Fed Circ won’t revive IPR immunity for state universities


Muireann Bolger

Fed Circ won’t revive IPR immunity for state universities

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The US Court of Appeals for the Federal Circuit has refused to review a panel decision that prevented the University of Texas (UT) from using sovereign immunity to protect its cancer vaccine patents from inter partes reviews (IPRs).

The decision was handed down yesterday, February 16, in a one-page order, denying UT’s request for an en banc rehearing of the ruling.

The dispute over the university’s sovereign immunity emerged when Baylor College of Medicine petitioned for a review of two patents owned by the Board of Regents of UT.

UT moved to dismiss the petitions on state sovereign immunity grounds, claiming that it is a sovereign state entity under Texas law and that, under the 11th Amendment, it should not be subject to IPRs.

Case precedent

However, the Patent Trial and Appeal Board (PTAB) denied the motion in January 2020, citing the case precedent set by Regents of the University of Minnesota v LSI Corp in June 2019.

In that ruling, the Federal Circuit held that state sovereign immunity does not apply to IPR proceedings.

In doing so, the court dismissed an appeal from the Regents of the University of Minnesota in its dispute against semiconductor manufacturer LSI Corporation and telecoms company Ericsson.

The Federal Circuit largely based its decision on a previous case, Saint Regis Mohawk Tribe v Mylan Pharmaceuticals (2018).

The Federal Circuit said that as it held in Saint Regis, that an “IPR is viewed as an agency’s reconsideration of a previous patent grant that is aided by information supplied by a third party, and state sovereign immunity does not bar these proceedings”.

The University of Minnesota petitioned for certiorari, but the Supreme Court denied the petition in January 2020.

When UT appealed the PTAB’s decision regarding its own assertion of sovereign immunity, the Federal Circuit found against the university in a panel decision in December 2020, reiterating its stance that “[s]overeign immunity does not apply to IPR proceedings when the patent owner is a state” and that affirming that it was “by the University of Minnesota decision”.

At the start of the year, UT argued in its petition requesting an en banc rehearing that University of Minnesota v LSI Corp conflicts with US Supreme Court case precedent, “upsets the balance of our federal system”, and was “wrongly decided”.

 ‘A cloud of uncertainty’

The Association of Public and Land-Grant Universities (AIPLU) filed an amicus curiae brief last month, backing the university’s position.

The filing held that compelling public universities to participate in IPRs would saddle public universities with substantial litigation costs, divert resources (including the time of research faculty) away from the core mission of these state institutions.

The ruling would also “impede the ability of state universities to disseminate technology due to the cloud of uncertainty that envelops a patent subject to an IPR”, added the association.

The brief contended that if the decision is allowed to stand, states would be required to defend themselves in trials brought by private litigants. This, stated the association, would be a direct affront to the well-established sovereignty principles grounded in the US Constitution.

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Fed Circuit, IPR immunity, University of Texas, patents, sovereign immunity, university of Minnesota, cancer vaccine patents, Bayor College of Medicine