A Constitutional Door Ajar: Applying the Ex parte Young Doctrine to Declaratory Judgment Actions Seeking State Patent Invalidity
James L. Lovsin | 2010 U. Ill. L. Rev. 265
"The State has no power to impart to [its officer] any immunity from responsibility to the supreme authority of the United States."
In 2007 alone, universities generated $2 billion in income by licensing their patents. As arms of the state, state universities license with sovereign immunity—state-owned patents are protected from judgments declaring them invalid. This Note proposes that this advantage can be removed by the application of the Ex parte Young doctrine. The author unpacks the doctrine element by element and shows that there are no obstacles to its application to declaratory judgment suits alleging the in-validity of state patents. First, the author explains that the doctrine’s remedial prong would be satisfied because universities create a justiciable controversy as to the validity of their patents when they offer licenses and because neither the Seminole Tribe detailed remedial scheme exception nor the Coeur d’Alene submerged lands exception applies. Second, the author illustrates that the doctrine’s constitutional sovereign immunity prong would be satisfied because patent invalidity is a vi-olation of federal law, and a declaration of patent invalidity is prospective relief. The author offers insight into why the issue has not yet been considered by the Federal Circuit, focusing on the incentives of both the universities and their potential licensees. Finally, the author recommends that the Federal Circuit, en banc, conclude that the Ex parte Young doctrine is avail-able for declarations of state patent invalidity because it is doctrinally sound and justified by policy.