I have to give it to creative, resilient lawyers (and in fact, I have lauded them in the past). When the United States Supreme Court issued its decision in Allen v. Cooper, 140 S.Ct. 994 (2020), a decision holding that the...more
Companies seeking to license patents from state universities face a special risk--sovereign immunity. The 11th Amendment to the US Constitution deprives federal courts of jurisdiction to hear complaints brought by a citizen...more
On July 24, 2020, a panel of the Court of Appeals for the Federal Circuit issued splintered precedential opinions surrounding the interplay of state sovereign immunity under the Eleventh Amendment and required joinder of...more
273-1 Federal Circuit Holds University of Texas is Immune from Involuntary Joiner, Holds Case against Potential Infringer may Proceed in School’s Absence - The Federal Circuit recently affirmed-in-part, reversed-in-part,...more
Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more
In a conundrum worthy of a law school civil procedure examination, plaintiff Gensetix found itself apparently with no remedy for infringement by Baylor College of Medicine, Diakonos Research Ltd., and William Decker of...more
PATENT CASE OF THE WEEK - Uniloc 2017 LLC v. Hulu, LLC, Appeal No. 2019-1686 (Fed. Cir. July 22, 2020) - In this appeal, the Federal Circuit held for the first time that in inter partes review (“IPR”) proceedings, when...more
Gensetix, Inc. v. Baylor College of Medicine - Before Newman, O’Malley, and Taranto. Appeal from the U.S. District Court for the Southern District of Texas. Summary: A state can invoke sovereign immunity under the...more
The US Court of Appeals for the Federal Circuit rejected the arguments of a state university in support of sovereign immunity and affirmed the district court’s decision to transfer the case to the District of Delaware. Board...more
State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more
PATENT CASE OF THE WEEK - Board of Regents of the University of Texas Sys. v. Boston Scientific Corp., Appeal No. 2018-1700 (Fed. Cir. Sept. 5, 2019) - This week’s case of the week involves issues relating to venue...more
BOARD OF REGENTS v. BOSTON SCIENTIFIC CORP. Before Prost, Reyna, and Stoll. Appeal from the United States District Court for the Western District of Texas. Summary: The patent venue statute governs actions filed by a...more
Under constitutional principles of United States law, states generally enjoy sovereign immunity. This immunity, enshrined in the 11th amendment of the US Constitution, bars private parties from bringing lawsuits against the...more
In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more
Under the Eleventh Amendment of the Constitution, States enjoy sovereign immunity from a wide variety of suits. But there are exceptions, including congressional abrogation of immunity. Twenty years ago, in Florida Prepaid...more
Legal creativity in argument is the lifeblood of the litigator's craft, and nowhere more than in patent litigation in view of the complexities of the law applied to technological fact. But occasionally creative arguments can...more
Sovereign Immunity - Sovereign immunity exempts a sovereign from the jurisdiction of a court - States are entitled to sovereign immunity under the 11th amendment Seminole Tribe of Fla v. Florida, 517 U.S. 44 (1996) ...more
In an extensive, 42-page per curiam opinion, the Patent Trial and Appeal Board (PTAB) surprised no one last Friday by denying the St. Regis Mohawk Tribe's motion to terminate several inter partes review proceedings based on...more
In a rare order by an expanded panel that included the chief, deputy chief and vice chief judges, the Patent Trial and Appeal Board (PTAB) denied the patent owner’s motions to dismiss based on sovereign immunity under the...more
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
The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the...more
Patent Trial and Appeal Board Chief Judge David Ruschke recently dealt sovereign immunity a crippling blow. Although Judge Ruschke confirmed that Eleventh Amendment immunity does apply to sovereign actors, he held that when a...more
In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more
On December 19, 2017, an expanded panel of the Patent Trial and Appeal Board (PTAB) ruled that the state of Minnesota waived its Eleventh Amendment immunity to challenges to patent validity by inter partes review (IPR) by...more
In a case of first impression, an expanded PTAB panel (including Chief APJ Ruschke) found that a parallel enforcement action by a patent owner waives its sovereign immunity defense against under the 11th Amendment an AIA...more