States Not Immune from PTAB Proceedings, Federal Circuit Rules

The Federal Circuit ruled last summer that Native American tribal immunity is not implicated in IPR proceedings, because they're more of an administrative agency review than they are civil litigation. A three-judge panel led by Judge Timothy Dyk followed the same rationale for the states in Regents of the University of Minnesota v. LSI, despite some conflicting signals from the U.S. Supreme Court.

“We hold that IPR, like inter partes reexamination, is similar to an agency enforcement action instituted by the USPTO 'upon information supplied by a private party' rather than civil litigation, so state sovereign immunity is not implicated,” Dyk wrote.

The decision hands a big win to Kilpatrick Townsend & Stockton partner Kristopher Reed, who argued the appeal for LSI Corp., Avago Technologies U.S. Inc., and Bartlit Beck partner Adam Mortara, who argued for intervenor Gilead Sciences Inc. Orrick, Herrington & Sutcliffe partner Mark Davies also played a leading role, representing Ericsson Inc.

Wolf, Greenfield & Sacks represented the University of Minnesota.

The case began when the university sued four different wireless carriers in Minnesota federal court, accusing their 4G LTE technology of infringing a handful of university patents. Ericsson intervened because it supplied the equipment. Two years later, the university brought separate suits against LSI and Avago.

Ericsson, LSI and Avago petitioned for IPR at the Patent Trial and Appeal Board. The university invoked its sovereign immunity and sought to dismiss the IPRs. Then-Chief Judge David Ruschke wrote for the board that the university had waived its sovereign immunity by initiating the lawsuits. PTAB Judge Jennifer Bisk concurred separately, saying that IPRs are in rem proceedings that don't implicate sovereign immunity.

The Federal Circuit seemed to be of two minds as well. The panel followed the logic of Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, which held that IPRs, although adversarial in nature, aren't sufficiently similar to private civil litigation to implicate sovereign immunity.

Wolf Greenfield partner Michael Albert had pointed out that the Supreme Court just this week described the IPR as an “adversarial, adjudicatory proceeding” between “the 'person' who petitioned for review and the patent owner.” But, Dyk wrote, “that does not disturb the basic purpose of the proceeding,” which the Supreme Court said in 2016's Cuozzo Speed Technologies v. Lee is to reexamine an earlier agency decision.

However, Dyk and Judges Evan Wallach and Todd Hughes collectively tacked on nine pages of “additional views” following their opinion, stating that they, too, believe IPRs are in rem proceedings that don't implicate sovereign immunity.

“Just as with a bankruptcy proceeding to discharge a debt, IPR is an in rem proceeding that is not premised on obtaining jurisdiction over a state or its officers,” they wrote.

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Scott Graham focuses on intellectual property and the U.S. Court of Appeals for the Federal Circuit for ALM. He writes ALM's Skilled in the Art IP briefing. He can be reached at [email protected].