Wolf Greenfield recently opened a new frontier for public entities with patents challenged in IPR by securing dismissal of two IPRs on the basis of sovereign immunity. The decision, which is the first to apply sovereign immunity as a defense to IPR, is particularly significant to public universities with many patents—and those who would challenge those patents in IPR. Though questions remain unanswered, the decision is disrupting the practice of IPRs.

Sovereign immunity is a constitutional principle that precludes individuals from dragging a state and its various entities into an adverse adjudication without the state’s consent. According to some, sovereign immunity owes its origin to the notion that the English monarch, as sovereign, could not be forced to suffer the indignity of defending itself in court.

In the United States, the principle is more commonly understood to limit whether someone can sue a state and its entities in court. However, the Supreme Court extended the principle to administrative adjudications that are similar to court actions, and the Federal Circuit subsequently acknowledged that sovereign immunity is relevant to Patent Office proceedings.

Though our client, the University of Florida Research Foundation Inc., was not the first public university to face IPR, we were the first to raise sovereign immunity as a defense to IPR. We showed that our client is an arm of the sovereign state of Florida, and as such cannot be forced to defend its patent in an IPR proceeding against its will.

Now that the Board has recognized sovereign immunity as a viable defense, other patent owners are following suit and testing the bounds of the defense. In NeoChord v. University of Maryland (IPR2016-00208), the patent owner raised sovereign immunity near the end of the IPR proceeding. In Reactive Surfaces v. Toyota (IPR2016-01914 & IPR2017-00572), a state university raised sovereign immunity in an IPR challenging a patent that it co-owns with a private entity. The Board has not yet issued a decision in either case.

We will be following the latest developments regarding sovereign immunity and IPR, including the outcomes of these two subsequent cases.