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Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Impact on Licensing

Format: On-Demand Video, DVD, or PDF Transcript
Originally presented: September 06, 2017

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Legal analysts predict the use of a sovereign immunity defense against inter partes patent challenges will become a reliable strategy for state universities and research institutions — and recent cases appear to support that view. Having the option in their back pocket also opens up the potential for state universities to more easily market their IP to risk-averse licensees, as well as demand a premium when it comes to negotiating terms and royalties.

The University of Florida has led the way by recently using the sovereign immunity defense to successfully end an inter partes challenge, and the University of Maryland soon followed with more to come. But as with most aspects of patent law, it’s not a simple proposition. Timing of your response, joint inventorship, IP ownership entity, and prior legal filings can all impact your defense, and one mistake can mean a waiver of sovereign immunity.

That’s why we’ve asked two expert attorneys to lead this critical webinar:

Sovereign Immunity as Inter Partes Defense: Legal Guidance and Analysis of Licensing Impact

TTOs at state universities and research institutions can’t afford to miss this information-packed webinar, when attorney experts provide a solid review of sovereign immunity cases and their implications, as well as important guidance addressing the factors that can work for you or against you when faced with an inter partes challenge. Please join Technology Transfer Tactics and our team of attorneys when they discuss:

  • Legal Background regarding sovereign immunity in administrative proceedings (SCOTUS Federal Maritime Commission case)
  • Review of decisions and pending cases including:
    • Covidien LP v. Univ. of Florida Research Found. Inc., IPR2016-01274 decision
    • Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc., IPR2016-00208
    • Reactive Surfaces LTD., LLP, v. Toyota Motor Corp., IPR2016-01914 Decision
    • Are these decisions appealable? 
  • What actions can create a waiver of sovereign immunity, and how can you ensure your protection is preserved? 
  • Is dismissal of a petition, or termination of an IPR on sovereign immunity grounds, subject to judicial review?  Or is the PTAB acting outside its limits? 
  • Implications for public universities, research entities, and private companies:
    • Can private companies protect themselves from IPR, PGR, CBM challenges by partnering with universities?
    • Is the structure of IP ownership – for example, by a separate research foundation – a potential bar to sovereign immunity?
    • Should state universities avoid joint development projects that result in co-ownership of a patent with a private university or a private company? 
  • Implications for licensing:
    • Marketing your sovereign immunity advantage – taking IPR risk off the table
    • Can state schools leverage the sovereign immunity defense in license negotiations? How big a factor is this for licensees, and how might you adjust your terms and expectations?

PLUS! Follow along with the original recording of the interactive Q&A

Meet your team of presenters:

Kerry S. TaylorKerry S. Taylor, PhD
Partner
Knobbe Martens

Kerry S. Taylor has been practicing since 1998 in areas including Inter Partes reviews, patent litigation, patent prosecution, strategic planning and counseling relating to infringement and licensing issues, and intellectual property due diligence studies. He has led the firm’s efforts in Inter Partes Review in the life sciences, biotechnology and chemical industries, representing both patent owner and petitioner in these proceedings.  Kerry has also been involved in several Hatch-Waxman patent litigation proceedings.  He also is active in patent prosecution and portfolio strategy development for various clients in the life sciences, pharmaceuticals and polymer chemistry industries.

Peter LawPeter Law
Associate
Knobbe Martins

Peter Law is an associate in the firm’s San Diego office. He has experience in a variety of technical areas, including pharmaceuticals, mechanical and chemical engineering, computer systems, logistics, and physics. Peter has assisted clients in many aspects of patent and trademark law including litigation, prosecution, licensing, strategic client counseling, and inter partes reviews.

Andrew M. HowardAndrew M. Howard
Partner
Shore Chan DePumpo LLP

Mr. Howard practices intellectual property and complex commercial litigation and focuses on plaintiff’s-side patent litigation for Universities and research institutions, including in the Covidien LP v. Univ. of Florida Research Found. Inc., IPR discussed above. Additionally, Mr. Howard represented multiple large educational institutions in enforcing patent portfolios relating to LEDs, semiconductors, and health-care industries in district courts throughout the United States and has clients operating in a variety of industries, including consumer electronics, medical devices, manufacturing, software development, and oilfield development and natural resource collection. Mr. Howard has been named as a Texas Rising Star for Intellectual Property by Super Lawyers for the past four years, graduated from the Washington and Lee University School of Law, magna cum laude, and received a degree in engineering from the University of Florida.

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