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Sovereign Immunity and Patent Challenges

On Behalf of | Feb 6, 2017 | Uncategorized

The USPTO’s Patent Trial & Appeal Board (PTAB) recently dismissed a petition for Inter Partes Review (IPR) challenging the validity of a patent owned by the University of Florida Research Foundation on unusual grounds. In a detailed decision, the PTAB ruled that the Research Foundation-a Florida state institution-had not waived its sovereign immunity under the Eleventh Amendment.

The USPTO’s Patent Trial & Appeal Board (PTAB) recently dismissed a petition for Inter Partes Review (IPR) challenging the validity of a patent owned by the University of Florida Research Foundation on unusual grounds. In a detailed decision, the PTAB ruled that the Research Foundation-a Florida state institution-had not waived its sovereign immunity under the Eleventh Amendment.

Notably, the PTAB found no merit in the challenger’s arguments that the lack of monetary damages in proceedings before the PTAB distinguishes such proceedings from a judicial challenge. Thus, without consent, the validity of patents owned by state entities (such as state universities) cannot be challenged at the USPTO. This could add significant value to such patents, especially during the licensing stage.

An interesting question remains whether a state entity implicitly waives its sovereign immunity if it brings a patent infringement action itself, and the patent is subsequently challenged in front of the PTAB.

Case details: Covidien LP v. UFRF Inc., IPR2016-01274, paper 19.

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