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PTAB Finds Sovereign Immunity Applies to IPRs for State Universities

Posted in Patent Counseling & Strategies

The Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) proceedings involving the University of Florida based on sovereign immunity.

As background, the University of Florida Research Foundation filed a suit in state court alleging breach of a licensing agreement.  Medtronic subsequently brought a counterclaim seeking a declaratory judgment of non-infringement on the patent of the licensing agreement and attempted to remove the case to a federal court or the U.S. District Court for the Northern District of Florida.  However, the suit was remanded to state court due to Eleventh Amendment immunity from suit in a federal forum (Univ. of Fla. Research Found., Inc. v. Medtronic PLC , N.D. Fla., No. 1:16CV183-MW/GRJ, July 15, 2016).

Covidien-Medtronic also pursued three IPRs involving the University of Florida patent (Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274; -01275, and -01276 (PTAB January 25, 2017)).  However, the PTAB dismissed holding the Eleventh Amendment extends to IPRs.