June 2019

State Universities Not Entitled to Sovereign Immunity from IPRs

Sovereign immunity does not exempt state governments from inter partes review, according to a Federal Circuit decision issued on Friday in Regents of the University of Minnesota v. LSI Corp. The decision extends the Federal Circuit’s earlier decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals that Native American tribes cannot rely on sovereign immunity against an IPR. This case began with the University of Minnesota suing semiconductor supplier LSI and customers of telecommunications company Ericsson for infringement. LSI and Ericsson responded with inter partes review petitions. Despite Minnesota’s status as a public university, that is, part of the state government of Minnesota, the Patent Trial and Appeal Board ruled that sovereign immunity did not prevent the IPR petition from being instituted. The decisions to institute the IPRs was appealed immediately to the Federal Circuit. Pharmaceutical company Gilead, facing a similar situation, successfully intervened in the appeal. While the appeal was pending, the Federal Circuit issued its decision in Saint Regis. In that case, the Federal Circuit ruled that tribal sovereign immunity did not prevent institution of an IPR against a patent owned by the Saint Regis Mohawk tribe. The court decided that IPRs were closer to agency enforcement actions,… Read More »State Universities Not Entitled to Sovereign Immunity from IPRs