United States Court of Appeals 

for the Federal Circuit 

__________________________ 

DELANO FARMS COMPANY, 

FOUR STAR FRUIT, INC., AND GERAWAN 

FARMING, INC., 

Plaintiffs-Appellants, 

v. 

THE CALIFORNIA TABLE GRAPE COMMISSION, 

Defendant-Appellee, 

and 

UNITED STATES, DEPARTMENT OF 

AGRICULTURE, 

AND THOMAS J. VILSACK, SECRETARY OF 

AGRICULTURE, 

Defendants-Appellees. 

__________________________ 

2010-1546 

__________________________ 

Appeal from the United States District Court for the 

Eastern District of California in Case No. 07-CV-1610, 

Senior Judge Oliver W. Wanger. 

_________________________ 

Decided: August 24, 2011 

_________________________ 
DELANO FARMS v. CALIFORNIA TABLE 2

LAWRENCE M. HADLEY, Hennigan Dorman, LLP, of 

Los Angeles, California, argued for the plaintiffsappellants. With him on the brief was OMER SALIK. 

RANDOLPH D. MOSS, Wilmer Cutler Pickering Hale 

and Dorr, LLP, of Washington, DC, argued for the defendant-appellee The California Table Grape Commission. 

With him on the brief were BRIAN M. BOYNTON, STEVEN P.

LEHOTSKY and THOMAS G. SAUNDERS. 

SUSAN L.C. MITCHELL, Attorney, Commercial Litigation Branch, Civil Division, United States Department of 

Justice, of Washington, DC, argued for the defendantsappellees United States Department of Agriculture and 

Thomas J Vilsack, Secretary of Agriculture. Of counsel 

on the brief were TONY WEST, Assistant Attorney General, 

and JOHN J. FARGO, Director. 

__________________________ 

Before BRYSON, SCHALL, and PROST, Circuit Judges. 

BRYSON, Circuit Judge. 

The United States Department of Agriculture 

(“USDA”) is the owner by assignment of three patents 

issued under the Plant Variety Protection Act for grapevines that produce table grapes. The three patented 

varieties are known as Sweet Scarlet (U.S. Patent No. 

PP15,891), Scarlet Royal (U.S. Patent No. PP16,229), and 

Autumn King (U.S. Patent No. PP16,284). 

The USDA licensed its rights in the three patents to 

the California Table Grape Commission, an agency of the 

State of California. The Commission’s mission is to 

promote that state’s table-grape industry. The Commission is funded by a tax levied on each box of table grapes 

produced in California. 
3 DELANO FARMS v. CALIFORNIA TABLE

The relationship between the Commission and the 

USDA is complex. Although the USDA owns the three 

patents at issue in this case, the Commission paid much 

of the cost of developing the patented varieties. The 

licenses for the three patents give the Commission the 

right to sublicense the patents and entitle the Commission to retain 60 percent of all royalties from its sublicensing efforts, with the remaining 40 percent to go to the 

USDA. Exercising its sublicensing power, the Commission authorized three nurseries to serve as exclusive 

distributors of the patented varieties. Grape growers who 

purchase the patented plants from those nurseries each 

sign a “Domestic Grower License Agreement.” That 

agreement requires the growers to pay a royalty and 

forbids them from propagating the plants. The agreement 

also permits the Commission to order the destruction of 

the purchased plants if the Commission believes the 

growers to be violating the agreement. 

The plaintiffs (collectively referred to as “Delano”) are 

all California grape growers who purchased grapevines 

covered by the patents, signed the Domestic Grower 

License Agreement, and paid the licensing fee. They 

brought this action in the United States District Court for 

the Eastern District of California challenging the validity 

and enforceability of the three patents, as well as the 

conduct of the Commission and the USDA in licensing 

and enforcing the patents. 

Delano sought a declaratory judgment that all three 

patents are invalid because of prior use and that the 

Sweet Scarlet patent is unenforceable because of inequitable conduct during prosecution. As outlined in Delano’s 

complaint, the USDA began development of the patented 

varieties in the early 1990s. Dr. David Ramming, a 

USDA employee and one of the co-inventors of each of the 
DELANO FARMS v. CALIFORNIA TABLE 4

three varieties, allegedly displayed the fruit of the patented varieties at public meetings that were held before 

the critical dates for each patent. According to the complaint, Dr. Ramming had distributed the Sweet Scarlet 

vines to approximately nine growers for “trials” before the 

critical date, and at least three of those growers sold the 

fruit of those vines. Delano also alleged that a California 

grape grower had obtained the other varieties and had 

reproduced those varieties in advance of the critical date.

As to its inequitable conduct claim, Delano alleged 

that in May 2004 the Commission sent a letter to all 

table-grape growers and shippers in California. The 

letter informed growers who were in possession of the 

Sweet Scarlet variety that they could keep their vines and 

avoid a lawsuit if they admitted to the fact of possession, 

paid the Commission $2 per vine reproduced, paid the 

Commission $2 per box of Sweet Scarlet grapes previously 

shipped, and agreed not to take further steps to propagate 

the plants. According to Delano’s complaint, 17 growers 

responded to the Commission, each acknowledging possession and propagation of the patented variety more 

than one year before the patent application was filed. 

That information was not disclosed to the Patent and 

Trademark Office (“PTO”). 

In addition to those claims brought against the USDA 

and the Commission jointly, Delano brought claims 

against the USDA alone, alleging that it had acted unlawfully in obtaining the patents and entering into the licensing arrangement with the Commission (“the 

administrative claims”). Against only the Commission, 

Delano brought an antitrust claim and a related state law 

unfair competition claim, both stemming from the Commission’s efforts to license the Sweet Scarlet patent. 
5 DELANO FARMS v. CALIFORNIA TABLE

The USDA and the Commission moved to dismiss Delano’s declaratory judgment claims. They argued that the 

action could not proceed because the USDA, as the patentee, is an indispensable party but could not be joined 

because it is immune from suit due to sovereign immunity. The district court agreed. The court first held that 

the license between the Commission and the USDA did 

not transfer to the Commission all substantial rights in 

the patents and that because the USDA retained substantial rights in the patents, it had to be joined in order for 

the action to proceed. 

After concluding that the USDA was a necessary 

party to the patent law claims, the district court turned to 

the question whether Delano could sue the USDA on 

those claims or whether those claims against the USDA 

were barred by sovereign immunity. The district court 

rejected Delano’s argument that the Administrative 

Procedure Act (“APA”) waived sovereign immunity for the 

declaratory judgment claims and thus ruled that sovereign immunity barred the joinder of USDA as a party 

defendant. The court then addressed whether those 

claims could go forward without the USDA as a party. 

After conducting an analysis under Rule 19(b) of the 

Federal Rules of Civil Procedure, the court concluded that 

because the USDA was an indispensable party that could 

not be joined, the action should be dismissed. 

The court also granted the USDA’s motion to dismiss 

Delano’s administrative claims. The court held that the 

Patent Act provides a comprehensive and exclusive 

scheme to test the validity of patents and that Delano 

could not properly use administrative law remedies as an 

alternative means to challenge the patents. As to Delano’s administrative claims relating to the USDA’s 

licensing scheme, the court concluded that Delano failed 
DELANO FARMS v. CALIFORNIA TABLE 6

to raise its concerns before the USDA when the agency 

published the details of the licenses in the Federal Register. Accordingly, the court determined that Delano had 

not exhausted its administrative remedies. Delano has 

not appealed the court’s ruling on the administrative 

claims. 

Finally, the court granted the Commission’s motion to 

dismiss Delano’s antitrust claim and the related state law 

unfair competition claim. The court found that Delano 

had failed to plead a plausible market for the Sweet 

Scarlet grapes and dismissed the antitrust claim on that 

ground. As for the state law unfair competition claim, the 

court held that the state law claim required a showing 

that the Commission had violated some other law. Because the alleged predicate offense was the asserted 

antitrust violation, which the court had dismissed, the 

court dismissed the state law claim as well. 

I 

Delano first contends that the USDA transferred all 

substantial rights in the three patents to the Commission 

and that the USDA was therefore not a necessary party to 

the declaratory judgment claims brought under the Patent Act. It is well established that a patentee is a necessary party to an action on the patent, whether it be a 

coercive action or a declaratory judgment suit. If the 

patentee has transferred all substantial rights in the 

patent to an exclusive licensee, however, the licensee is 

treated as the assignee. In that event, the assignor, 

which is no longer regarded as the owner of the patent, 

need not be joined in any action brought on the patent. 

A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1217-18 

(Fed. Cir. 2010); Enzo APA & Son, Inc. v. Geapag A.G., 

134 F.3d 1090, 1093-94 (Fed. Cir. 1998). 
7 DELANO FARMS v. CALIFORNIA TABLE

In determining whether a licensee has obtained all 

substantial rights in the patent, an important consideration is whether the license grants to the licensee the right 

to enforce the patent and divests the licensor of that same 

right. E.g., Alfred E. Mann Found. for Scientific Research 

v. Cochlear Corp., 604 F.3d 1354, 1361 (Fed. Cir. 2010) 

(describing the scope of the licensee’s right to sue infringers as often “the most important consideration”); Vaupel 

Textilmaschinen KG v. Meccanica Euro Italia SPA, 944 

F.2d 870, 875 (Fed. Cir. 1991). When a licensing agreement restrains or controls the licensee’s sublicensing 

power, the licensor is generally regarded as having retained substantial control over patent enforcement, and 

the agreement is not treated as having given the licensee 

all substantial rights in the patent. Intellectual Prop. 

Dev., Inc. v. TCI Cablevision of Cal., Inc., 248 F.3d 1333, 

1344-45 (Fed. Cir. 2001); Vaupel, 944 F.2d at 875-76. 

The license agreement between the USDA and the 

Commission gives the Commission the exclusive right to, 

among other things, use, propagate, and sell the patented 

varieties as well as to grant sublicenses to growers. But 

the “Patent Enforcement” section of the license does not 

give the Commission any right to enforce the patent 

against suspected infringers. Instead, the license anticipates that the USDA “may grant the right of enforcement 

to the Commission, pursuant to Title 35, Section 

207(a)(2).” That section of the code allows federal agencies to transfer all substantial rights to licensees and to 

permit those licensees to sue infringers without joining 

the federal patent owner. Nothing in the license curtails 

the USDA’s right as a patentee to sue on the patent. And 

the USDA is at liberty to decline to enforce the patent: the 

Commission “shall continue to pay royalties and fees 

accruing to USDA until such time as the Agreement is 

terminated by either party, even if the U.S. Government 
DELANO FARMS v. CALIFORNIA TABLE 8

elects not to enforce the Licensed Patents . . . against 

infringers.” The most natural reading of the license is 

that the USDA did not transfer any right of enforcement 

to the Commission but left open the possibility that it 

might elect to do so at a later date. 

Moreover, the USDA retained at least some control 

over the Commission’s sublicensing program. Besides 

reserving for itself a royalty-free right to practice the 

invention and making the format of the Commission’s 

sublicense agreements subject to prior submission to and 

approval by the USDA, the USDA expressly reserved the 

right to require that the Commission issue sublicenses, 

such as licensing arrangements that the USDA determines are necessary to fulfill health or safety needs or to 

ensure that the patented varieties are available in geographic areas outside the Commission’s marketing and 

distribution area. In light of all the provisions preserving 

for the USDA various forms of control over the licensing 

and enforcement of the patents, we agree with the district 

court that the license agreement did not transfer to the 

Commission all substantial rights in the patents. For 

that reason, the district court correctly held that the 

USDA was a necessary party to Delano’s declaratory 

judgment claims based on the Patent Act. 

II 

Delano next argues that sovereign immunity does not 

bar its Patent Act claims against the USDA.1 In address-

 1 The Commission argues that Delano has not preserved its argument that the USDA can be joined in the 

patent law claims, because Delano took the position in the 

district court that it could proceed on those claims against 

the Commission alone and that it could proceed separately against the USDA under the APA. We do not 
9 DELANO FARMS v. CALIFORNIA TABLE

ing the issue of sovereign immunity, we apply our own 

law in light of the special importance of ensuring national 

uniformity on such questions. See Pennington Seed, Inc. 

v. Produce Exch. No. 299, 457 F.3d 1334, 1338 (Fed. Cir. 

2006); Regents of the Univ. of N.M. v. Knight, 321 F.3d 

1111, 1124 (Fed. Cir. 2003). While we have not previously 

had occasion to decide the particular issue raised by 

Delano’s appeal, some of the regional circuits have, and 

we are guided by the analysis of those courts. See Fiskars, Inc. v. Hunt Mfg. Co., 279 F.3d 1378, 1381 (Fed. Cir. 

2002). 

It is a fundamental principle that the United States 

and its agencies may not be sued in federal court unless 

Congress has waived sovereign immunity; if Congress has 

not waived the federal government’s immunity for a 

particular claim, courts lack jurisdiction over that claim 

and must dismiss it. United States v. Dalm, 494 U.S. 596, 

608 (1990). Delano asserts that the pertinent waiver of 

sovereign immunity can be found in section 10(a) of the 

APA, as amended, 5 U.S.C. § 702.2 As amended, that 

section reads: 

A person suffering legal wrong because of 

agency action, or adversely affected or aggrieved 

by agency action within the meaning of a relevant 

statute, is entitled to judicial review thereof. An 

action in a court of the United States seeking re-

 

regard Delano’s argument that the USDA is not a necessary party to the patent law claims to constitute an 

abandonment of its original contention that the Commission and the USDA can be sued jointly on those claims. 

2 The parties refer to section 10 of the APA by the 

section numbers used in the United States Code, so we 

use the same convention. 
DELANO FARMS v. CALIFORNIA TABLE 10

lief other than money damages and stating a 

claim that an agency or an officer or employee 

thereof acted or failed to act in an official capacity 

or under color of legal authority shall not be dismissed nor relief therein be denied on the ground 

that it is against the United States or that the 

United States is an indispensable party. . . . 

Nothing herein 

(1) affects other limitations on judicial review 

or the power or duty of the court to dismiss any 

action or deny relief on any other appropriate legal or equitable ground; or 

(2) confers authority to grant relief if any 

other statute that grants consent to suit expressly 

or impliedly forbids the relief which is sought. 

The issue in this case is whether that waiver of sovereign immunity applies to Delano’s request for declaratory 

relief against the United States on a cause of action 

arising under the Patent Act, or whether that waiver of 

sovereign immunity applies only to agency actions for 

which the APA prescribes a right to judicial review, i.e., 

“[a]gency action made reviewable by statute and final 

agency action for which there is no other adequate remedy in a court.” 5 U.S.C. § 704. We hold that section 702 

of the APA waives sovereign immunity for non-monetary 

claims against federal agencies, subject to the limitations 

in subsections (1) and (2). It is not limited to “agency 

action” or “final agency action,” as those terms are defined 

in the APA. We therefore conclude that the waiver of 

sovereign immunity in section 702 is broad enough to 

allow Delano to pursue equitable relief against the USDA 

on its patent law claims. 
11 DELANO FARMS v. CALIFORNIA TABLE

A 

The APA can be said to do three things with respect to 

judicial review of actions or failures to act by government 

agencies or employees: First, it recognizes a right of 

judicial review for “agency action” made reviewable by 

another statute and provides rules governing such review. 

5 U.S.C. §§ 702, 704, 706. Second, it creates a right of 

judicial review, even in the absence of a reviewauthorizing statute, for “final agency action” for which 

there is no other adequate remedy in a court. Id. at § 704. 

Third, and most importantly for present purposes, it 

waives sovereign immunity for any action stating a claim 

against the United States (or its officers or employees) 

and seeking relief other than money damages. Id. at 

§ 702. The United States and the Commission argue that 

the waiver of sovereign immunity is limited to the first 

two categories—the types of judicial review recognized or 

created by the APA. However, nothing in the text of 

section 702 limits its scope to “agency action,” as defined 

in section 704 of the APA, or “final agency action,” for 

which section 704 of the APA directly provides the right 

to judicial review. A review of the background and judicial analysis of the sovereign immunity waiver in section 

702 leads us to reject the defendants’ argument. 

As originally enacted in 1946, the APA provided a 

cause of action for review of certain actions of federal 

agencies and officials. It did not, however, expressly 

waive sovereign immunity for either causes of action 

grounded in section 704 of the APA or for causes of action 

brought under other laws, such as a particular statute or 

the Constitution. An action that did not fall within an 

exception to the general principles of sovereign immunity 

was therefore subject to dismissal even though the action 

was authorized by the APA. In 1976, Congress amended 
DELANO FARMS v. CALIFORNIA TABLE 12

the APA to solve that problem. It did so by amending 

section 702 to include what is now the second sentence, 

which consists of a broad waiver of sovereign immunity 

for actions seeking relief other than money damages 

against federal agencies, officers, or employees. 

The legislative history of the 1976 amendment to the 

APA reinforces the breadth of the statutory language. 

The reports of the judiciary committees of both Houses 

stated that the 1976 amendment was meant to “withdraw[] the defense of sovereign immunity in actions 

seeking relief other than money damages, such as an 

injunction, declaratory judgment, or writ of mandamus.” 

S. Rep. No. 94-996, at 4 (1976); H.R. Rep. No. 94-1656, at 

4 (1976), reprinted in 1976 U.S.C.C.A.N. 6121, 6124-25.3 

In the past, the reports observed, courts charged with 

deciding whether sovereign immunity barred a particular 

suit had reached decisions that were unpredictable, 

illogical, and overly dependent on artful pleading. H.R. 

Rep. No. 94-1656, at 8. In view of the confusion and 

perceived unfairness in the application of the doctrine, 

the reports concluded that “the time now has come to 

eliminate the sovereign immunity defense in all equitable 

actions for specific relief against a Federal agency or 

officer acting in an official capacity.” Id. at 9. 

The Commission argues that the placement of the 

waiver of sovereign immunity in section 702 of the APA 

suggests that the waiver was meant to be limited to 

actions arising under the APA itself or under a statute 

directed at the review of “agency action” as that term is 

defined in the APA. The legislative history demonstrates, 

 3 The Senate and the House reports are nearly 

identical. For simplicity, we will cite to the House version. 
13 DELANO FARMS v. CALIFORNIA TABLE

however, that the amendment was meant to be broader 

than that. The committee reports broadly describe the 

waiver as applying to “actions seeking relief other than 

money damages. H.R. Rep. No. 94-1656, at 4. Moreover, 

the Administrative Conference of the United States, 

which proposed the waiver of sovereign immunity and 

suggested that it be included in section 702, explained 

that the amendment to section 702 was designed “to 

eliminate the defense of sovereign immunity with respect 

to any action in a court of the United States seeking relief 

other than money damages and based on an assertion of 

unlawful official action by a Federal officer or employee.” 

Administrative Procedure Act Amendments of 1976: 

Hearing Before the Subcomm. on Admin. Practice and 

Procedure of the S. Comm. on the Judiciary, 94th Cong. 

230 (1976) (statement of Richard K. Berg, executive 

secretary of the Administrative Conference of the United 

States). 

Other courts have held that section 702 waives immunity for claims that are not brought pursuant to section 704 of the APA. In Trudeau v. Federal Trade 

Commission, 456 F.3d 178, 186 (D.C. Cir. 2006), the D.C. 

Circuit held that the waiver of immunity in section 702 “is 

not limited to APA cases” and applies “regardless of 

whether the elements of an APA cause of action are 

satisfied.” The plaintiff in that case sued the Federal 

Trade Commission (“FTC”), based on the FTC’s issuance 

of a press release regarding him. He alleged that the FTC 

had acted in excess of its statutory authority in issuing 

the press release and that the FTC had violated his First 

Amendment rights by using the press release to retaliate 

against him for criticizing the agency. Id. at 185. The 

D.C. Circuit acknowledged that the press release was not 

“agency action” as defined in the APA, let alone “final 

agency action.” But that was irrelevant, according to the 
DELANO FARMS v. CALIFORNIA TABLE 14

court, because neither of the plaintiff’s causes of actions 

sought judicial review under section 704 of the APA. See 

also Clark v. Library of Congress, 750 F.2d 89, 102 (D.C. 

Cir. 1984) (1976 amendment to section 702 “eliminated 

the sovereign immunity defense in virtually all actions for 

non-monetary relief against a U.S. agency or official 

acting in an official capacity”); Sea-Land Serv., Inc. v. 

Alaska R.R., 659 F.2d 243, 244-45 (D.C. Cir. 1981) (R.B. 

Ginsburg, J.) (“amended § 702 eliminates the defense of 

sovereign immunity in actions for specific, non-monetary 

relief”). 

The Ninth Circuit reached the same conclusion in The 

Presbyterian Church (U.S.A.) v. United States, 870 F.2d 

518, 525-26 (9th Cir. 1989). The plaintiffs in that case 

alleged that their First and Fourth Amendment rights 

were violated when employees of various federal agencies 

surreptitiously recorded church services. The court 

rejected the government’s argument that section 702 

waives immunity only for challenges involving “agency 

action” as that term is used in section 704 and defined in 

section 551(13). The court pointed to the legislative 

history, which refers to waiving sovereign immunity in all 

equitable actions against the government, and it noted 

that the second sentence in section 702 is not, by its 

terms, limited to cases involving “agency action.” Accordingly, the court concluded that the waiver of sovereign 

immunity in section 702 is not limited to claims challenging conduct that constitutes “agency action.” Id. at 525. 

Recently, in Veterans for Common Sense v. Shinseki, 

644 F.3d 845 (9th Cir. 2011), the Ninth Circuit reaffirmed 

that the waiver of sovereign immunity in section 702 is 

not limited to actions in which the APA creates the right 

to judicial review. In that case, an advocacy group alleged 

that the slow pace at which the Department of Veterans 
15 DELANO FARMS v. CALIFORNIA TABLE

Affairs processes requests for mental health benefits 

violates veterans’ constitutionally protected rights to 

those benefits. The district court concluded that the 

limitations on the APA cause of action found in section 

704, including the requirement for “agency action,” also 

restrict the scope of the waiver of sovereign immunity in 

section 702. Because the delay in benefits adjudication 

constituted neither “agency action” nor “final agency 

action” within the meaning of section 704, the district 

court ruled that section 702 did not waive sovereign 

immunity for the veterans’ action. The Ninth Circuit 

reversed; it held that the question whether section 702 

waives sovereign immunity for the plaintiffs’ non-APA 

cause of action does not turn on whether the challenged 

delays constituted “agency action” or “final agency action.” 

Instead, the court held, the waiver of sovereign immunity 

applies to the plaintiffs’ request for an injunction to 

correct a constitutional violation even though the request 

for judicial review was not based on the authority granted 

by section 704 and did not involve “agency action,” as 

defined by the APA.4

 4 Other courts have ruled similarly. See, e.g., 

Blagojevich v. Gates, 519 F.3d 370, 372 (7th Cir. 2008) 

(section 702 waives immunity for lawsuit by state governor alleging that Department of Defense violated a statute requiring governor’s approval before transferring a 

National Guard unit out of state); Commonwealth of P.R. 

v. United States, 490 F.3d 50, 57-58 (1st Cir. 2007) (section 702 waiver covers all equitable actions for specific 

relief against a federal agency or officer acting in an 

official capacity); Black Hills Inst. of Geological Research 

v. S.D. Sch. of Mines & Tech., 12 F.3d 737, 740 (8th Cir. 

1993) (section 702 waives immunity for suit to quiet title 

to fossil seized by the Department of Justice, even though 

suit not brought as APA action challenging final agency 

action); Specter v. Garrett, 995 F.2d 404, 410 (3d Cir. 

1993) (“Our cases are also clear that the waiver of sover-
DELANO FARMS v. CALIFORNIA TABLE 16

The Commission argues that in two previous cases 

this court has held that the waiver of sovereign immunity 

in section 702 applies only to suits based on a cause of 

action created by the APA. In the two cited cases—Smith 

v. Secretary of the Army, 384 F.3d 1288 (Fed. Cir. 2004), 

and Christopher Village, L.P. v. United States, 360 F.3d 

1319 (Fed. Cir. 2004)—we considered whether an APAbased action in district court is barred because the exclusive source of relief was through a suit for damages in the 

Court of Federal Claims. Each case held that a plaintiff 

cannot invoke the section 702 waiver to obtain judicial 

review under section 704 of the APA when Congress has 

provided an alternative and exclusive forum for such a 

dispute. However, neither case addressed the scope of 

Congress’s consent to suit in an equitable action not 

brought under the authority of the APA. 

The plaintiff in Smith was a retired Army physician 

who alleged that the Army had acted unlawfully by failing 

to accord him promotional credit for a masters degree. 

384 F.3d at 1292. We held that his APA action against 

 

eign immunity contained in § 702 is not limited to suits 

brought under the APA.”), rev’d on other grounds, Dalton 

v. Specter, 511 U.S. 462 (1994); Sheehan v. Army & Air 

Force Exch. Serv., 619 F.2d 1132, 1139 (5th Cir. 1980) 

(section 702 waives immunity for causes of action arising 

under generally applicable statutes and the Constitution), 

rev’d on other grounds, 456 U.S. 728 (1982). 

The Commission cites cases such as SEC ex rel. 

Glotzer v. Stewart, 374 F.3d 184 (2d Cir. 2004), as holding 

that section 702 waives sovereign immunity only for 

actions falling within the APA. Those cases hold that 

section 702 waives sovereign immunity for non-monetary 

claims brought under the APA seeking review of agency 

action, but they do not hold that the waiver of sovereign 

immunity is inapplicable to non-monetary claims arising 

under statutes other than the APA, such as the patent 

law claims in this case. 
17 DELANO FARMS v. CALIFORNIA TABLE

the Army could not be maintained in district court if 

damages and the ancillary equitable relief that was 

available in the Court of Federal Claims would provide an 

adequate remedy. Id. at 1293-94. Although we characterized the waiver of immunity in section 702 as subject to 

the limitations of section 704, id. at 1292, we made that 

statement in the context of a district court claim arising 

under the APA, which is subject to the limitations imposed on such claims by section 704. Id. at 1290-91. We 

did not hold that the waiver of immunity applies only to a 

cause of action based on the APA and does not apply to a 

cause of action based on another source, as in this case. 

Christopher Village was a complex case in which we 

again considered whether a suit for damages in the Court 

of Federal Claims is an “adequate remedy” that would 

withdraw the APA’s waiver of immunity. 360 F.3d at 

1327-29. The Department of Housing and Urban Development (“HUD”) held a mortgage on a federally subsidized low-income apartment complex that the plaintiffs 

owned. HUD threatened to foreclose. The plaintiffs 

brought an APA action in district court against HUD to 

block the foreclosure and obtain a decree that HUD had 

violated both the applicable regulations and HUD’s contract with the plaintiffs. The district court ruled in favor 

of HUD, and the plaintiffs appealed that decision to the 

Fifth Circuit. Before the Fifth Circuit decided the appeal, 

HUD foreclosed on the property, and the apartment 

complex was torn down. The Fifth Circuit acknowledged 

that the request to enjoin the foreclosure had become 

moot, but it went on to reverse the district court and to 

hold that the agency had violated its contractual and 

regulatory duties. Id. at 1323-24. The plaintiffs subsequently filed an action in the Court of Federal Claims 

seeking damages for breach of contract. When the case 

reached this court, the question on appeal was whether 
DELANO FARMS v. CALIFORNIA TABLE 18

the Fifth Circuit’s judgment on liability had preclusive 

effect in the damages action. We held that the answer to 

that question depended on whether the district court had 

jurisdiction in the earlier case. Id. at 1326-27. 

We explained that section 702 would have waived 

sovereign immunity as to the plaintiffs’ APA-based action 

to block the foreclosure. 360 F.3d at 1326. Once HUD 

foreclosed and the property was razed, however, that 

request became moot. We characterized plaintiffs’ action 

on that point as a “declaratory judgment as to the legality 

of HUD’s action.” Id. We held that the waiver of immunity in section 702 did not apply because there was an 

adequate remedy available elsewhere, namely, a damages 

action in the Court of Federal Claims. Because the Fifth 

Circuit had lacked jurisdiction to consider the legality of 

HUD’s conduct, its judgment on liability was void. Id. at 

1330-31. Again, the discussion of the waiver of sovereign 

immunity was in the context of a cause of action brought 

pursuant to section 704 of the APA, not in the context of a 

cause of action based on a separate statutory source, as in 

this case. 

Any suggestion that our decisions in Smith and Christopher Village stand for the proposition that the waiver of 

sovereign immunity in section 702 is limited to causes of 

action created by the APA was dispelled in Nebraska 

Public Power District v. United States, 590 F.3d 1357 

(Fed. Cir. 2010) (en banc). In that case, we held that 

section 702 waived immunity for an action seeking judicial review under section 119 of the Nuclear Waste Policy 

Act, 42 U.S.C. § 10139. In so doing, we specifically held 

that because the right to judicial review arose under a 

statute other than the APA, section 702 waived sovereign 

immunity without the need to satisfy the requirements of 

section 704. 590 F.3d at 1371 & n.6. 
19 DELANO FARMS v. CALIFORNIA TABLE

Our decisions in Smith, Christopher Village, and 

other cases dealing with the intersection of actions in 

district court under the APA and actions in the Court of 

Federal Claims under the Tucker Act have no bearing on 

the sovereign immunity question presented in this case. 

When Congress amended section 702 in 1976, it made it 

clear that it did not intend that amendment to have any 

effect on the exclusive jurisdiction of the Court of Claims 

over suits for money damages falling within the jurisdiction of that court. H.R. Rep. No. 94-1656, at 12-13; see 

also Transohio Sav. Bank v. Dir., Office of Thrift Supervision, 967 F.2d 598, 608-09 (D.C. Cir. 1992) (because the 

Tucker Act impliedly forbids an APA remedy in district 

court for breach of contract claims, the waiver of immunity in section 702 does not apply to those claims); 5 

U.S.C. § 703 (“The form of proceeding for judicial review 

is the special statutory review proceeding relevant to the 

subject matter in a court specified by statute or, in the 

absence or inadequacy thereof, any applicable form of 

legal action . . . .”).5 Thus, the immunity waiver cannot 

 5 In a section entitled “Other Exclusive Remedies or 

Statutory Limitations,” the House Report explains: 

Clause (2) of the third new sentence added to section 702 contains a second proviso concerned with 

situations in which Congress has consented to suit 

and the remedy provided is intended to be the exclusive remedy. For example, in the Court of 

Claims Act, Congress created a damage remedy 

for contract claims with jurisdiction limited to the 

Court of Claims except in suits for less than 

$10,000. The measure is intended to foreclose specific performance of government contracts. In the 

terms of the proviso, a statute granting consent to 

suit, i.e., the Tucker Act, “impliedly forbids” relief 

other than the remedy provided by the Act. Thus, 

the partial abolition of sovereign immunity 

brought about by this bill does not change existing 
DELANO FARMS v. CALIFORNIA TABLE 20

serve as a “backdoor” to use the APA to obtain what 

would amount to concurrent district court jurisdiction 

over a monetary claim that could be brought in the Court 

of Federal Claims. But that principle has no application 

to Delano’s Patent Act claims, which are not claims for 

damages and are not within the exclusive jurisdiction of 

the Court of Federal Claims. 

B 

The district court noted that Congress has expressly 

consented to suit in related areas, including the Quiet 

Title Act, 28 U.S.C. § 2409a, and the statute addressing 

government infringement of copyrights and patents, 28 

U.S.C. § 1498. Because those statutes confer limited 

consent to suit, the court concluded that they indicate 

that Congress intended to carve out only a narrow exception to immunity in this area. Therefore, the court concluded that even if the waiver of immunity in section 702 

applies broadly as a general matter, it does not apply in 

this case. Both defendants urge us to affirm on that 

theory, but we do not find it persuasive. 

Congress enacted the Quiet Title Act in 1972, four 

years before the 1976 amendments to section 702. Before 

then, a plaintiff who wished to challenge the government’s claim of title to real property had to wait until the 

government decided to pursue a quiet title action or had 

to request discretionary relief from either Congress or the 

President. Block v. N.D. ex rel. Bd. of Univ. & Sch. 

Lands, 461 U.S. 273, 280-81 (1983). Alternatively, the 

 

limitations on specific relief, if any, derived from 

statutes dealing with such matters as government 

contracts, as well as patent infringement, tort 

claims, and tax claims. 
21 DELANO FARMS v. CALIFORNIA TABLE

plaintiff could surrender the property and sue for compensation in the Court of Claims under a takings theory. 

H.R. Rep. No. 92-1559, at 6 (1972). The 1972 Act permitted a district court to hear a quiet title action brought by 

a private party. 28 U.S.C. § 2409a; see also id. at § 2410 

(pre-1972 statute permitting joinder of the United States 

in a quiet title action regarding land over which the 

United States holds a security interest). Nothing in the 

Quiet Title Act, however, suggests that Congress intended 

the subsequent waiver of sovereign immunity in section 

702 of the APA to be construed narrowly. In fact, the 

House report accompanying the 1976 amendment to the 

APA specifically addressed the Quiet Title Act and explained that the waiver of sovereign immunity in section 

702 would extend the policy of that waiver to equitable 

actions generally. The report observed: 

Just as there is little reason why the United 

States as a landowner should be treated any differently from other landowners in an action to 

quiet title, so too has the time now come to eliminate the sovereign immunity defense in all equitable actions for specific relief against a Federal 

agency or officer acting in an official capacity. 

H.R. Rep. No. 94-1656, at 9. That language makes it 

quite clear that Congress intended both landowners and 

plaintiffs with an equitable claim against the federal 

government to have access to federal courts to vindicate 

their claims. 

Section 1498 provides no more support for the court’s 

sovereign immunity ruling. In section 1498, Congress 

consented to pay damages for the unauthorized use or 

manufacture of a patented invention “by or for the United 

States.” 28 U.S.C. § 1498. Although related to patents, 
DELANO FARMS v. CALIFORNIA TABLE 22

this statute provides for the government, as a tortfeasor, 

to account in money damages for its unauthorized use of a 

patent. That Congress has consented to an action for 

money damages for patent infringement by the government does not in any way imply that Congress intended 

to bar equitable actions related to the validity of government-owned patents. 

Accordingly, we agree with Delano that in section 702 

of the APA Congress waived sovereign immunity for 

claims such as Delano’s declaratory judgment claims 

under the Patent Act.6 For that reason, we hold that the 

USDA may be joined as a party to the declaratory judgment claims on remand. 

 6 The Commission makes a separate argument that 

section 702 waives immunity for equitable actions alleging that an agency “acted or failed to act” and that because the USDA does not collect royalties directly from 

plaintiffs, the agency has not “acted or failed to act” and 

thus the waiver of sovereign immunity in section 702 does 

not apply. To the contrary, USDA’s act of obtaining 

ownership of the patents makes it subject to the declaratory judgment action seeking to invalidate the patents or 

hold them unenforceable. Such an action arises under the 

Patent Act, see Franchise Tax Bd. v. Laborers Vacation 

Trust, 463 U.S. 1, 19 n.19 (1983); Jacobsen v. Katzer, 535 

F.3d 1373, 1377 (Fed. Cir. 2008), and states a claim 

against the patent owner for relief under the Declaratory 

Judgment Act, 28 U.S.C. § 2201, over which the district 

court has jurisdiction under 28 U.S.C. § 1338. Because 

that action seeks non-monetary relief based on the 

agency’s official acts, section 702 waives the agency’s 

sovereign immunity. 
23 DELANO FARMS v. CALIFORNIA TABLE

III 

As an alternative ground for affirming the district 

court’s ruling on Delano’s inequitable conduct claim, the 

Commission argues that Delano’s complaint does not 

provide an adequate factual basis from which the court 

could conclude that anyone at the USDA made a deliberate decision to withhold the fact of prior use with the 

intent to deceive the PTO. 

A charge of inequitable conduct based on a failure to 

disclose will survive a motion to dismiss only if the plaintiff’s complaint recites facts from which the court may 

reasonably infer that a specific individual both knew of 

invalidating information that was withheld from the PTO 

and withheld that information with a specific intent to 

deceive the PTO. Exergen v. Wal-Mart Stores, Inc., 575 

F.3d 1312, 1318, 1330 (Fed. Cir. 2009); see generally

Therasense, Inc. v. Becton, Dickinson & Co., ___F.3d ___, 

2011 WL 2028255 (Fed. Cir. May 25, 2011) (en banc). 

Delano alleged that Dr. Ramming had detailed 

knowledge that the Commission had gone out of its way to 

seek out information regarding widespread prior use of 

the patented varieties, had learned of multiple instances 

of such use, and had encouraged those in possession of the 

patented varieties to cease such use. Delano also alleged 

that “[t]he Commission and Dr. Ramming discussed the 

fact that public uses and sales of new varieties prior to 

seeking patent protection could jeopardize the Commission’s patenting program.” A reasonable jury could infer 

that Dr. Ramming knew of the prior use, appreciated that 

the prior use was material, and decided not to disclose 

that information to the PTO, with deceptive intent. 
DELANO FARMS v. CALIFORNIA TABLE 24

The Commission suggests that the general presumption of regularity that attaches to the official acts of a 

federal employee, such as Dr. Ramming, counsels against 

a conclusion that he may have acted with deceptive 

intent. See Hakim v. Cannon Avent Grp., PLC, 479 F.3d 

1313, 1317 (Fed. Cir. 2007) (discussing that presumption 

as it applies to a patent examiner). Even if relevant, that 

presumption is not absolute. If Delano’s complaint is 

sufficient to plead inequitable conduct, it is also sufficient 

to overcome any presumption of regularity that may apply 

to Dr. Ramming. 

IV 

In its last federal claim, which is directed only at the 

Commission, Delano alleges that by entering into sublicensing arrangements with grape growers for the Sweet 

Scarlet patent, the Commission has enforced a fraudulently obtained patent in violation of section 2 of the 

Sherman Act. The district court ruled that Delano failed 

to plead sufficient facts to define a plausible market over 

which the Commission had allegedly exerted its economic 

power and therefore dismissed that claim. 

A patent owner or assignee that enforces a patent 

that was procured by fraud on the PTO loses the exemption from antitrust liability that ordinarily protects a 

patent holder in its enforcement efforts. Walker Process 

Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 

177 (1965). To establish the antitrust portion of a Walker 

Process allegation, a plaintiff must show that the defendant held monopoly power in the relevant market and 

willfully acquired or maintained that power by anticompetitive means. C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 

1340, 1367-68 (Fed. Cir. 1998). A plaintiff must also 

define the market within which the defendant engaged in 
25 DELANO FARMS v. CALIFORNIA TABLE

the challenged conduct. Without a definition of the relevant market, the anticompetitive effects of an improperly 

obtained patent are impossible to measure. Walker 

Process, 382 U.S. at 177. Delano pleaded the antitrust 

element of its claim under both a monopolization and an 

attempted monopolization theory. The market analysis is 

the same under both. Newcal Indus., Inc. v. Ikon Office 

Solutions, 513 F.3d 1038, 1044 n.3 (9th Cir. 2008). 

The product market is defined by reference to the reasonable interchangeability in use among competing 

products or by reference to the cross-elasticity of demand 

between a product and its substitutes. For instance, if an 

increase in the price of Sweet Scarlet would lead its 

purchasers to switch to a different variety, Sweet Scarlet 

and that substitute can be regarded as part of the same 

market. Brown Shoe Co. v. United States, 370 U.S. 294, 

325 (1962); United States v. E.I. du Pont de Nemours & 

Co., 351 U.S. 377, 395 (1956); see also Coal. for ICANN 

Transparency, Inc. v. VeriSign, Inc., 611 F.3d 495, 507 

(9th Cir. 2010). The product market can include submarkets that form a separate market or markets for antitrust 

purposes. Brown, 370 U.S. at 325. In addition to crosselasticity of demand, the Supreme Court has identified 

other factors that a plaintiff may reference as it defines a 

submarket, including “industry or public recognition of 

the submarket as a separate economic entity, the product’s peculiar characteristics and uses, unique production 

facilities, distinct customers, distinct prices, sensitivity to 

price change, and specialized vendors.” Id. 

Delano alleged that each variety of grapes forms a 

distinct submarket within the general market for tablegrape-bearing vines. The Sweet Scarlet submarket, 

which is the critical market here, is said to be the market 

for grapevines “having the characteristics of late season 
DELANO FARMS v. CALIFORNIA TABLE 26

ripening, seedless fruit, attractive pale green coloration, 

cylindrical to ovoid fruit shape, firm fruit texture with 

neutral sweet flavor, and medium to tight cluster.” Those 

characteristics are taken directly from the patent for 

Sweet Scarlet. Sweet Scarlet patent, col.4, ll. 22-27. 

Delano asserts that those characteristics are “uniquely 

valuable and distinct from other grapevine plant materials” and that other grapevines cannot be reasonable 

substitutes. 

Delano cannot rely on the naked assertion that noninfringing goods are not an adequate substitute for a 

patented product, especially when it is undisputed that 

other vines possess at least some of the relevant characteristics. For example, the patent for the Autumn King 

variety states that it is “distinguished from other commercial grape cultivars known to us by a combination of 

characteristics, including its late season ripening seedless 

fruit with attractive pale green coloration, its medium 

firm fruit texture with a neutral sweet flavor, its cylindrical to ovoid fruit shape and its medium to tight cluster.” 

Autumn King patent, col. 3, ll. 60-66. As in monopolization cases not involving a patented product, Delano 

needed to make some allegation that, if proved, would 

define the market or the submarket with reference to 

consumer demand for the product and consumer demand 

for its reasonable substitutes. To be sure, at this early 

stage in the proceedings, Delano did not have to provide 

empirical or statistical evidence that would define the 

market with precision. See Newcal Indus., 513 F.3d at 

1045. But the aspects of an invention that may have led 

the PTO to issue a patent are not per se coterminous with 

the features of the patented product that may lead consumers to select that product over other similar ones. 

Because Delano failed to point to anything other than the 

issuance of a patent for Sweet Scarlet grapes that would 
27 DELANO FARMS v. CALIFORNIA TABLE

provide a plausible basis for finding that Sweet Scarlet 

grapes form a relevant antitrust market, we uphold the 

district court’s decision dismissing Delano’s antitrust 

claim. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 

(2007). 

Each party shall bear its own costs for this appeal. 

AFFIRMED IN PART, REVERSED IN PART, AND 

REMANDED