State Institutions are Beyond the Reach of IPRs, PTAB Finds

January 25, 2017

On January 25, 2017, the Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) petitions filed against the University of Florida Research Foundation (UFRF) on the grounds of 11th Amendment sovereign immunity. UFRF is a nonprofit organization that helps transfer and commercialize the inventions of University of Florida faculty, staff, and students from the laboratory to the public. UFRF's litigation and IPR counsel is Shore Chan DePumpo LLP. Wolf, Greenfield & Sacks, P.C. served as joint counsel for the IPR.

In Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, IPR2016-01275, and IPR2016-01276, the PTAB agreed with an earlier Federal District Court finding that UFRF is an arm of the State of Florida, and therefore entitled to sovereign immunity. As a sovereign, UFRF cannot be subject to having its patents challenged in any venue to which it does not consent, including IPRs before PTAB. This PTAB decision follows a 2006 Federal Circuit decision where Shore Chan DePumpo LLP represented The Board of Regents of The University of Texas in establishing that sovereigns are not subject to declaratory judgment actions in venues where they have not first filed patent infringement claims. The decision marks the first time the PTAB has dismissed an IPR on sovereign immunity grounds.

Michael W. Shore of Shore Chan commented, "This is an important decision that allows research institutions to protect their intellectual property rights without the costs, delays and uncertainty of IPRs and other similar proceedings."