Tech Transfer eNews Blog

U of Minnesota petitions Supreme Court to review Fed Circuit decision on sovereign immunity in inter partes review


By Jesse Schwartz
Published: September 18th, 2019

The University of Minnesota (UMN) has filed a petition to the US Supreme Court disputing a decision by the U.S. Court of Appeals for the Federal Circuit that state sovereign immunity does not apply to inter partes review (IPR).

In the petition, UMN urges the Supreme Court to review the Federal Circuit’s “indisputably consequential” June ruling in which it dismissed an appeal from UMN in a patent infringement dispute against semiconductor manufacturer LSI Corporation and telecoms company Ericsson.

In December 2017, the Patent Trial and Appeal Board (PTAB) had concluded that although state sovereign immunity did apply to IPRs, UMN had lost the right to argue immunity when it sued for patent infringement. However, the June decision by the Federal Circuit dismissed the PTAB’s conclusion that sovereign immunity applied to IPRs in the first place. The Federal Circuit largely cited Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., which had rejected the use of tribal sovereign immunity in IPR proceedings.

UMN has argued that the reasoning in Saint Regis is “inapposite to the current appeal because there are salient differences between tribal and state sovereign immunity.” In addition, UMN says that the PTAB’s finding that the university had waived its immunity by suing for patent infringement is no reason to deny review of the preexisting question of whether immunity applies to IPRs in general.

In the petition to the Supreme Court, UMN says of the decision: “It injures the sovereignty of every state and subjects public universities to a new and increasingly invoked form of litigation without their consent. Those disputes implicate billions of dollars’ worth of IP rights at the center of some of the most important sectors of our economy.”

Source: WIPR

Posted under: Tech Transfer e-News

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