Filewrapper-old

Agreement to "submit to jurisdiction" is waiver of 11th Amendment immunity by state university
October 11, 2007

In a decision yesterday, the Federal Circuit held that a state university had waived its Eleventh Amendment immunity from suit. The university entered into an agreement with a "governing law" provision that stated that "all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan."

The court held that this provision "unequivocally expressed" the university's intent to waive its immunity to suit, and held that the suit could proceed.

Baum is the inventor of two patents relating testing baseball bats. He and his corporation entered into a license agreement with the University of Massachusetts regarding the patents that included a provision regarding the applicable law. That provision is set forth below:

III-3. Governing Law. This Agreement will be construed, interpreted and applied according to the laws of the State of Michigan and all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan.

After the agreement was signed, a dispute arose between the parties, and Baum sued the University for breach of contract and patent infringement. The University asserted immunity under the Eleventh Amendment. The district court held that immunity did not apply based on the above provision, and permitted the suit to continue. After trial on the breach of contract issue, the University again raised the issue, and the district court once again held immunity did not apply, but stayed further proceedings so the University could appeal the denial of immunity, as whether Eleventh Amendment immunity applies is appealable under the collateral order doctrine.

The Federal Circuit affirmed. First, the court noted that to waive immunity, a state must "clearly declare its intention to submit to federal jurisdiction," and that such intent must be "unequivocally expressed." Here, the University argued that the "Governing Law" provision was too vague to constitute such an unequivocal statement, and as a result, immunity should not be found. The court disagreed, finding the statement that the University would "submit to the jurisdiction of a federal court in Michigan" an adequately unequivocal statement to constitute waiver.

The University also advanced other novel arguments, such as that immunity may only be legislatively waived, and thus could not be waived via contract as was the case here. The Federal Circuit rejected this claim, as there was no assertion that the person in the Technology Transfer office of the University did not have the authority to enter into the contract. Essentially, the University argued that Baum should have to prove that the University acted legally in entering into the contract, a position rejected by the court, stating: "We discern no support for the thesis that the University's contract authority must be proved, when the University does not deny that authority." As a result, the district court's conclusion that immunity did not apply was affirmed.

This case presents an interesting issue for University Technology Transfer offices, and reminds those offices to make sure that contracts are carefully reviewed so that the University does not unintentionally waive its immunity from suit.

To read the full decision in Baum Research & Dev. Co. v. Univ. of Mass., click here.

Post has no comments.
Post a Comment




Captcha Image
Return to the Filewrapper Blog
  Newer Posts Older Posts  

Purpose

The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

Disclaimer

McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.

Captcha Image