Bringing Infringement Suit Waives Sovereign Immunity to Defenses

In University of Florida Research Foundation, Inc. v. General Electric Company, No. 18-1284 (Fed. Cir. Feb. 26, 2019), the Federal Circuit affirmed the district court’s grant of GE’s motion to dismiss UFRF’s allegations of infringement.

In 2017, UFRF sued GE alleging infringement of the ‘251 patent, which described a method and system for ‘integrat[ing] physiologic data from at least one bedside machine.” GE filed a motion to dismiss, arguing that the claims of the ‘251 patent were directed to ineligible subject matter under 35 U.S.C. § 101, which the district court granted.

On appeal, UFRF argued that the district court did not have subject matter jurisdiction to hear GE’s § 101 eligibility challenge because UFRF enjoyed sovereign immunity under the Eleventh Amendment. The Federal Circuit held that UFRF consented to federal court jurisdiction, thus waiving its Eleventh Amendment immunity, when it brought the infringement claim against GE. The Federal Circuit explained that the waiver of immunity extends not only to the cause of action but to any relevant defenses GE brought, including the §101 challenge.

After confirming subject matter jurisdiction on the §101 eligibility challenge, the Federal Circuit affirmed the district court’s finding that UFRF’s ‘251 patent was directed to an abstract idea.