Tech Transfer eNews Blog

Federal Circuit denies U of Minnesota sovereign immunity in inter partes review proceedings

By Jesse Schwartz
Published: June 19th, 2019

The Federal Circuit recently determined that the University of Minnesota (UMN), which is an arm of the state of Minnesota, is not protected by state sovereign immunity when its patents are challenged in inter partes review (IPR) proceedings.

In its ruling on Regents of the University of Minnesota v. LSI Corporation and Avago Technologies US Inc., the Court relied heavily on its 2018 decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., which held that “tribal sovereign immunity cannot be asserted in IPRs.”

U Minnesota argued against this assertion, but the Federal Circuit countered by answering a question left open in its prior decision, saying “the differences between tribal and state sovereign immunity do not warrant a departure from the reasoning in Saint Regis.”

In an unusual comment included as “additional views,” the judges stated that “state sovereign immunity also does not apply to IPR proceedings because they are in substance the type of in rem proceedings to which state sovereign immunity does not apply.”

Because the Federal Circuit found that state sovereign immunity does not apply to IPR proceedings, its decision does not address the issue of whether UNM’s earlier district court filing waived the immunity, which had been another outstanding issue in the case.

According to Gene Quinn, president and CEO of IPWatchdog Inc., the decision is bad news for state universities with patented technologies.

“Given the sacrosanct nature of state sovereign immunity, this ruling that a State does not enjoy sovereign immunity is astonishing,” says Quinn. “This is a bridge too far even for a Federal Circuit that has constantly been an apologist for an overreaching and horribly unfair Patent Trial and Appeal Board that has from day one had as its marching orders the destruction of patents that are supposed to be presumed valid.

“The good news is, this is precisely the type of political issue the Supreme Court normally cannot resist, so we can expect this case and sovereign immunity issues generally to be decided by the Supreme Court,” adds Quinn. “And if the Supreme Court gets it wrong, we can be certain States will demand Congress step in.”

Source: IP Watchdog

Posted under: Tech Transfer e-News

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