Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Just when the PTAB sovereign immunity wars seemed to be winding down, the U.S. Supreme Court has heated them up again. Was Monday's decision in Franchise Tax Board of California v. Hyatt a game changer for state university patent owners, or just some meaningless dicta nestled in a tax dispute, as a lawyer for an accused infringer puts it? I've got some thoughts. Meanwhile, Stanford Law School has unveiled a publicly accessible database of 12 years' worth of patent litigation, featuring 11 different categories of non-practicing entities. Mark Lemley is already putting it to work. As always you can email me your own perspectives and follow me on Twitter.

Justice Clarence Thomas. (Photo: Diego M. Radzinschi/ALM)

An Enigma Nestled in a Supreme Court Decision

The Supreme Court on Monday overruled a 40-year-old decision on sovereign immunity between the states. A lot of normal people looked at Franchise Tax Board of California v. Hyatt and became concerned—or encouraged, depending on their perspective—about the high court's willingness to cast aside other precedents, perhaps on issues like abortion or gun rights.

In the IP bar, of course, the burning question is: How will this affect inter partes reviews involving state universities?

The following day, the University of Minnesota's lawyers at Wolf Greenfield & Sacks were quoting Justice Clarence Thomas' 5-4 decision to the Federal Circuit: “[T]he only forums in which the States have consented to suits by one another and by the Federal Government are Article III courts,” Thomas had written.

“The PTAB is not an Article III court,” Wolf Greenfield partner Michael Albertpointed out in a letter brief. Therefore, it should not be allowed to hear Ericsson's and LSI Corp.'s challenges to university-owned patents.

The Federal Circuit ruled last summer that the Saint Regis Mohawk Tribecould not invoke tribal sovereign immunity before the PTAB, because IPRs are as much an agency proceeding as they are a lawsuit. Now the court is weighing state sovereign immunity in Regents of the University of Minnesota v. LSI and Regents v. Ericsson. A three-judge panel that heard argument in March seemed to be leaning against the university.

Albert tried to push back in Tuesday's letter. “Some have erroneously characterized IPRs as 'proceedings conducted by an agency of the federal government,'” he wrote, referring to LSI, the Justice Department and intervenor Gilead Sciences. “Even if true, that would be immaterial per [the Supreme Court's] emphasis that 'Article III courts' are the 'only forums in which the States have consented to suits,' even 'by the Federal Government.'”

Counsel for Gilead and Ericsson have already replied. “Nestled in a dispute between a resident of Nevada and the State of California about state taxation and whether Nevada should have honored California's immunity from such private suits, Minnesota has found a sentence from the Supreme Court this week that it contends 'contradicts' the position Gilead took” before the Federal Circuit, Bartlit Beck partner Adam Mortara wrote for Gilead.

But the Supreme Court made clear in last year's Oil States v. Greene's Energythat IPRs are not private suits. “This Court agreed in Saint Regis Mohawk Tribe v. Mylan Pharms. Inc.,” Mortara wrote.

He and Orrick, Herrington & Sutcliffe partner Mark Davies, who represents Ericsson, pointed out that Monday's decision reaffirmed other Supreme Court sovereign immunity opinions, including 2002's Federal Maritime Commission v. South Carolina State Ports Authority. That case “teaches that sovereign immunity is implicated by an administrative proceeding only where the similarities between the administrative proceeding and civil litigation 'are overwhelming,'” Davies notes.

My own takeaway: The Franchise Tax Board decision probably isn't enough to move the needle for Minnesota at the Federal Circuit. But if the Supreme Court were to eventually take the case? It's pretty clear that all bets are off at the high court when it comes to sovereign immunity.

Stanford Is Serving 11 Flavors of NPE

It's been seven years in the making. This week Stanford Law School made available to the public a database of every patent lawsuit that's been filed since 2007. Under the guidance of Stanford's Shawn Miller and Mark Lemley, student researchers have categorized and tracked 43,000 suits by the type of plaintiff that filed them—whether a practicing entity, or one of 11 different types of NPEs.

The Stanford NPE Litigation Database allows researchers to track outcomes by, for example, whether a plaintiff was an individual inventor, a failed startup, a university, a company that acquires patents as its business, an IP subsidiary of a product company, an industry consortium, and several other categories.

Lemley is already making use of the data in a forthcoming article that compares how practicing and non-practicing entities have fared when asserting standard-essential patents in court. (His finding: “NPEs do much worse in court, even when they assert SEPs.”)

Sidley Austin partner Vernon Winters said he could imagine a number of ways the data will be useful: In-house lawyers who are exposed to patent suits sporadically and are trying to calibrate risk. Sophisticated players trying to focus their amicus activities for maximum impact. He expects to use it himself as a volunteer on the Northern District of California's neutral panel, to demonstrate actual outcomes “with these types of patents in this district. Here's where cases like this usually end up.”

A New Entrant in the Autonomous Driving Wars

You've heard of Waymo and Uber. You probably know that auto makers like GM and Tesla are making big investments in autonomous driving, as are focused tech companies like Zoox.

Here's one more to add to a growing list. California-based American GNC Corp. sued Toyota Motor Corp. this week for allegedly infringing three of its patents, including one on autonomous vehicle navigation, my ALM colleague Angela Morris reports.

Alison Richards of the Global IP Law Group in Chicago, who represents American GNC, told Morris that the press has sometimes unfairly called her client a patent troll. “They're not a patent troll,” she said. “They're a high-technology company that's done a lot of important work for a lot of entities, including NASA and the Department of Defense.”

Stanford agrees: It's classified American GNC as a product company.

Toyota said it had not yet been served with the complaint and declined comment.

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.