Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 19
`Entered: December 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`Case IPR2017-01068
`Patent 5,859,601
`____________
`
`
`
`Before DAVID P. RUSCHKE, Chief Administrative Patent Judge,
`SCOTT R. BOALICK, Deputy Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, SCOTT C. WEIDENFELLER,
`Vice Chief Administrative Patent Judges, ROBERT J. WEINSCHENK,
`CHARLES J. BOUDREAU, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Chief Administrative Patent Judge
`RUSCHKE.
`
`Opinion Concurring filed by Administrative Patent Judge HARLOW.
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Dismiss
`37 C.F.R. §§ 42.5, 42.71
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 19
`Entered: December 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`Case IPR2017-01068
`Patent 5,859,601
`____________
`
`
`
`Before DAVID P. RUSCHKE, Chief Administrative Patent Judge,
`SCOTT R. BOALICK, Deputy Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, SCOTT C. WEIDENFELLER,
`Vice Chief Administrative Patent Judges, ROBERT J. WEINSCHENK,
`CHARLES J. BOUDREAU, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`Opinion for the Board filed by Chief Administrative Patent Judge
`RUSCHKE.
`
`Opinion Concurring filed by Administrative Patent Judge HARLOW.
`
`
`
`ORDER
`Denying Patent Owner’s Motion to Dismiss
`37 C.F.R. §§ 42.5, 42.71
`
`
`
`
`
`
`IPR2017-01068
`Patent 5,859,601
`
`
`I.
`INTRODUCTION
`Regents of the University of Minnesota (“Patent Owner”) filed a
`Motion to Dismiss (Paper 10, “Motion” or “Mot.”) the Petition for an inter
`partes review (Paper 1, “Petition” or “Pet.”) in this proceeding. Specifically,
`Patent Owner contends that it is entitled to avoid this proceeding entirely
`because it is a sovereign that is immune to our authority under the Eleventh
`Amendment to the U.S. Constitution. Mot. 1, 15. LSI Corporation and
`Avago Technologies U.S., Inc. (collectively, “Petitioner”) filed an
`Opposition to the Motion (Paper 11, “Opposition” or “Opp.”), to which
`Patent Owner filed a Reply in Support of the Motion (Paper 13, “Reply”).
`For the reasons discussed below, the Motion is denied.
`II. PANEL EXPANSION
`Our standard operating procedures provide the Chief Judge with
`
`discretion to expand a panel to include more than three judges. PTAB
`SOP 1, 2–5 (§§ II, III) (Rev. 14); see id. at 2 (introductory language
`explaining that the Director has delegated to the Chief Judge the authority to
`designate panels under 35 U.S.C. § 6); see also In re Alappat, 33 F.3d 1526,
`1532 (Fed. Cir. 1994) (abrogated on other grounds by In re Bilski, 545 F.3d
`943 (Fed. Cir. 2008)) (providing that Congress “expressly granted the
`[Director] the authority to designate expanded Board panels made up of
`more than three Board members.”). The Chief Judge may consider panel
`expansions upon a “suggestion” from a judge, panel, or party in a
`post-issuance review created by the Leahy-Smith America Invents Act, Pub.
`L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), such as an inter partes review.
`Id. at 3–4; see also Apple Inc. v. Rensselaer Polytechnic Inst., Case
`
`2
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`IPR2014-00319, slip op. at 2 n.1 (PTAB Dec. 12, 2014) (Paper 20)
`(expanded panel) (per curiam).
`The standard operating procedure sets forth some of the reasons for
`which the Chief Judge may expand a panel. PTAB SOP 1, 3–4 (§ III.A).
`For example, an expanded panel may be appropriate when “[t]he proceeding
`or AIA Review involves an issue of exceptional importance.” Id. (§ III.A.1).
`An expanded panel may also be appropriate when “necessary to secure and
`maintain uniformity of the Board’s decisions.” Id. (§ III.A.2).
`In this case, the Chief Judge has considered whether expansion is
`warranted, and has decided to expand the panel due to the exceptional nature
`of the issues presented.1 As we discuss further below, the issues of whether
`a State can claim Eleventh Amendment immunity and whether such
`immunity may be waived have been raised in this proceeding. These issues
`are of an exceptional nature. The Eleventh Amendment immunity issue
`continues to be raised in multiple cases before the Board. We have not had
`occasion to address the waiver issue before, but it has been raised in multiple
`cases before the Board. The Chief Judge also has determined that an
`expanded panel is warranted to ensure uniformity of the Board’s decisions
`involving these issues.
`
`III. ANALYSIS
`Petitioner does not dispute that Patent Owner is a State entity that can
`
`claim sovereign immunity under the Eleventh Amendment, at least with
`
`
`1 Consistent with the standard operating procedure, the Judges on the merits
`panel in this case have been designated as part of the expanded panel, and
`the Chief Judge, Deputy Chief Judge, and Vice Chief Judges Bonilla and
`Weidenfeller have been added to the panel. PTAB SOP 1, 4 (§ III.E).
`3
`
`
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`IPR2017-01068
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`respect to this Motion. See Mot. 9–13; Opp. 6 n.4. The parties disagree,
`though, about whether Eleventh Amendment immunity can be invoked in an
`inter partes review. Mot. 2–9; Opp. 1–4. We agree with Patent Owner that
`“an IPR is an adjudicatory proceeding of a federal agency from which States
`are immune.” Mot. 8 (citing Covidien LP v. Univ. of Fla. Research Found.,
`Inc., Case IPR2016-01274, slip op. at 24, (PTAB Jan. 25, 2017) (Paper 21)).
`Nevertheless, we determine, for the reasons discussed below, that Patent
`Owner has waived its Eleventh Amendment immunity by filing an action in
`federal court alleging infringement of the patent being challenged in this
`proceeding.
`
`Patent Owner May Assert Eleventh Amendment Immunity
`A.
`The Board has previously determined that Eleventh Amendment
`immunity is available to States as a defense in an inter partes review
`proceeding. Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., Case
`IPR2016-01914 (PTAB July 13, 2017) (Paper 36) (granting in part motion to
`dismiss and dismissing Regents of the University of Minnesota from an inter
`partes review proceeding); NeoChord, Inc. v. Univ. of Md., Balt., Case
`IPR2016-00208 (PTAB May 23, 2017) (Paper 28) (granting motion to
`dismiss and terminating an inter partes review); Covidien LP v. Univ. of Fla.
`Research Found. Inc., Case IPR2016-01274 (PTAB Jan. 25, 2017) (Paper
`21) (granting motion to dismiss and dismissing three Petitions requesting an
`inter partes review). We agree.
`The Supreme Court has held that the rules and practice of procedure
`of the Federal Maritime Commission are sufficiently similar to civil
`litigation for the State of South Carolina to raise Eleventh Amendment
`
`4
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`IPR2017-01068
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`immunity as a defense to participation in a proceeding seeking damages and
`injunctive relief against the South Carolina State Ports Authority. See Fed.
`Mar. Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 757–58, 765–66
`(2002) (“FMC”). Applying FMC, the Federal Circuit has held that Eleventh
`Amendment immunity is available in interference proceedings before the
`Board of Patent Appeals and Interferences (the predecessor of the PTAB)
`because interferences are sufficiently similar in procedure to civil litigation,
`i.e., they involve adverse parties, examination and cross-examination by
`deposition of witnesses, production of documentary evidence, findings by an
`impartial federal adjudicator, and power to implement the decision.
`Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1381–82 (Fed.
`Cir. 2007).
`Patent Owner asserts that inter partes reviews are sufficiently similar
`in procedure to interferences and other adjudicatory proceedings such that
`Eleventh Amendment immunity is available as a defense in both types of
`proceedings. See Mot. 3–8. We agree with Patent Owner. In keeping with
`Vas-Cath, we determine that inter partes reviews, like interferences, are
`similar to court proceedings inasmuch as they involve adverse parties,
`examination of witnesses, cross-examination by deposition, findings by an
`impartial adjudicator, power to implement the adjudicator’s decision, the
`ability of the adjudicator to set a time for filing motions and for discovery,
`and application of the Federal Rules of Evidence. See generally NeoChord,
`slip op. at 6–7 (Paper 28). Patent Owner, therefore, is entitled to rely on its
`
`5
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`IPR2017-01068
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`
`Eleventh Amendment immunity in inter partes reviews, as appropriate.2
`That determination, however, does not end our inquiry in this case.
`
`Patent Owner Waived its Eleventh Amendment Immunity
`B.
`We must now decide whether, and in what circumstances, a State may
`waive its Eleventh Amendment immunity before us. Previous Board
`decisions have not involved a State that filed an action in federal court
`alleging infringement of the same patent being challenged in the petition for
`an inter partes review. Here, Patent Owner has filed such an action, and,
`accordingly, Petitioner argues that Patent Owner waived its Eleventh
`Amendment immunity by filing such an action. Opp. 4–12. We agree with
`Petitioner that the filing of an action in federal court alleging infringement
`effectively waives Patent Owner’s Eleventh Amendment immunity defense.
`
`A State’s waiver of Eleventh Amendment immunity in one action
`does not necessarily extend to a separate action, even if the separate action
`involves the same parties and the same subject matter. Biomedical Patent
`Mgmt. Corp. v. Cal., Dep’t of Health Servs., 505 F.3d 1328, 1339 (Fed. Cir.
`
`
`2 As the Supreme Court and my concurring colleague correctly note, in
`many “significant respects, inter partes review is less like a judicial
`proceeding and more like a specialized agency proceeding.” Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2143 (2016). Indeed, we rely on the
`differences between court and agency proceedings in reaching our
`determination that Patent Owner has waived its Eleventh Amendment
`immunity in this matter. See infra at 9–10. We respectfully disagree,
`nevertheless, that those differences alone provide a sufficient basis to
`conclude that “Congress had the power to compel States to surrender their
`sovereign immunity” wholesale in a proceeding that so closely resembles
`court proceedings. Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll.
`Sav. Bank, 527 U.S. 627, 635 (1999).
`6
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`
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`IPR2017-01068
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`2007) (“BPMC”). But there is not “a bright-line rule whereby a State’s
`waiver of sovereign immunity can never extend to a . . . separate lawsuit.”
`Id. Instead, the rule governing waiver of immunity by litigation conduct
`rests on the need to avoid unfairness and inconsistency, and to prevent a
`State from selectively using its immunity to achieve a litigation advantage.
`Lapides v. Bd. of Regents of Univ. Sys. of Ga., 535 U.S. 613, 620 (2002);
`BPMC, 505 F.3d at 1340.
`The facts presented here are similar to those in Regents of Univ. of
`New Mexico v. Knight, 321 F.3d 1111, 1125–26 (Fed. Cir. 2003) (“Knight”),
`where a State was found to have waived its Eleventh Amendment immunity
`as to compulsory counterclaims. 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.” Id. at 1126 (emphasis added). 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. See 35 U.S.C. § 315(b).
`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.3 See
`Knight, 321 F.3d at 1126. That is particularly true where, as here, the State
`
`
`3 We do not conclude that an inter partes review is a compulsory
`counterclaim under Fed. R. Civ. P. 13(a). Rather, we determine that the
`rationale given in Knight, 321 F.3d at 1126, for holding that a State waived
`its Eleventh Amendment immunity as to a compulsory counterclaim
`similarly supports determining that Patent Owner waived its Eleventh
`Amendment immunity as to this proceeding.
`7
`
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`IPR2017-01068
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`filed its patent infringement action well after the AIA was enacted. See, e.g.,
`Mot. 1 (indicating that Patent Owner filed suit on August 25, 2016).
`Further, when a State files a patent infringement action in federal
`court, it is the State’s litigation conduct that triggers the one-year statutory
`bar for an inter partes review. See 35 U.S.C. § 315(b). It would be unfair
`and inconsistent to allow a State to avail itself of the federal government’s
`authority by filing a patent infringement action in federal court, but then
`selectively invoke its sovereign immunity to ensure that a defendant is
`barred from requesting an inter partes review of the asserted patent from a
`different branch of that same federal government. See Lapides, 535 U.S. at
`619–20; Tegic Commc’ns Corp. v. Bd. of Regents of Univ. of Tex. Sys., 458
`F.3d 1335, 1341–42 (Fed. Cir. 2006) (emphasizing the need “to look to the
`substantive charge, not to the procedure for obtaining relief” in order to
`avoid the “‘seriously unfair results’ [that] could result if a state were
`permitted to file suit in a federal court and at the same time claim immunity
`against the defendant’s claims arising from the same conduct” (quoting
`Knight, 321 F.3d at 1125)).
`In fact, Patent Owner acknowledged as much in its motion to dismiss
`in Reactive Surfaces. IPR2016-01914, Paper 23, 18–20. In that case, Patent
`Owner addressed a hypothetical (as of the date of this decision) scenario in
`which a patent assertion entity (“PAE”) assigned ownership of a patent to a
`State in order to invoke Eleventh Amendment immunity and avoid an inter
`partes review. Id. at 18. Patent Owner acknowledged that the State would
`have to join any infringement action, and that “[b]y voluntarily invoking
`federal jurisdiction in the infringement litigation, the [S]tate entity could be
`deemed to have waived its sovereign immunity to the IPR process, which
`
`8
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`
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`IPR2017-01068
`Patent 5,859,601
`
`would deprive the PAE of any litigation advantage it might have hoped for.”
`Id. at 19–20. Patent Owner attempts to distinguish that hypothetical scenario
`from this case because it involved a State acting together with a PAE. Reply
`4. We fail to see, though, how a State selectively asserting its sovereign
`immunity to achieve a litigation advantage for itself, rather than a PAE, is
`less unfair to a defendant.
`The crux of Patent Owner’s argument in this proceeding is that any
`waiver of Eleventh Amendment immunity should be limited to the venue
`where Patent Owner filed its action. Mot. 13–15 (citing A123 Sys., Inc. v.
`Hydro-Quebec, 626 F.3d 1213, 1219–20 (Fed. Cir. 2010); Tegic, 458 F.3d at
`1342, 1344–45); Reply 3–4. Although waiver is generally limited in this
`way in our court system, which is arranged geographically, it is not a bright-
`line rule. BPMC, 505 F.3d at 1339. Indeed, “[a]n animating principle of
`Lapides is that a state should not reap litigation advantages through its
`selection of a forum and subsequent assertion of sovereign immunity as a
`defense.” Bd. of Regents of Univ. of Wis. Sys. v. Phoenix Int’l Software,
`Inc., 653 F.3d 448, 466 (7th Cir. 2011). And the authority on which Patent
`Owner relies does not address waiver with respect to separate proceedings in
`a single forum created by Congress, such as the post-issuance review
`proceedings under the AIA.
`In any event, the cases cited by Patent Owner are distinguishable. In
`those cases, a private party was not permitted to assert claims against a State
`in a different forum from the one in which the State filed its action. A123
`Sys., 626 F.3d at 1219–20; Tegic, 458 F.3d at 1342–44. The private party,
`however, did not suffer any substantial unfairness from that result because
`the private party could still assert the exact same claims in the forum where
`
`9
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`IPR2017-01068
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`the State filed its action. A123 Sys., 626 F.3d at 1216 (“A123 had an
`adequate remedy because UT has waived Eleventh Amendment immunity in
`the Northern District of Texas.”); Tegic, 458 F.3d at 1344 (“It has not been
`shown . . . that the adjudication of Tegic’s claims of noninfringement and
`invalidity is not available in the Texas action.”).
`In contrast, here, Petitioner cannot seek an inter partes review in the
`district court where Patent Owner filed its patent infringement action. We
`recognize that Petitioner may be able to assert a defense and/or counterclaim
`challenging the validity of the asserted patent in the district court where
`Patent Owner filed its action. Reply 4–5. But, even though an inter partes
`review has characteristics that are similar to district court litigation, the
`proceedings are not the same. See Cuozzo, 136 S. Ct. at 2143–44.
`Therefore, allowing Patent Owner to assert its Eleventh Amendment
`immunity in this proceeding selectively so as to bar Petitioner, a defendant
`sued by Patent Owner, from obtaining the benefits of an inter partes review
`of the asserted patent would result in substantial unfairness and
`inconsistency. See Lapides, 535 U.S. at 620.
`For the foregoing reasons, we determine that Patent Owner has
`waived its Eleventh Amendment immunity by filing an action in federal
`court alleging infringement of the patent being challenged in this
`proceeding.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to Dismiss is denied.
`
`
`
`10
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`IPR2017-01068
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`____________
`
`Case IPR2017-01068
`Patent 5,859,601
`____________
`
`
`
`Before DAVID P. RUSCHKE, Chief Administrative Patent Judge,
`SCOTT R. BOALICK, Deputy Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, SCOTT C. WEIDENFELLER,
`Vice Chief Administrative Patent Judges, ROBERT J. WEINSCHENK,
`CHARLES J. BOUDREAU, and JACQUELINE T. HARLOW,
`Administrative Patent Judges.
`
`HARLOW, Administrative Patent Judge, concurring.
`
` I
`
` write separately to express my view that a state university, having
`availed itself of Patent Office procedures to secure patent rights from the
`public, may not subsequently invoke sovereign immunity as a shield against
`reconsideration by the Patent Office in an inter partes review proceeding of
`
`
`
`IPR2017-01068
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`whether the agency improvidently granted a patent monopoly in the first
`instance.1
`Sovereign immunity has been found to attach to administrative
`proceedings where those actions resemble civil litigation. See Fed. Mar.
`Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 753–761 (2002) (“FMC”).
`Inter partes review cannot be said, however, to bear the same marks of civil
`litigation as previously considered administrative matters. Obvious
`differences exist, for example, between the U.S. Patent and Trademark
`Office’s review of a patent procured from that agency by a State, and the
`Federal Maritime Commission’s review of a State’s refusal to berth a cruise
`ship at port facilities within the sovereign borders of a State that are
`managed by a State authority. See FMC, 535 U.S. at 748–49. The
`adjudication at issue in FMC, after all, implicated a power with
`unmistakably sovereign characteristics—the ability of a State to control
`access to its territory.
`Far removed from any question of territorial control, inter partes
`review represents no more than the Patent Office’s reconsideration of its
`initial decision to “take[] from the public rights of immense value, and
`bestow[] them upon the patentee” in the form of a patent grant. United
`States v. Am. Bell Tel. Co., 128 U.S. 315, 370 (1888). As the Supreme Court
`has explained, the “basic purpose[]” of inter partes review is “to reexamine
`
`
`1 I am mindful that resolution of the instant motion requires us to
`address important constitutional issues that “are unsuited to resolution in
`administrative hearing procedures,” Califano v. Sanders, 430 U.S. 99, 109
`(1977), and further highlight that “access to the courts is essential to the
`decision of such questions.” Id.
`
`2
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`IPR2017-01068
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`an earlier agency decision,” and thereby “help[] protect the public’s
`‘paramount interest in seeing that patent monopolies . . . are kept within their
`legitimate scope.’” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144
`(2016) (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co.,
`324 U.S. 806, 816 (1945)); see also MCM Portfolio LLC v. Hewlett-Packard
`Co., 812 F.3d 1284, 1293 (Fed. Cir. 2015) (explaining that “patent rights are
`public rights,” and “their validity [is] susceptible to review by an
`administrative agency.”). Allowing a State to secure monopoly rights from
`the Patent Office, while simultaneously foreclosing Patent Office reappraisal
`of that decision via inter partes review, would thwart “the important public
`interest in permitting full and free competition in the use of ideas which are
`in reality a part of the public domain.” Lear, Inc. v. Adkins, 395 U.S. 653,
`670 (1969).
`The essential nature of inter partes review as a reevaluation by the
`Patent Office of its decision to grant a patent, rather than as an
`administrative analog to civil litigation, is evident from the relief available,
`which differs both in degree and in kind from that afforded in federal district
`court. At its core, inter partes review is a circumscribed in rem proceeding,
`in which the Patent Office exercises jurisdiction over the patent challenged,
`rather than the parties named; “it does not implicate States’ sovereignty to
`nearly the same degree as other kinds of jurisdiction.” Cent. Va. Cmty. Coll.
`v. Katz, 546 U.S. 356, 362 (2006). Such proceedings are authorized solely
`to address whether the Patent Office should “cancel as unpatentable 1 or
`more claims of a patent only on a ground that could be raised under section
`102 or 103 [of the Patent Act] and only on the basis of prior art consisting of
`patents or printed publications.” 35 U.S.C. § 311(b). Once inter partes
`
`3
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`review is commenced, the patent owner may, as a matter of right, “file 1
`motion to amend the patent,” 35 U.S.C. § 316(d)––“just what he would do in
`the examination process.” Cuozzo, 136 S. Ct. at 2145 (citing 35 U.S.C.
`§ 316(d) (2012)). No equivalent procedure is available in the federal district
`courts, which assess the validity only of static patent claims.
`The ultimate remedy available from inter partes review likewise
`mirrors the patent examination process more closely than it does federal
`district court litigation, where a patent monopoly may be enforced through
`charges of patent infringement. Without resort to the damages or injunctive
`relief that may be awarded when infringement is proved in federal court, the
`lone remedy issuable by the Patent Office in an inter partes review
`proceeding is the publication, by the Director, of a certificate canceling,
`confirming, or amending the challenged claims. 35 U.S.C. § 318(b). In
`addition, the freedom of the Director to “stay, transfer, consolidat[e],
`terminat[e],” or otherwise determine how either matter should proceed when
`a patent is concurrently subject to an inter partes review and another action
`in the Office, 35 U.S.C. § 315(d), further differentiates inter partes review
`from civil litigation.
`Inter partes review does not seek to resolve relationships between
`parties, or even require that the petitioner have Article III standing to
`proceed. See 35 U.S.C. § 311(a). Indeed, notwithstanding the absence of an
`existing legal dispute concerning the patent-in-question, so long as a
`prospective petitioner “is not the owner of [that] patent,” that party is
`eligible, subject to additional statutory provisions, to file a petition for inter
`partes review. 35 U.S.C. § 311(a). Consistent with this focus on the patent,
`rather than on the parties, participation by the parties subsequent to
`
`4
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`IPR2017-01068
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`institution is not required for an inter partes review to go forward.
`35 U.S.C. § 317(a) (“If no petitioner remains in the inter partes review, the
`Office may terminate the review or proceed to a final written decision under
`section 318(a).”). Even in the event of settlement between the parties, the
`Board remains free to “independently determine any question of jurisdiction,
`patentability, or Office practice.” 37 C.F.R. § 42.74(a). Similarly, the
`Patent Office “may intervene in a later judicial proceeding” to defend its
`cancellation of an improperly granted patent, “even if the private challengers
`drop out.” Cuozzo, 136 S. Ct. at 2144 (emphasis omitted); see 35 U.S.C.
`§ 143.
`Indeed, the Supreme Court has emphasized these aspects of inter
`partes review in its recognition that in “significant respects, inter partes
`review is less like a judicial proceeding and more like a specialized agency
`proceeding.” Cuozzo, 136 S. Ct. at 2143; see also Achates Reference Publ’g,
`Inc. v. Apple Inc., 803 F.3d 652, 657–58 (Fed. Cir. 2015) (holding that
`procedural limits placed on when certain parties must file for review do not
`relate to the Board’s ultimate authority to invalidate a patent); 35 U.S.C.
`§ 303(a) (“On his own initiative, and any time, the Director may determine
`whether a substantial new question of patentability is raised by patents and
`publications discovered by him or cited under the provisions of section 301
`or 302.”).
`To my eye, therefore, far from implicating the sovereignty or dignity
`of the states, inter partes review simply provides a streamlined, specialized
`mechanism by which the Patent Office may reconsider a patent grant and
`correct any mistake. Accordingly, because inter partes review neither
`“walks, talks, [nor] squawks” like a lawsuit, FMC, 535 U.S. at 757 (internal
`
`5
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`quotation omitted), I conclude that sovereign immunity does not bar the
`Patent Office from conducting inter partes review of a patent owned by a
`state university. Thus, while I agree with my colleagues that Patent Owner’s
`Motion to Dismiss should be denied, I reach that conclusion for markedly
`different reasons.
`
`6
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`
`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
`
`7
`
`
`
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