`
`Paper: 26
`Entered: February 9, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LSI CORPORATION and
`AVAGO TECHNOLOGIES U.S., INC.,
`Petitioners,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`Case IPR2017-01068
`Patent 5,859,601
`____________
`
`
`
`Before ROBERT J. WEINSCHENK, CHARLES J. BOUDREAU, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01068
`Patent 5,859,601
`
`
`
`INTRODUCTION
`I.
`Pursuant to our authorization (Paper 22), Patent Owner, Regents of
`the University of Minnesota, filed a Motion to Stay the instant proceeding
`pending appellate review of the Order Denying Patent Owner’s Motion to
`Dismiss (Paper 19) based on Eleventh Amendment immunity. Paper 23.
`Petitioners, LSI Corp. and Avago Technologies U.S., Inc., filed an
`Opposition to Patent Owner’s Motion to Stay (Paper 24), to which Patent
`Owner filed a Reply (Paper 25).
`II. ANALYSIS
`“[A] motion by a State or its agents to dismiss on Eleventh
`Amendment grounds involves a claim to a fundamental constitutional
`protection.” Puerto Rico Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc.,
`506 U.S. 139, 145 (1993). Moreover, “the value to the States of their
`Eleventh Amendment immunity . . . is for the most part lost as litigation
`proceeds past motion practice.” Id. The collateral order doctrine, therefore,
`authorizes immediate appeal of an order denying a claim of Eleventh
`Amendment immunity. Id. at 147; see also Bell v. New Jersey, 461 U.S.
`773, 778–79 (1983) (“[W]e conclude that, at least in the absence of an
`appealable collateral order, the federal courts may exercise jurisdiction only
`over a final order of [an agency].” (internal citations omitted)); Mathews v.
`Eldridge, 424 U.S. 319, 331 n.11 (1976) (“[T]he core principle that
`statutorily created finality requirements should, if possible, be construed so
`as not to cause crucial collateral claims to be lost and potentially irreparable
`injuries to be suffered remains applicable.”); Chehazeh v. Attorney Gen. of
`U.S., 666 F.3d 118, 136 (3d Cir. 2012) (marshaling Courts of Appeals
`
`2
`
`
`
`IPR2017-01068
`Patent 5,859,601
`
`
`decisions and noting “unanimous view” that the “collateral order doctrine
`applies to judicial review of agency decisions”); Carolina Power & Light
`Co. v. U.S. Dep't of Labor, 43 F.3d 912, 916 (4th Cir. 1995) (“It is well-
`settled that these requirements of the collateral order doctrine apply not only
`to judicial decisions, but also to appeals from executive agency action.”).
`In view of the particular circumstances of this case, including the
`unique nature of the Eleventh Amendment immunity right at issue, as well
`as the fact that the stay requested pertains to the specific proceeding for
`which appellate review is sought, we conclude that it is appropriate to
`suspend the deadline for filing of Patent Owner’s Preliminary Response
`pending appellate review of the Order Denying Patent Owner’s Motion to
`Dismiss (Paper 19) based on Eleventh Amendment immunity.
`Accordingly, in the event Patent Owner files its notice of appeal
`seeking collateral order review of the Order Denying Patent Owner’s Motion
`to Dismiss (Paper 19) based on Eleventh Amendment immunity on or before
`February 20, 2018, the date identified by Patent Owner as the deadline for
`filing that notice (Paper 23, 1), the deadline for Patent Owner to file a
`Preliminary Response in this proceeding will be suspended pending
`resolution of the appeal.
`We are mindful, however, of Petitioners’ concern that this proceeding
`not be unduly delayed. Therefore, should Patent Owner fail to file a notice
`of appeal seeking review of the Order Denying Patent Owner’s Motion to
`Dismiss (Paper 19) on or before February 20, 2018, absent a showing of
`good cause for further suspension, the deadline for Patent Owner to file a
`Preliminary Response in this proceeding will be set for March 7, 2018.
`
`3
`
`
`
`IPR2017-01068
`Patent 5,859,601
`
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that in the event Patent Owner files a notice of appeal
`seeking review by the United States Court of Appeals for the Federal Circuit
`of the Order Denying Patent Owner’s Motion to Dismiss (Paper 19) on or
`before February 20, 2018, the deadline for Patent Owner to file a
`Preliminary Response in this proceeding will be suspended pending
`resolution of that appeal;
`FURTHER ORDERED that, in the event Patent Owner fails to file a
`notice of appeal seeking review by the United States Court of Appeals for
`the Federal Circuit of the Order Denying Patent Owner’s Motion to Dismiss
`(Paper 19) on or before February 20, 2018, absent a showing of good cause
`for further suspension, the deadline for Patent Owner to file a Preliminary
`Response in this proceeding will be set for March 7, 2018; and
`FURTHER ORDERED that the parties are to timely apprise the Board
`of developments or changes in the status of any appellate proceedings
`concerning the Order Denying Patent Owner’s Motion to Dismiss
`(Paper 19).
`
`
`4
`
`
`
`IPR2017-01068
`Patent 5,859,601
`
`
`PETITIONERS:
`Kristopher Reed
`Edward Mayle
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`
`PATENT OWNER:
`Patrick McElhinny
`Mark Knedeisen
`K&L GATES LLP
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.com
`
`Richard Giunta
`Gerald Hrycyszyn
`WOLF, GREENFIELD & SACKS, P.C.
`rgiunta-ptab@wolfgreenfield.com
`ghrycyszyn-ptab@wolfgreenfield.com
`
`
`
`5
`
`
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