• Jun 14 2019
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  • Category: CAFC Updates

The Regents of the University of Minnesota appeals from decisions by the Patent Trial and Appeal Board declining to dismiss petitions for inter partes review (“IPR”) of patents directed to particular types of “read channel” chips and their use in telecommunications, particularly for 4G LTE networks. The petitions were alleged to be improper because states supposedly enjoy sovereign immunity in IPR proceedings. While this appeal was pending, this court decided Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., holding that IPR proceedings were not barred by tribal sovereign immunity. The CAFC concludes that state and tribal sovereign immunity do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity and holds that state sovereign immunity does not apply to these proceedings. Accordingly, the CAFC affirms. Judges Dyk, Wallach, and Hughes present their view that state sovereign immunity also does not apply to IPR proceedings because they are in substance the type ofin rem proceedings to which state sovereign immunity does not apply.

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