BAUM RESEARCH AND DEVELOPMENT COMPANY, INC., and CHARLES S. BAUM v. University of Massachusetts at Lowell

United States Court of Appeals for the Federal Circuit
2006-1330
BAUM RESEARCH AND DEVELOPMENT COMPANY, INC.,
and CHARLES S. BAUM,
Plaintiffs-Appellees,
v.
UNIVERSITY OF MASSACHUSETTS AT LOWELL,
Defendant-Appellant.
Andrew Kochanowski, Sommers Schwartz, P.C., of Southfield, Michigan, argued
for plaintiffs-appellees.
William H. Hurd, Troutman Sanders LLP, of Richmond, Virginia, argued for
defendant-appellant.
Appealed from: United States District Court for the Western District of Michigan
Magistrate Judge Ellen S. Carmody

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United States Court of Appeals for the Federal Circuit
2006-1330
BAUM RESEARCH AND DEVELOPMENT COMPANY, INC.,
and CHARLES S. BAUM,
Plaintiffs-Appellees,
v.
UNIVERSITY OF MASSACHUSETTS AT LOWELL,
Defendant-Appellant.
__________________________
DECIDED: October 10, 2007
__________________________
Before NEWMAN, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and MOORE, Circuit
Judge.
Opinion for the court filed by Circuit Judge NEWMAN. Circuit Judge MOORE concurs in
the judgment, and joins Part A but not Part B of the opinion.
NEWMAN, Circuit Judge.
The issue is whether the University of Massachusetts at Lowell ("the University")
waived its Eleventh Amendment immunity by expressly agreeing to federal jurisdiction in a
patent license agreement. The district court so held.1 On interlocutory review, we affirm
the district court's judgment.
1 Baum Research & Dev. Co. v. University of Massachusetts at Lowell, No.
1:02-CV-674, 2006 WL 461224 (W.D. Mich. Feb. 24, 2006).

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BACKGROUND
Charles S. Baum is the inventor of the two United States Patents in suit, concerning
a device for testing baseball bats of varying construction. On December 24, 1998 the
University executed a "Confidential License Agreement" with Mr. Baum and The Baum
Research and Development Corporation (collectively "Baum"). The agreement includes the
following provision:
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.
The contract was executed for the University as:
UNIVERSITY OF MASSACHUSETTS AT LOWELL
[signature of Louise G. Griffin]
By: Louise G. Griffin
Title: Assoc. Director, External Funding
Tech Transfer & Partnering
Dispute arose between Baum and the University, and on September 19, 2002 Baum filed
suit in the United States District Court for the Western District of Michigan, charging the
University with breach of contract and patent infringement. The University asserted
immunity from suit based on the Eleventh Amendment.2 The district court denied the
University's motion to dismiss on this ground, ruling that any immunity was waived by
contract provision III-3. The court then bifurcated the contract and infringement claims, and
held a jury trial on the breach of contract claim. The verdict was in favor of Baum. On
2 U.S. Const. amend. XI. 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.

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2006-1330 3
post-trial motion the University renewed its claim of immunity; the district court again denied
the motion, with opinion explaining that the University's Eleventh Amendment immunity was
waived by the contract's explicit provision wherein all parties agreed to "submit to
jurisdiction" of the appropriate federal or state court sitting in Michigan. The district court
stayed further proceedings, including its grant of a new trial on the issue of damages,
pending this appeal. Although Baum complains that the University should have appealed
the Eleventh Amendment issue before the breach of contract case was tried, and should
not have been permitted to reargue this issue after the trial, we discern no flaw in the
district court's action in reconsidering this issue after the trial.
The issue of Eleventh Amendment immunity is subject to collateral appellate review,
and such review was accepted by this court. See Puerto Rico Aqueduct & Sewer Auth. v.
Metcalf & Eddy, Inc., 506 U.S. 139, 147 (1993) ("We hold that States and state entities that
claim to be 'arms of the State' may take advantage of the collateral order doctrine to appeal
a district court order denying a claim of Eleventh Amendment immunity.")
DISCUSSION
I
The Eleventh Amendment limits the judicial authority of the federal courts and bars
unconsented suit against a state in federal court. See Idaho v. Coeur d'Alene Tribe of
Idaho, 521 U.S. 261, 268 (1997) (a state cannot be sued in federal court without its
consent); Seminole Tribe of Florida v. Florida, 517 U.S. 44, 54 (1996) (same). The
University claimed immunity as an arm of the state, and Baum does not dispute that status
as a state entity was created by Mass. Gen. Laws ch. 75, '1 ("The state university shall be
the University of Massachusetts . . . a public institution of higher learning within the system

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2006-1330 4
of public higher education . . . ."). We give plenary review to questions of Eleventh
Amendment immunity. McKesson Corp. v. Div. of Alcoholic Beverages & Tobacco, Dep't of
Bus. Regulation of Florida, 496 U.S. 18, 30 (1990); Martin v. Hunter's Lessee, 14 U.S. (1
Wheat.) 304, 348 (1816); Vas-Cath, Inc. v. Curators of University of Missouri, 473 F.3d
1376, 1380 (Fed. Cir. 2007).
A
The district court held that immunity as to this contract was expressly waived by
specific provision of the contract. In College Savings Bank v. Florida Prepaid
Postsecondary Education Expense Bd., 527 U.S. 666 (1999) the Court had reaffirmed that
a state waives its immunity when it clearly declares its intention to submit to federal
jurisdiction, id. at 675-76, but the intention must be "unequivocally expressed." Id. at 676
(quoting Pennhurst State School & Hosp. v. Halderman, 465 U.S. 89, 99 (1984)). General
consent provisions standing alone, such as general sue-and-be-sued clauses, have been
held insufficient to waive Eleventh Amendment immunity, Port Auth. Trans-Hudson Corp.
v. Feeney, 495 U.S. 299, 306 (1990), and in Port Authority the specific authorization of suit
in federal court was held to bridge that gap. Id. at 308.
The University argues that contract provision III-3 is in "vague language" and is not
the "unequivocally expressed" consent to suit that precedent requires. The University
argues that contract provision III-3 can be read not as a waiver of immunity from suit, but
merely an acceptance of venue in Michigan, if Baum can somehow overcome the obstacle
of the University's immunity. The University argues that since contract provision III-1
(Government Restrictions and Force Majeure) makes the contract "subject to all laws," this
of course includes the Constitution and its amendments, whereby provision III-3 cannot

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2006-1330 5
override the Constitution. Thus the University argues that the contract itself precludes any
waiver of any constitutional immunity, or at least is sufficiently ambiguous to render the
asserted waiver clause void.
The district court, hearing the University's arguments both before and after trial, and
carefully exploring the contract's terms in light of precedent, ruled that "by agreeing to this
provision [III-3], Defendant affirmatively agreed to resolve in federal court any disputes that
may arise." The court considered the University's arguments that the contract is
ambiguous, and did not agree. We agree with the district court that the contract terms are
clear, and that the University agreed to submit to the jurisdiction of a federal court in
Michigan as to disputes arising from this contract. Although the University argues that the
contract does not state which court is "appropriate" as to which cause of action as may
arise, this does not negate the agreement to submit to the jurisdiction of the appropriate
court.
The district court explained that the contract meets the waiver criteria of College
Savings Bank and other precedent. The district court pointed out that College Savings
Bank held that a State's express waiver of sovereign immunity must be unequivocal and
such immunity cannot be impliedly or constructively waived. 527 U.S. at 676-77. In Port
Authority the Court held that New York and New Jersey waived immunity from suit by
providing that consent to suit "is granted on the condition that venue . . . shall be laid within
a . . . judicial district, established . . . by the United States, and situated wholly or partially
within the Port of New York District"; the Court held that this was "persuasive textual
evidence that the consent to suit provision encompasses suits in federal court." 495 U.S. at
308.

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2006-1330 6
We affirm the district court's ruling that the contract between Baum and the
University is not ambiguous as to the mutual obligation to submit to jurisdiction of the state
and federal courts in Michigan, and that the University thereby waived its Eleventh
Amendment immunity.
B
The University states that even if the contract obligated it to submit to federal
jurisdiction, neither the University nor its Associate Director who executed the contract had
authority to enter into a contract that waived [the state's] Eleventh Amendment immunity.
The University acknowledged in the district court that its contract with Baum was entered
into in accordance with the authority granted to the University trustees by Massachusetts
General Laws, chapter 75, '14A:
Section 14A. Notwithstanding any provision of law to the contrary, the
trustees shall prescribe and enforce such regulations as they may deem
necessary, and may enter into contracts with corporations, foundations, other
entities, and individuals concerning inventions, discoveries, research, or other
work product, including patents, trademarks, copyrights, trade secrets, and
any other intellectual property, developed under the terms of a sponsored
agreement entered into by the university or involving the use of university
funds, facilities, . . . including the transfer of rights involving such work
product, . . . and provision for the resolution of any and all disagreements
involving the same. . . .
However, the University argued that this authority to enter into contracts and to provide for
the resolution of disagreements does not include the authority to waive Eleventh
Amendment immunity in performing these functions. The University states that only the
Massachusetts legislature can waive the state's immunity. In the district court the
University argued that the University could not waive its state immunity, and at the
argument of this appeal the University stated that explicit legislative waiver, contract by

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2006-1330 7
contract, would be required to achieve an enforceable waiver. The University's position is
that since it is entitled to assert state immunity, it cannot waive it.
The district court did not accept the University's apparent position that it acted
beyond its authority in including this provision in the patent license agreement with Baum.
The argument is presented on this appeal without any support in the record, with no state-
produced document stating that the University and its officials did not act in accordance
with the law. Although Athe Eleventh Amendment defense sufficiently partakes of the
nature of a jurisdictional bar so that it need not be raised in the trial court,@ Edelman v.
Jordan, 415 U.S. 651, 678 (1974), the record contains no representation by the State of
Massachusetts that its University had no authority to enter this contract. Director Griffin
testified that the University has entered into, and she has executed for the University,
hundreds of contracts containing this provision; the University did not attempt to impugn her
authority to do so on behalf of the University.
The University does not deny that it had authority to enter into this contract with
Baum, but argues that Baum must affirmatively prove that the Massachusetts legislature
delegated to the University the authority to include in the contract a waiver of immunity in
federal court should dispute arise. We do not discern error in the district court's careful
consideration of the issues. There was no assertion by the University that it does not have
authority to enter into patent license agreements; the assertion was that Baum must prove
the University's authority to include the particular provision III-3. Indeed, in pressing this
argument the University does not assert that it acted illegally. Instead, it asserts that Baum
has the burden of proving that it acted legally. We discern no support for the thesis that the
University's contract authority must be proved, when the University does not deny that

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2006-1330 8
authority. At the trial, Director Griffin testified at length as to the origins of this contract, her
negotiation of the terms, and its approval by several University lawyers. No issue was
raised that she and the University exceeded their authority in negotiating and signing this
contract, including provision III-3. Although the University thereafter suggested the issue to
the district court, it was devoid of any support.
The district court did not err in its ruling that the contract provision III-3 was a clear
and unambiguous consent to the jurisdiction of a Michigan federal court for disagreements
arising from this license agreement. That ruling is
AFFIRMED.

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