ed States is an area of uniquely federal interest.’’Boyle v. United Technologies Corp., 487 U.S. 500,507, 108 S.Ct. 2510, 101 L.Ed.2d 442 (1988).Indeed, the importance of the federal interest inmilitary procurement led this Court to fashionthe doctrine of ‘‘Government contractors’ immu-nity’’ without waiting for Congress to considerthe question. Id., at 531, 108 S.Ct. 2510 (STE-VENS, J., dissenting). Injunctions are not avail-able against the United States because of theFederal Government’s extensive investment inpatented military inventions. ‘‘[T]he right to en-join the officer of the United States TTT virtuallyasserts the existence of a judicial power to closeevery arsenal of the United States.’’ Crozier v.Krupp A.G., 224 U.S. 290, 302, 32 S.Ct. 488, 56L.Ed. 771 (1912).

2219COLLEGE SAV. v. FLORIDA PREPAID POSTSECONDARYCite as 119 S.Ct. 2219 (1999)

527 U.S. 666

In my judgment, the 1992 Act is a para-digm of an appropriate exercise of Congress’§ 5 power.16

IVFor these reasons, I am convinced that the

1992 Act should be upheld even if full respectis given to the Court’s recent cases cloakingthe States with increasing protection fromcongressional legislation. I do, however,note my continuing dissent from the Court’saggressive sovereign immunity jurispru-dence; today, this Court once again demon-strates itself to be the champion of States’rights. In this case, it seeks to guaranteerights the States themselves did not expressany particular desire in possessing: duringCongress’ hearings on the Patent RemedyAct, although invited to do so, S 665the Stateschose not to testify in opposition to the abro-gation of their immunity.17

The statute that the Court invalidates to-day was only one of several ‘‘clear state-ments’’ that Congress enacted in response tothe decision in Atascadero State Hospital v.Scanlon, 473 U.S. 234, 105 S.Ct. 3142, 87L.Ed.2d 171 (1985).18 In each of those clari-fications Congress was fully justified in as-suming that it had ample authority to abro-gate sovereign immunity defenses to federalclaims, an authority that the Court squarelyupheld in Pennsylvania v. Union Gas Co.,491 U.S. 1, 109 S.Ct. 2273, 105 L.Ed.2d 1(1989). It was that holding—not just the‘‘plurality opinion,’’ see ante, at 2205—thatwas overruled in Seminole Tribe of Fla. v.Florida, 517 U.S. 44, 116 S.Ct. 1114, 134L.Ed.2d 252 (1996). The full reach of thatcase’s dramatic expansion of the judge-madedoctrine of sovereign immunity is unpredict-able; its dimensions are defined only by thepresent majority’s perception of constitution-al penumbras rather than constitutional text.See id., at 54, 116 S.Ct. 1114 (acknowledging

‘‘ ‘we have understood the Eleventh Amend-ment to stand not so much for what it says’ ’’(citation omitted)). Until this expansive andjudicially crafted protection of States’ rightsruns its course, I shall continue to registermy agreement with the views expressed inthe Seminole dissents and in the scholarlycommentary on that case.

I respectfully dissent.

,

527 U.S. 666, 144 L.Ed.2d 605

S 666COLLEGE SAVINGSBANK, Petitioner,

v.

FLORIDA PREPAID POSTSECONDARYEDUCATION EXPENSE BOARD, et

al.No. 98–149.

Argued April 20, 1999.

Decided June 23, 1999.

Bank which sold deposit contracts forfunding college education brought actionagainst Florida Prepaid Postsecondary Edu-cation Expense Board alleging unfair compe-tition under Lanham Act, based on Board’salleged false advertising. Federal govern-ment intervened to defend constitutionalityof applying Lanham Act to the states. TheUnited States District Court for the Districtof New Jersey, Garrett E. Brown, Jr., J., 948F.Supp. 400, dismissed action, and bank andgovernment appealed. The Third CircuitCourt of Appeals, 131 F.3d 353, affirmed.

16. I am also persuaded that a State like Floridathat has invoked the benefits of the federal patentsystem should be deemed to have waived anydefense of sovereign immunity in patent litiga-tion. The reasoning in Justice BREYER’s dissentin College Savings Bank v. Florida Prepaid Post-secondary Ed. Expense Bd., 527 U.S., at 693–699,119 S.Ct. 2219, applies with special force to thiscase.

17. H.R.Rep. No. 101–960, p. 7 (1990) (‘‘The Sub-committee invited State attorneys general and

representatives of State universities to testify, butnone made themselves available for the hear-ing’’).

18. See, e.g., 42 U.S.C. § 12202 (Americans withDisabilities 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 of1993); 15 U.S.C. § 1125(a) (Trademark RemedyClarification Act); 20 U.S.C. § 1403(a) (Individu-als with Disabilities Education Act); 17 U.S.C.§ 511 (Copyright Remedy Clarification Act).

527 u.s. 627 florida prepaid postsecondary v. college · pdf filedo not contend that their...

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