SCOTUS urged to reject IPR immunity appeal after Arthrex
The US Supreme Court should not review a University of Minnesota (UMN) state sovereign immunity appeal while the inter partes review (IPR) process remains shrouded in uncertainty, defendant Ericsson has claimed.
Last month, the US Court of Appeals for the Federal Circuit in Arthrex v Smith & Nephew, ruled that the structure of the US Patent Trial and Appeal Board (PTAB) was unconstitutional due to the way its administrative patent judges (APJs) are appointed.
In an amicus brief filed last Thursday, December 5, the Swedish technology company said it is “anyone’s guess” as to what the fallout from the ruling will be.
The appeals court attempted to solve the problem by giving the director of the US Patent and Trademark Office (USPTO) the power to remove APJs from office.
The court fashioned the remedy by severing the part of the Patent Act that restricts the US Secretary of Commerce and USPTO director’s ability to fire APJs.
According to Ericsson, the Federal Circuit ruling means that the IPR system has been “thrown into limbo”, and the US Supreme Court should wait until the issue has been resolved before considering a patent appeal brought by UMN.
UMN has asked the Supreme Court to reverse another Federal Circuit ruling, which said it could not invoke the doctrine of state sovereign immunity to evade IPR proceedings.
The case arose after UMN sued LSI Corporation and Ericsson for patent infringement. LSI and Ericsson responded with a petition for IPR of UMN’s patents.
UMN argued that, as a state-owned body, its patents could not face IPR under the doctrine of state sovereign immunity.
The Federal Circuit rejected this argument, citing the precedent set by Saint Regis Mohawk Tribe v Mylan Pharmaceuticals Inc, which held that tribal sovereign immunity was not applicable in IPR proceedings.
In response to UMN’s bid to have the Supreme Court review the case, Ericsson argued that granting certiorari would be “premature” in light of the Arthrex ruling.
“To say that the structure of the [PTAB] remains unsettled after the Arthrex panel decision would be an understatement,” Ericsson wrote.
The USPTO is seeking an en banc review of the Arthrex decision. As an alternative remedy to the problems identified in Arthrex, the US government has said that the USPTO director should be able to review IPR decisions.
Given the different potential outcomes in play, “any decision in this case could well become obsolete immediately,” Ericsson said of UMN’s appeal.
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