On January 25, 2017, a panel of the Patent Trial and Appeal Board (PTAB) held that “Eleventh Amendment Immunity bars the institution of an inter partes review against an unconsenting state that has not waived sovereign immunity.” Covidien LP v. Univ. of Florida Research Found. Inc., IPR2016-01274, IPR2016-01275, IPR2016-01276, Paper 21 at 27. The PTAB further held that the University of Florida Research Foundation (UFRF) was an arm of the state of Florida that had not consented to suit and had not waived sovereign immunity. Id. at 38-39. The PTAB dismissed Covidien’s IPR petitions against UFRF as barred by Eleventh Amendment sovereign immunity. Id.

From March 28 through March 30, 2017, information and communication technology company Ericsson Inc. filed six IPR petitions against patents owned by the Regents of the University of Minnesota (UM) (IPR2017-01197, IPR2017-01186, IPR2017-01219, IPR2017-01200, IPR2017-01213, and IPR2017-01214). The petitions challenged five UM patents relating of wireless communication technology (U.S. Patent Nos. 7,251,768; 8,774,309; RE45,230; 8,718,185; and 8,588,317; two petitions were filed against RE45,230).

In 2014, UM sued AT&T, Sprint, T-Mobile, and Cellco Partnership, asserting these challenged patents. Ericsson itself was not a named defendant, but Ericsson, who provides equipment to the named defendants, asserted that its rights were not adequately represented in the suits. Thus, on March 30, 2016, Ericsson successfully intervened in the district court litigations. Within one year of intervening in the lawsuits, Ericsson filed these IPR petitions.

Ericsson, mindful of the PTAB decision in Covidien, asserted in its petitions that UM had waived its sovereign immunity for an IPR proceeding by filing lawsuits in federal district court. In Covidien, where there was no related federal district court legislation, the PTAB specifically stated “we do not decide here whether the existence of [federal district court litigation] would effect a waiver of sovereign immunity.” Covidien, IPR2017-01274, Paper 21 at 26 n. 4. Thus, Ericsson took the position that the issue is yet to be decided whether a state can assert sovereign immunity in an IPR proceeding that is related to a federal district court case filed by the state.

We do not yet know whether UM will try to assert sovereign immunity in these IPR proceedings, as UM has yet to file Patent Owner’s Preliminary Responses (POPRs) to the petitions and still has over 3 months to do so.

If UM chooses to challenge the petitions on sovereign immunity grounds, the resulting institution decisions could have far-reaching effects on the patent enforcement strategy of state entities, and particularly, on state-owned or state-run universities and research institutions.