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Pharmaceuticals / Regulatory Affairs / Commercial Operations

PTAB Says Sovereign Immunity Traded Away by Filing Infringement Suits in Court

Jan. 3, 2018

The PTO’s Patent Trial and Appeal Board dismissed a patent owner’s claims of sovereign immunity from the proceedings — in a move that might have implications for Allergan’s Restasis patent case involving a Native American tribe that is currently pending before the board.

The Regents of the University of Minnesota filed to dismiss the PTAB’s inter partes review of several patents covering wireless communications, following a challenge by Ericsson. The university contended that it was immune to the board’s federal authority under the Eleventh Amendment of the Constitution, which deals with state sovereignty.

An expanded panel of seven PTAB judges denied the motion, saying the university waived its immunity by filing separate infringement actions in a federal district court related to the same patents. The judges agreed, however, that state entities would be immune from a federal agency’s adjudicatory proceedings, under different circumstances.

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