Adv.Pat.Sem. 2005-rjm Week 04 1

Agenda – Week 4- 9/27/05

• Con. Law: 11th Amendment. State Sovereign Immunity

• Con. Law: 7th Amendment. Trial by Jury.

• Federal Courts: Whose Precedent?

• Civil Procedure: Writ of Mandamus. Why not just appeal?

Adv.Pat.Sem. 2005-rjm Week 04 2

Eleventh Amendment – Precedent Issues

Precedent regarding

- leave to amend complaint: Regional Circuit

- whether the state WAIVED: Federal Circuit

- the extent of the waiver: Federal Circuit

Adv.Pat.Sem. 2005-rjm Week 04 3

Eleventh Amendment – Substance

The Judicial power of the United States shall not be construed to extend to

any suit in law or equity, commenced or prosecuted against one of the United States

by Citizens of another State, or by Citizens or Subjects of any Foreign State.

But why not a suit against a State brought by one of its OWN citizens?

Adv.Pat.Sem. 2005-rjm Week 04 4

Eleventh Amendment & Compulsory Counterclaims

Adv.Pat.Sem. 2005-rjm Week 04 5

Civil Procedure: Compulsory Counterclaims

Rule 13.  Counterclaim and Cross-Claim (a) Compulsory Counterclaims.A pleading shall state as a counterclaim any claim which

at the time of serving the pleading the pleader has against any opposing party, if it

arises out of the transaction or occurrence that is the subject matter of the opposing party's claim and

does not require for its adjudication the presence of third parties of whom the court cannot acquire jurisdiction. But the pleader need not state the claim if

(1) at the time the action was commenced the claim was the subject of another pending action, or

(2) the opposing party brought suit upon the claim by attachment or other process by which the court did not acquire jurisdiction to render a personal judgment on that claim, and the pleader is not stating any [other kind of] counterclaim under this Rule 13.

Adv.Pat.Sem. 2005-rjm Week 04 6

Seventh Amendment – Substance

In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury,

shall be otherwise re-examined in any Court of the United States,

than according to the rules of the common law.

Adv.Pat.Sem. 2005-rjm Week 04 7

Seventh Amendment – Alignment of Parties, Issues of

Law or Equity, Etc.

Compare Tech. Licensing to Tegal, and maybe Lockwood

Adv.Pat.Sem. 2005-rjm Week 04 8

Injunctions against Parallel Litigation

28 USC 1292 (a)(1)The courts of appeals shall have jurisdiction of appeals from

. . . Interlocutory orders of the district courts of the United

States . . . granting, continuing, modifying, refusing or dissolving

injunctions, or refusing to dissolve or modify injunctions . . . .

Adv.Pat.Sem. 2005-rjm Week 04 9

Injunctions against Parallel Litigation

Genentech v Eli Lilly (p.3.1)

Should first-to-file always win? Should we favor the AFFIRMATIVE plaintiff over the defensive (DJ) plaintiff? Why or why not?

Precedent Question: Why Federal and not Regional on the question of whether the Fed. Cir. has jurisdiction to hear the appeal?

Adv.Pat.Sem. 2005-rjm Week 04 10

Injunctions against Parallel Litigation

Chiron’s big mistakes- didn’t appeal the denial to stay/transfer

- was up against ABUSE OF DISCRETION standard

- too many (weak?) arguments

Adv.Pat.Sem. 2005-rjm Week 04 11

NEXT WEEK: NO CLASS. HAVE A GOOD TIME!

TWO WEEKS FROM TODAY: Two Guests

Kendra Mattison ’01 – the BIO Innovation Report

Tony Cho ’91 and Ted Olds – Markman hearings, orders, and appeals therefrom