On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court. ...more
Sovereign immunity refers to the doctrine that the government cannot be sued without its consent. Specifically, the 11th Amendment precludes federal courts from exercising jurisdiction over states in suits brought by private...more
10/18/2017
/ Dismissals ,
Eleventh Amendment ,
Exclusive Licenses ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Joint Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
State Universities ,
Tribal Governments
In a creative move to take advantage of recent PTAB decisions regarding Sovereign Immunity, (see e.g., Covidien LP v. University of Florida Research Foundation, IPR2016-01274 and Neochord, Inc. v. University of Maryland,...more
9/14/2017
/ Eleventh Amendment ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Litigation Strategies ,
Motion to Dismiss ,
Orange Book ,
Patent Royalties ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
The PTAB has again addressed sovereign immunity in the context of an IPR. Reactive Surfaces, LTD. petitioned for IPR of U.S. Patents No. 8,394,618 and 8,252,571. The ’618 and ’571 patents are co-owned by Toyota Motor...more
On May 23, 2017, the PTAB granted the University of Maryland’s (UM) motion to terminate inter partes review based on UM’s sovereign immunity in Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc.,...more
On January 25, 2017, a panel of the Patent Trial and Appeal Board (PTAB) held that “Eleventh Amendment Immunity bars the institution of an inter partes review against an unconsenting state that has not waived sovereign...more