Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank

PETITIONER:Florida Prepaid Post-Secondary Education Expense Board
RESPONDENT:College Savings Bank
LOCATION:Elizabeth Township, Allegheny County

DOCKET NO.: 98-531
DECIDED BY: Rehnquist Court (1986-2005)
LOWER COURT: United States Court of Appeals for the Federal Circuit

CITATION: 527 US 627 (1999)
ARGUED: Apr 20, 1999
DECIDED: Jun 23, 1999

Jonathan A. Glogau – Tallahassee, Florida; argued the cause for the petitioner
Kevin J. Culligan – Argued the cause for College Savings Bank
Seth P. Waxman – Argued the cause for the United States

Facts of the case

Immediately after the Patent and Plant Variety Protection Remedy Clarification Act (Act) changed patent laws to abrogate state’s sovereign immunity, College Savings Bank (College) filed a patent infringement suit against Florida Prepaid Postsecondary Education Expense Board (Florida Prepaid), a Florida state entity. Florida Prepaid asked that College’s suit be dismissed and that the Act be declared unconstitutional, based on Seminole Tribe of Florida v. Florida (517 US 44) which upheld state sovereign immunity. The United States joined College looking to uphold the Act’s constitutionality. After agreeing with College, the District Court denied Florida Prepaid’s dismissal motion. When the Federal Circuit affirmed, Florida Prepaid appealed and the Supreme Court granted certiorari.


Did nullification of state sovereign immunity, under the Patent and Plant Variety Protection Remedy Clarification Act, constitute valid legislation?

Media for Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank

Audio Transcription for Oral Argument – April 20, 1999 in Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank

Audio Transcription for Opinion Announcement – June 23, 1999 in Florida Prepaid Post-Secondary Education Expense Board v. College Savings Bank

William H. Rehnquist:

I have the opinion of the Court to announce in No. 98-531, Florida Prepaid versus College Savings.

In 1992, Congress amended the patent laws and expressly abrogated the immunity of the States’ from claims of patent infringement.

The respondent College Savings, which Justice Scalia described in his announcement, then sued the State of Florida for patent infringement, and the State of Florida argued that Congress exceeded its power in abrogating the State’s immunity.

The United States intervened to defend the constitutionality of the law.

The Court of Appeals held that Congress had validly abrogated the State sovereign immunity from the infringement suits pursuant to its authority under Section 5 of the Fourteenth Amendment, and we granted certiorari and we now reverse.

Congress justified its abrogation of State immunity from patent infringement suits under three sources of constitutional authority: The Patent Clause, the Commerce Clause and Article V of the Fourteenth Amendment.

Our decision in Seminole Tribe against Florida three years ago makes it clear that Congress may not abrogate State sovereignty immunity pursuant to its Article I powers, and hence the Patent Clause and the Commerce Clause cannot support the legislation here.

Recognizing this, the respondents nonetheless argued that the amendment was intended to secure the Fourteenth Amendment’s protections against depravation of property without due process of law.

In the case of City of Boerne against Flores however, decided two years ago, we held it for Congress to invoke its enforcement powers under the Fourteenth Amendment, it must identify conduct transgressing the Fourteenth Amendment’s substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct.

Yet in abrogating State immunity from infringement suits, Congress identified no pattern of patent infringement on the part of the State, let alone a pattern of depriving patent owners of their property without due process of law.

Patent infringement by itself simply does not violate the Fourteenth Amendment even when done by a State and Congress developed no evidence of some unconstitutional conduct on the part of States.

Despite this lack of support, Congress enacted a remedial scheme that expose States to expensive liability for infringement and did nothing to tailor this scheme to reach at any conduct that might have violated the Fourteenth Amendment.

The statutes apparent and more basic aims were to provide a uniform remedy for patent infringement and place the States on the same footing as private parties under that regime.

These are proper Article I concerns, but not Fourteenth Amendment’s concerns, and just as Seminole tribe precludes Congress from enacting such legislation under Article I, the City of Boerne does the same under the Fourteenth Amendment in this case.

Justice Stevens has filed a dissenting opinion in which Justices Souter, Ginsburg and Breyer join.

John Paul Stevens:

Aticle I of the Constitution provides that Congress shall have power to promote the progress of science and useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

Pursuant to that expressed allegation of power, Congress has authorized the issuance of patents and litigation to protect patents and patentees that may only be brought in a Federal Court.

In 1992, Congress clarified that jurisdictional grant by expressly authorizing patent infringement actions against States and State instrumentalities.

Given the fact that all 50 states are active participants in the patent system, Florida alone has obtained over 200 patents since the 1992 Act was passed.

It is not only incongruous but potentially harmful to the uniform administration of this branch of federal law to conclude that that the States might simultaneously enjoy the benefits of that system and relay on the defense of sovereign immunity when charged with lawful patent infringement.

If Congress does not have the power to provide a remedy for the patentee in a case like this, and if it cannot compel State Courts to entertain suits of this kind, as the court held in the case that Justice Kennedy announced, “There is a gapping hole in the law of patents, that I am quite sure the framers of the Constitution did not envision.”

That gapping hole is the product of this Court’s decision three years ago in the Seminole Tribe case.

Prior to that decision this Court had never held that Congress power to compel states to comply with federal law was limited by the doctrine of sovereign immunity, it had of course repeatedly told Congress that statutes limiting state authority must contain a clear statement that Congress intended them to apply to the States.

The 1992 Act that is invalidated in this case is one of several that Congress enacted to comply with that requirement.

As applied by the court, the doctrine of sovereign immunity is an unjust doctrine because it denies a citizen, a remedy authorized by Congress to compel State instrumentalities to obey federal law.

The principal that “no man is above the law”, which applies to the President of the United States, as well as, to the lowest public servant, should apply equally to the states and their agents.

That is the central message of the unambiguous text of the second paragraph of Article VI of the Constitution which reads as follows: “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any state to the Contrary notwithstanding.”

It is this provision more than other that distinguishes the present Constitution from the Articles of Confederation that it replaced.

To which credit the court does claim that the doctrine of sovereign immunity has now applied, as compelled by the text of the Constitution.

It is a judge made doctrine, fashioned out of judicial perceptions of history the structure of the Constitution and a concern about making the states pay money damages when they violate federal law.

John Paul Stevens:

What is lacking in the pages and pages of writing about this product of judicial creativity is a clear statement of “why any sovereign should be privileged to disobey the laws of another sovereign”.

In the early fifteenth century, when Henry IV was the King of England, neither the fact that he might have been granted immunity from French Law by the King of France as a matter of comity, nor the fact that he did not have to explain why he could claim immunity from English Law, sheds any light at all, and why the majority of this Court now believes that the doctrine of sovereign immunity should constrain the power of the Congress of the United States.

The doctrine I fear is much like a mindless dragon that indiscriminately choose gapping holes in federal statutes.

Justice Holmes described such a dragon in his famous essay on ‘The Path of the Law’.

When you get the dragon out of his cave under the plain and in the day light you can count his teeth, and claws and see just what is his strength, but to get him out is only the first step, the next is either to kill him or to tame him and make him a useful animal.

For the rational study of the law the “black letter man” may be the man of the present, but the man of the future is the “man of statistics and the master of economics”.

It is revolting to have no better reason for a rule of law than so it was laid down in the time of Henry IV, it is still more revolting if the grounds upon which it was laid down have vanished long since and the rule simply persists from blind imitation of the past.

The past that the court has chosen to imitate today, is the brief period of confusion and crises when our new nation was governed by the Articles of Confederation.

Joined by Justices Souter, Ginsburg and Breyer, I respectfully dissent.