The University of Minnesota (UMinn) and Toyota Motor Corp. (Toyota) co-own U.S. Patent 8,394,618 (the ’618 patent). After Reactive Surfaces Ltd. filed a petition for IPR of the ’618 patent, UMinn and Toyota filed a motion to dismiss the petition based on UMinn’s sovereign immunity. Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2016-01914, Paper 23 (PTAB March 3, 2017). The Board granted the motion in part, dismissing UMinn from the proceedings, but continuing the IPR with Toyota. Paper 36 (PTAB July 13, 2017). See The PTAB Grants the University of Minnesota Sovereign Immunity but does not Terminate IPR. On March 1, 2018, the Board entered a Final Written Decision holding all instituted claims were unpatentable. Paper 64 at 43 (PTAB March 1, 2018).

In a related IPR involving these same parties, after UMinn was dismissed from the case, Toyota requested adverse judgment. Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, Paper 40 (PTAB Jan. 23, 2018). See Toyota Requests Adverse Judgment After University of Minnesota is Dismissed from IPR on the Basis of Sovereign Immunity. The PTAB granted the request for adverse judgment, thus terminating that proceeding. Id. at Paper 42.

Contrasting these two related IPRs highlights interesting points about appellate review of Board decisions. In IPR2017-00572, where the remaining patent owner, Toyota, requested adverse judgment and no final decision was entered, appeal may not be available. However, in IPR2016-01914, where the Board’s Final Written Decision found the claims unpatentable, Toyota, and possibly UMinn, may have the ability to appeal the Board’s decision, including appealing the Board’s failure to terminate the IPR after dismissing UMinn.

In another recent PTAB decision, Mylan Pharmaceuticals, Inc. v. Saint Regis Mohawk Tribe, the Board relied on the rationale of Reactive Surfaces to determine that an IPR could proceed against Allergan even if the St. Regis Mohawk Tribe was dismissed based on tribal sovereign immunity. (IPR2016-01127, Paper 130 at 11 (PTAB Feb. 23, 2018). See The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB.

If the Reactive Surfaces v. Toyota (IPR2016-01914) final written decision is ultimately appealed to the Federal Circuit, the Federal Circuit’s decision could have implications on the ability for both state and private patent owners to avoid IPR challenges by invoking sovereign immunity as a basis for dismissing IPR petitions.