Expanding on its precedential ruling against the use of tribal sovereign immunity at the Patent and Trial Appeal Board (“PTAB”) from last summer in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., the Federal Circuit ruled that there is no sovereign immunity for states in proceedings at the PTAB either. The decision was based on the fact that tribal sovereign immunity and state sovereign immunity “do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity.”
The ruling came in Regents of the University of Minnesota v. LSI Corporation, where the Regents of the University of Minnesota (UMN) had appealed the decision of the PTAB not to dismiss an inter partes review that had been petitioned against their patent by LSI Corporation and Ericsson Inc. (collectively LSI). LSI had been sued UMN for infringement in district court and filed the petition for a review of the patent before the PTAB in response. UMN then attempted to assert sovereign immunity to avoid the review at the Patent Office.
This ruling by the Federal Circuit gains added importance when considering that the Supreme court denied cert to review the tribal sovereign immunity issue on April 15 earlier this year. It will bear watching how this case proceeds and whether state sovereign immunity might be able to make it farther than Saint Regis did or if both state and tribal sovereign immunity has had their last appearance at the PTAB.