Fed Circuit rules against university in state sovereign immunity appeal
The US Court of Appeals for the Federal Circuit has delivered a ruling that state sovereign immunity does not apply to inter partes review (IPR) proceedings.
In a judgment on Friday, June 14, 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.
In its judgment on Friday, the Federal Circuit largely based its decision on a previous case, Saint Regis Mohawk Tribe v Mylan Pharmaceuticals Inc.
The Federal Circuit said that as it held in Saint Regis, 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 dispute dates to 2016, when the Regents of the University filed a patent infringement claim against LSI Corporation and Ericsson, alleging that LSI’s semiconductors, which were used in Ericsson’s products, infringed a number of its patents (US number 5,859,601; 7,251,768; 8,588,317; 8,718,185; 7,292,647; and 8,774,309).
LSI and Ericsson separately petitioned for inter partes review, seeking a determination that certain claims of the patents were unpatentable on grounds of obviousness. In response, the Regents of the University, which is an arm of the state of Minnesota, filed a motion to dismiss the proceedings based on state sovereign immunity.
The ruling comes after the US Patent and Trademark Office previously held that sovereign immunity does apply to IPR proceedings, but that the university had waived its immunity by filing suits against LSI and Ericsson in district court.
In Saint Regis, the Patent Trial and Appeal Board ruled that the doctrine of tribal sovereign immunity should not be applied to IPR proceedings.
The Regents of the University had argued that the reasoning in Saint Regis is “inapposite to the current appeal because there are salient differences between tribal and state sovereign immunity”.
The Federal Circuit said that in that case, it left the question of whether there is any reason to treat state sovereign immunity differently to tribal immunity for another day.
“We now conclude that the differences between tribal and state sovereign immunity do not warrant a departure from the reasoning in Saint Regis,” it said.
Jonathon Stroud, Chief IP counsel at Unified Patents in Washington, DC, said that after the ruling against the “sham tribal sovereign immunity arrangement in Saint Regis, it seemed unlikely the Federal Circuit would hold that state sovereign immunity could apply in post-grant reviews”.
Matt Rizzolo, a partner at Ropes & Gray in Washington, DC, said that in light of the large number of patents held by state research entities and universities, an en banc petition or petition for certiorari is likely.
“Given the Supreme Court’s affinity for cases involving sovereign immunity, this is sure to continue to draw significant attention,” he added.
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