Earlier this week, the use of sovereign immunity as a defense to IPR took a major step forward. For only the second time, the PTAB dismissed an IPR against a state entity on the basis of sovereign immunity—another decision significant to public universities with many patents as well as those who would challenge those patents. This latest decision answers several questions about when the sovereign immunity defense is available to patent owners in IPR.

What happened?

The case decided earlier this week is NeoChord, Inc. v. University of Maryland, Baltimore (IPR2016-00208). The University of Maryland, Baltimore owns the challenged patent and exclusively licensed it to Harpoon Medical, Inc. The IPR proceeded normally up until the day before the hearing, when the university first sought permission to move to terminate the IPR on the basis of sovereign immunity. Although the request came late in the proceeding, the Board permitted the motion.

The Board in NeoChord acknowledged its prior decision finding sovereign immunity applicable to IPR in Covidien LP v. University of Florida Research Foundation, Inc. (IPR2016-01274), a case in which Wolf Greenfield co-represented the University of Florida Research Foundation. Despite the fact that the Covidien decision is not precedential and therefore not binding, the Board reached the same conclusion.

While similar to Covidien in that respect, NeoChord dealt with several new issues:

  • First, unlike in Covidien where the patent owner asserted sovereign immunity shortly after the petition was filed, the university in NeoChord asked to assert sovereign immunity the day before the hearing. The petitioner argued that the delay in raising sovereign immunity waived the defense. The Board, however, held that participation in an IPR is not alone sufficient to waive the defense of sovereign immunity.
  • Second, the university’s exclusive license agreement with Harpoon waived sovereign immunity as to Harpoon, but not the petitioner. The Board recognized that an entity with sovereign immunity can selectively waive that immunity by contract without abandoning the defense in general.
  • Third, unlike in Covidien where the University of Florida Research Foundation was the only party defending the patent, in NeoChord, Harpoon was also a real party in interest with the university. The petitioner argued that Harpoon could defend the patent so the university was not needed. The Board disagreed that the case could go forward with just Harpoon, because the university retained an interest in the patent.

By finding sovereign immunity applicable despite these facts, the NeoChord decision starts to answer several questions that were not expressly addressed in Covidien.

How did we get here?

Wolf Greenfield co-represented the University of Florida Research Foundation in the Covidien decision that first established sovereign immunity as a defense to IPR. The NeoChord decision only magnifies the importance of the Covidien decision by illustrating some of the other circumstances in which sovereign immunity applies.

The Covidien decision was made possible by a close examination of the caselaw and a careful review of the facts. Although Covidien and NeoChord have now applied sovereign immunity as a defense to IPR, neither are precedential. As we have previously discussed on this blog, parties should continue to make the strongest argument possible that sovereign immunity applies in IPR.

Takeaways

  • A growing number of the members of the Board recognize sovereign immunity as a defense to IPR.
  • The mere fact that an IPR has been instituted and the parties have briefed the substance of the dispute does not alone mean the patent owner waived the defense of sovereign immunity. However, the Board noted that state law applicable to the patent owner may change those rules, so look into the issue closely.
  • A patent owner may waive sovereign immunity for certain parties, but not others. Be sure to closely examine any license agreements between the petitioner and the patent owner when considering the sovereign immunity defense.
  • A patent owner that exclusively licenses its patent to another may still assert sovereign immunity as a defense, so long as the patent owner retained enough of an interest in the patent. The Board did not, however, define what interests will be enough.

We’ll continue to follow the latest developments regarding sovereign immunity and IPR.