Are patents owned by state universities immune from inter partes review?

The United States government has a hierarchical structure. Each states has its own government and the federal government is made up of representatives of all the states. Each state is considered its own sovereign and has sovereign immunity. Sovereign immunity is granted to the states in the 11th Amendment of the Constitution of the United States. Sovereign immunity is also called governmental immunity, from lawsuits. Sovereign immunity means that states cannot be sued unless the states consents to the lawsuit. The federal government also cannot create a law which removes a state’s sovereign immunity. There are many technical exceptions to sovereign immunity, but those exceptions do not deal with patent law.

Most states in the United States have a public university system which is operated by the state. As a state entities these public universities also have sovereign immunity. Many states universities perform research that turns into patented inventions.

The America Invents Act introduced a number of new innovations to United States Patent Law. One of the innovations of the America Invents Act is the Patent Trial and Appeal Board. The Patent Trial and Appeal Board is an administrative law body of the United States Patent and Trademark Office which decides issues of patentability. The issue of sovereign immunity has been raise in Patent Trial and Appeal Board cases a number of times.

In COVIDIEN v. UNIVERSITY OF FLORIDA RESEARCH FOUNDATION (Case IPR2016-01274 Jan, 2017) the Patent Trial and Appeal Board granted University of Florida’s motion to dismiss the inter parties review because of sovereign immunity. The Patent Trial and Appeal Board held that getting a patent does not waive sovereign immunity, and because the University of Florida is part of the state of Florida, it is entitled to sovereign immunity from inter parties review.

In NEOCHORD v. UNIVERSITY OF MARYLAND, BALTIMORE and HARPOON MEDICAL, INC. (Case IPR2016-00208 May, 2017) the Patent Trial and Appeal Board granted University of Maryland’s motion to dismiss the inter parties review because of sovereign immunity. In that case Neochord tried to invalidate a patent owned by the University of Maryland and licensed to Harpoon Medical. The Patent Trial and Appeal Board found that the University of Maryland may raise sovereign immunity as a defense, it did not waive it’s immunity by participating in the inter parties review, it did not waive it’s immunity by licensing the patent to Harpoon Medical, and that the inter parties review could not continue without the University of Maryland.

In REACTIVE SURFACES v. TOYOTA MOTOR CORPORATION (Case IPR2016-01914 July, 2017) the Patent Trial and Appeal Board granted University of Minnesota’s motion to dismiss the inter parties review because of sovereign immunity, but allowed the inter parties review to continue. In that case Toyota and the University of Minnesota were co-owners of the patent. The Patent Trial and Appeal Board held because University of Minnesota were co-owners of the patent they had equal interest in defending the patent, that Toyota could adequately defend that patent without University of Minnesota’s help and that dismissing University of Minnesota from the inter parties review did not require Toyota to be dismissed.

In ERICSSON vs. REGENTS OF THE UNIVERSITY OF MINNESOTA (Case IPR2017-01186 Dec, 2017) the Patent Trial and Appeal Board denied the University of Minnesota’s motion to dismiss the inter parties review because of sovereign immunity. In that case the University sued Ericsson for patent infringement. Ericsson requested inter parties review of the patent. The court agreed with the University that an inter parties review is an adjudicatory proceeding of a federal agency from which state entities are immune. But the Patent Trial and Appeal Board found that the University had waived its sovereign immunity by filing a patent infringement lawsuit. The Patent Trial and Appeal Board held that it would be unfair the the alleged patent infringer to allow the University to sue in federal court, and at the same time shield the University from inter parties review.

These four cases highlight the major points about the inter parties review process. The major things to remember are:

State Universities can claim sovereign immunity from inter parties review.
Licensing the patent does not waive sovereign immunity.
If there are multiple owners of a patent, sovereign immunity might not protect the patent from inter parties review.
If a state university sues for patent infringement, sovereign immunity from inter parties review is waived.

The subject of patents and sovereign immunity is a very complex and nuanced area of law. If you have questions about sovereign immunity and patents it is best you consult with an experienced patent attorney.

If you have question or comments for the editors of this blog please email us: admin@uspatentlaw.cn