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17 July 2017Patents

PTAB dismisses university from IPR, but Toyota remains

The Patent Trial Appeal Board (PTAB) has dismissed the Regents of the University of Minnesota from an inter partes review (IPR), finding that the institution is entitled to sovereign immunity.

The  decision was handed down on Thursday, July 13.

Toyota and the Regents, who co-own the disputed patent, were challenged by IPR petitioner Reactive Surfaces in January.

Reactive had asked the PTAB to review US patent number 8,252,571, titled “Preparation of solvent-borne polymeric bioactive coatings”.

But the Regents filed a motion to dismiss, arguing that it was entitled sovereign immunity under the Eleventh Amendment to the US Constitution.

Sovereign immunity is a legal doctrine under which the sovereign or state cannot commit a legal wrong and is immune from civil suits or criminal prosecution.

The Regents argued that it is entitled to sovereign immunity because it is “an arm of the state of Minnesota”, which the PTAB agreed to.

It also argued that the IPR proceeding should not continue in the absence of the Regents.

Reactive Surfaces opposed on several grounds, including that the Regents had failed to prove that it is entitled to assert sovereign immunity and that the Eleventh Amendment does not extend to IPRs.

The petitioner added that any sovereign immunity by the Regents does not extend to Toyota.

The PTAB agreed that the Regents “cannot be compelled to join this proceeding against their will”, but that the proceeding would continue in its absence.

It was also ordered that the due date for Toyota’s preliminary response is set at a month from this decision.

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