University of Minnesota petitions SCOTUS to review IPR immunity
The US Court of Appeals for the Federal Circuit erred in finding that state sovereign immunity doesn’t apply to inter partes review (IPR) proceedings, claimed the University of Minnesota in its petition filed at the US Supreme Court last week.
On Thursday, September 12, the University of Minnesota urged the US’s highest court to review the Federal Circuit’s June ruling, stating that the Federal Circuit’s decision is “indisputably consequential”.
In its petition for a writ of certiorari, the university claimed: “It injures the sovereignty of every state and subjects public universities to a new and increasingly invoked form of litigation without their consent. Those disputes implicate billions of dollars’ worth of IP rights at the centre of some of the most important sectors of our economy.”
Back in December 2017, the Patent Trial and Appeal Board (PTAB) had concluded that although state sovereign immunity did apply to IPRs, the University of Minnesota had lost the right to argue sovereign immunity when it sued for patent infringement.
However, in June this year, the Federal Circuit dismissed an appeal from the Regents of the University of Minnesota in the dispute against semiconductor manufacturer LSI Corporation and telecoms company Ericsson.
The Federal Circuit dismissed the PTAB’s conclusion that sovereign immunity applied to IPRs in the first place, largely basing its decision on Saint Regis Mohawk Tribe v Mylan Pharmaceuticals Inc, which had rejected the use of tribal sovereign immunity in IPR proceedings.
While 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 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,” said the Federal Circuit.
In its petition, the university argued that the Federal Circuit had rejected the contrary view of the PTAB (that state sovereign immunity applied to IPRs) and contradicted the Supreme Court’s recognition that IPRs are fundamentally adjudicative proceedings—“precisely the kind of proceedings to which sovereign immunity applies”.
According to the university, the PTAB’s finding that the university had waived its immunity by filing an infringement action in district court is no reason to deny review of the antecedent question of whether immunity applies to IPRs in the first place.
The university added: “If states are to be subjected to IPRs without their consent, it should be on the basis of this court’s considered judgment, not an unreviewed decision of a lower court.”
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