States Not Immune From PTAB Proceedings, Federal Circuit Rules
Fifteen states had argued that they and their public universities shouldn't have to expose their patents to validity review at the Patent Trial and Appeal Board.
June 14, 2019 at 08:48 PM
4 minute read
States, like Native American tribes, are not immune from having their patents reviewed at the Patent Trial and Appeal Board.
So ruled the U.S. Court of Appeals for the Federal Circuit on Friday, resolving a dispute that pitted the University of Minnesota against four large technology companies.
Fourteen states, including Texas and New Jersey, had backed the university's bid to shield patents owned by public research universities from inter partes review (IPR). The procedure was established by the 2011 America Invents Act and gives the U.S. Patent and Trademark Office (USPTO) the opportunity to reconsider the validity of already-issued patents.
The Federal Circuit ruled last summer that Native American tribal immunity is not implicated in IPR proceedings, because they're more of an administrative agency review than they are civil litigation. A three-judge panel led by Judge Timothy Dyk on Friday followed the same rationale for the states in Regents of the University of Minnesota v. LSI, despite some conflicting signals from the U.S. Supreme Court.
“We hold that IPR, like inter partes reexamination, is similar to an agency enforcement action instituted by the USPTO 'upon information supplied by a private party' rather than civil litigation, so state sovereign immunity is not implicated,” Dyk wrote.
The decision hands a big win to Kilpatrick Townsend & Stockton partner Kristopher Reed, who argued the appeal for LSI Corp., Avago Technologies U.S. Inc., and Bartlit Beck partner Adam Mortara, who argued for intervenor Gilead Sciences Inc. Orrick, Herrington & Sutcliffe partner Mark Davies also played a leading role, representing Ericsson Inc.
Wolf, Greenfield & Sacks represented the University of Minnesota.
The case began when the university sued four different wireless carriers in Minnesota federal court, accusing their 4G LTE technology of infringing a handful of university patents. Ericsson intervened because it supplied the equipment. Two years later, the university brought separate suits against LSI and Avago.
Ericsson, LSI and Avago petitioned for IPR at the Patent Trial and Appeal Board. The university invoked its sovereign immunity and sought to dismiss the IPRs. Then-Chief Judge David Ruschke wrote for the board that the university had waived its sovereign immunity by initiating the lawsuits. PTAB Judge Jennifer Bisk concurred separately, saying that IPRs are in rem proceedings that don't implicate sovereign immunity.
On Monday the Federal Circuit seemed to be of two minds as well. The panel followed the logic of Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, which held that IPRs, although adversarial in nature, aren't sufficiently similar to private civil litigation to implicate sovereign immunity.
Wolf Greenfield partner Michael Albert had pointed out that the Supreme Court just this week described the IPR as an “adversarial, adjudicatory proceeding” between “the 'person' who petitioned for review and the patent owner.” But, Dyk wrote, “that does not disturb the basic purpose of the proceeding,” which the Supreme Court said in 2016's Cuozzo Speed Technologies v. Lee is to reexamine an earlier agency decision.
However, Dyk and Judges Evan Wallach and Todd Hughes collectively tacked on nine pages of “additional views” following their opinion, stating that they, too, believe IPRs are in rem proceedings that don't implicate sovereign immunity.
“Just as with a bankruptcy proceeding to discharge a debt, IPR is an in rem proceeding that is not premised on obtaining jurisdiction over a state or its officers,” they wrote.
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