Legislation to Curtail Sovereign Immunity in IPR May Be On the Way

Posted by Stuart Duncan Smith on Nov 13, 2017

Stuart Duncan Smith

A Native American tribe’s recent deal to obtain several pharmaceutical patents and seek dismissal of pending IPRs on the basis of sovereign immunity has piqued the public’s interest in sovereign immunity to IPR. The same tribe also recently asserted several other patents against Microsoft and Amazon, and may assert sovereign immunity from IPR there too. Prompted by the tribe’s actions, a subcommittee of the House Judiciary Committee held a hearing on what Congress can and should do about it. Although much of the hearing focused on what many perceive as the problem of tribal sovereign immunity in IPR—not the use of sovereign immunity to IPR by state universities—many of the proposed reforms would also target state universities. Whether any of these reforms will be enacted remains to be seen, but there are reasons to doubt their constitutionality.

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Topics: Sovereign immunity

Sovereign Immunity Again Applied to IPR

Posted by Stuart Duncan Smith on Jul 20, 2017

Stuart Duncan Smith

For the third time, the Board applied sovereign immunity as a defense to IPR. In Reactive Surfaces Ltd. v. Toyota Motor Corporation (IPR2017-00572 & IPR2016-01914), the Board determined that a public university could raise the defense of sovereign immunity as a reason why it should not be subject to IPR. However, in Reactive Surfaces, the Board refused to dismiss the proceeding because it found that Toyota, a co-owner of the challenged patent that did not claim sovereign immunity, “would represent adequately the [university’s] interests.”

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Topics: Sovereign immunity

Sovereign Immunity Reigns in IPR Again

Posted by Stuart Duncan Smith on May 26, 2017

Stuart Duncan Smith

Earlier this week, the use of sovereign immunity as a defense to IPR took a major step forward. For only the second time, the PTAB dismissed an IPR against a state entity on the basis of sovereign immunity—another decision significant to public universities with many patents as well as those who would challenge those patents. This latest decision answers several questions about when the sovereign immunity defense is available to patent owners in IPR.

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Topics: Sovereign immunity

Sovereign Immunity: Takeaways From the First Successful Defense

Posted by Stuart Duncan Smith on Apr 11, 2017

Stuart Duncan Smith

As previously discussed, we recently led the first successful defense against an IPR on the basis of sovereign immunity. Already, two other state universities are seeking dismissal of IPRs on that same basis: NeoChord v. University of Maryland (IPR2016-00208) and Reactive Surfaces v. Toyota (IPR2016-01914 & IPR2017-00572). As patent owners consider whether to assert the sovereign immunity defense to IPR, they should keep in mind several key lessons we found useful.

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Topics: Sovereign immunity

Sovereign Immunity: A Defense to IPR Fit for a Monarch

Posted by Stuart Duncan Smith on Apr 7, 2017

Stuart Duncan Smith

Wolf Greenfield recently opened a new frontier for public entities with patents challenged in IPR by securing dismissal of two IPRs on the basis of sovereign immunity. The decision, which is the first to apply sovereign immunity as a defense to IPR, is particularly significant to public universities with many patents—and those who would challenge those patents in IPR. Though questions remain unanswered, the decision is disrupting the practice of IPRs.

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Topics: Sovereign immunity

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.