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Baum Research and Development Company Inc., et al. v. Massachusetts at Lowell

October 10, 2007

United States
Court of Appeals for the Federal Circuit

[1] Case No.: 2006-1330

[2] Case Name:

BAUM RESEARCH AND DEVELOPMENT COMPANY INC., ET AL. V. MASSACHUSETTS AT LOWELL

Newman, Friedman, Moore

[3] Date of Decision: October 10, 2007

[4] PLAINTIFF INVENTOR'S SUIT FOR BREACH OF CONTRACT AND PATENT INFRINGEMENT WAS PROPERLY BROUGHT IN UNITED STATES DISTRICT COURT WHERE DEFENDANT UNIVERSITY HAD WAIVED ITS ELEVENTH AMENDMENT IMMUNITY THROUGH A SPECIFIC CONTRACT PROVISION. [6] Key Words:
Licenses, Licensee Estoppel, Eleventh Amendment
[5] Patent No(s).: [7] Case Link:
http://www.cafc.uscourts.gov/opinions/06-1330.pdf
Procedural Background:
Summary of the Case:

Plaintiff Inventor sued Defendant State University in the Western District of Michigan for breach of contract and patent infringement. Defendant filed a motion to dismiss asserting Eleventh Amendment immunity. The District Court denied the University's motion to dismiss, ruling that any immunity was waived through a specific provision in the patent license agreement. The Federal Circuit affirmed.

Patent

Plaintiff Inventor sued Defendant State University in the Western District of Michigan for breach of contract and patent infringement.  Defendant filed a motion to dismiss asserting Eleventh Amendment immunity.  The District Court denied the University's motion to dismiss, ruling that any immunity was waived through a specific provision in the patent license agreement.  The Federal Circuit affirmed. 

 The District Court applied the Supreme Court standard, most recently reaffirmed in College Savings Bank v. Florida Prepaid Postsecondary Education Expense Bd, 527 U.S. 666 (1999), which holds that a state waives its immunity when it clearly declares its intention to sumbit to federal jurisdiction if the intention is "unequivocally expressed."  Id. at 676.  The District Court held, and the Federal Circuit affirmed, that the terms of the contract/patent license agreement were clear, and that the University agreed to submit to the jurisdiction of a federal court in Michigan as to disputes arising from the contract.

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