Several weeks ago, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) denied a motion filed by the University of Minnesota in a series of inter partes review (IPR) cases. See Order Denying Patent Owner’s Motion to Dismiss. This extraordinary denial of the motion is newsworthy because Minnesota sought a dismissal of the IPRs based on Eleventh Amendment sovereign immunity. The PTAB previously dismissed similar IPRs against state-owned patents. Here, however, the PTAB in a majority opinion authored by Chief Judge David Ruschke (pictured left), disagreed and refused to dismiss the IPRs.
The PTAB ruled that the University of Minnesota “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.”
The PTAB found the Federal Circuit decision in Regents of Univ. of New Mexico v. Knight, 321 F.3d 1111 (Fed. Cir. 2003) to be persuasive on the waiver issue. The PTAB wrote:
Specifically, the Federal Circuit explained that because a state as plaintiff can surely anticipate that a defendant will have to file any compulsory counterclaims or be forever barred from doing so, it is not unreasonable to view the state as having consented to such counterclaims. Similarly, a party served with a patent infringement complaint in federal court must request an inter partes review of the asserted patent within one year of service of that complaint or be forever barred from doing so. Thus, it is reasonable to view a State that files a patent infringement action as having consented to an inter partes review of the asserted patent. That is particularly true where, as here, the State filed its patent infringement action well after the AIA was enacted.
(citations and quotations omitted).
The PTAB explained in a footnote that they were not concluding that inter partes review is a compulsory counterclaim under FRCP 13(a), but rather that the rationale of Knight (i.e., use it or lose it) was both quite similar and compelling.
Signing onto Ruschke’s majority opinion were Deputy Chief Scott Boalick, Vice-Chief Judges Scott Weidenfeller and Jacqueline Wright Bonilla, and Judges Robert Weischenk and Charles Boudreau. Judge Jennifer Bisk concurred with the opinion but wrote separately to explain that she did not think the decision went far enough and would have held that by seeking a patent, a State “may not subsequently invoke sovereign immunity as a shield against reconsideration by the Patent Office in an inter partes review….”
If a State is deemed to have waived sovereign immunity guaranteed by the Eleventh Amendment to the Constitution as a result of having filed a patent infringement action in Federal District Court, it seems virtually assured that Indian Tribes will be deemed to have waived sovereign immunity guaranteed by statute if they have filed a patent infringement action in a Federal District Court.
Tags: Eleventh Amendment, Inter Partes Review, IPR, patent, patents, PTAB, sovereign immunity, USPTO
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