PTAB Rejects Sovereign Immunity Defense In View Of Pending Litigation Brought By Sovereign

Proving that even a broken clock is right twice a day, the PTAB in Ericsson v. Regents of the University of Minnesota (decision available here), rejected Minnesota’s sovereign-immunity defense to PTAB proceedings instituted by Ericsson (note: my firm represents Ericsson, but not in these proceedings). I predicted this outcome in one of my recent posts.

In the case, the University of Minnesota sought to dismiss Ericsson’s petition for inter partes review “because it is a sovereign that is immune . . . under the Eleventh Amendment to the U.S. Constitution.” The PTAB agreed that with Minnesota that “IPR is an adjudicatory proceeding of a federal agency from which state entities are immune” but nevertheless held that Minnesota had “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.” The PTAB wrote:

A party served with a patent infringement complaint in federal court must request an inter partes review of the asserted patent within one year of service of that complaint or be forever barred from doing so. See 35 U.S.C. § 315(b). Thus, it is reasonable to view a State that files a patent infringement action as having consented to an inter partes review of the asserted patent. . . . It would be unfair and inconsistent to allow a State to avail itself of the federal government’s authority by filing a patent infringement action in federal court, but then selectively invoke its sovereign immunity to ensure that a defendant is barred from requesting an inter partes review of the asserted patent from a different branch of that same federal government.

If the Federal Circuit upholds this decision, it will effectively be the end of parties “purchasing” Native American Tribe sovereign immunity, a la the Allergen deal I wrote about while back.

Finally, the decision is also notable for the “panel stacking” that occurred. Typically, three judge panels issue PTAB decisions. In this case, however, four additional judges were added to the panel, including the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, and two Vice Chief Administrative Patent Judges. This “panel stacking” has invited much criticism in the currently pending Oil States Supreme Court case, which challenges the constitutionality of the PTAB.

Congratulations to Ericsson on this PTAB decision!!

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