PTAB dents sovereign immunity claim in University of Minnesota case

The US Patent Trial and Appeal Board (PTAB) has taken aim at sovereign immunity, ruling that the University of Minnesota must defend against challenges brought against five of its patents.

Yesterday, December 19, an expanded PTAB panel ruled that the university must defend against inter partes review (IPR) challenges brought by telecoms company Ericsson, finding that the university lost the right to argue sovereign immunity when it sued for infringement.

In June, the Regents of the University of Minnesota filed a motion to dismiss IPRs of the five patents, which cover aspects of wireless communication systems.

The university argued that it is entitled to avoid the proceedings because it is immune to PTAB authority under the Eleventh Amendment of the US Constitution.

Chief Administrative Patent Judge David Ruschke decided to expand the panel due to the “exceptional nature” of the issues presented.

Sovereign immunity hit the headlines in September this year, when pharmaceutical company Allergan transferred its patent rights for a dry eye treatment to a Native American tribe, in a bid to obtain immunity against IPRs.

Sister site LSIPR has followed the developments of this deal. In November, a US House of Representatives committee called a hearing on the issue of IP rights being owned by entities that claim sovereign immunity.

For a roundup of the testimonies provided, please click here.

In the current case, the PTAB ruled that the university had waived its Eleventh Amendment immunity claim.

Ruschke said that state sovereign immunity applies in IPRs, but that because the University of Minnesota had filed an action in federal court alleging infringement of the patents being challenged in the PTAB proceeding, it was not entitled to sovereign immunity.

“Thus, it is reasonable to view a state [entity] that files a patent infringement action as having consented to an IPR of the asserted patent,” said Ruschke.

“It would be unfair and inconsistent to allow a state [entity] to avail itself of the federal government’s authority by filing a patent infringement action in federal court, but then selectively invoke its sovereign immunity to ensure that a defendant is barred from requesting an IPR of the asserted patent from a different branch of that same federal government,” concluded the PTAB.

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