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State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

Author: Sean Gloth

2/14/2017

Read the full post at Post-Grant Counsel

State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial and Appeal Board (the Board) upheld a defense of sovereign immunity asserted by the University of Florida Research Foundation (the Foundation) and dismissed three Petitions for Inter Partes Review (IPR) filed by Covidien LP (Covidien) against a patent owned by the Foundation. (See IPR2016-01274, IPR2016-01275, IPR2016-01276) The Board relied on the Supreme Court’s decision in Fed. Mar. Comm’n v. South Carolina State Ports Auth., 535 U.S. 743 (2002) (FMC) in its determination that the sovereign immunity defense applies to IPR proceedings, and it concluded that the Foundation was eligible to assert the defense as an “arm of the State” under Manders v. Lee, 338 F.3d 1304, *1309 (11th Cir. 2003) (en banc).