The document provides an in-depth analysis of the applicability of state sovereign immunity, as established by the Eleventh Amendment of the U.S. Constitution, to state universities in the context of Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review (IPR). Historically, states have been shielded from certain types of patent litigation in federal courts absent their consent; this immunity extends to claims of patent infringement and inventorship corrections. PTAB trials, created in 2012, present a new venue for patent disputes, and recent cases—namely Covidien LP v. University of Florida Research Foundation and NeoChord, Inc. v. University of Maryland—have recognized Eleventh Amendment immunity for state university patent owners in PTAB proceedings. The PTAB panels concluded that IPR proceedings are sufficiently similar to lawsuits in federal court, and therefore state university patent owners, defined as arms of the state, are entitled to immunity unless they have expressly waived it through state law, contract, or by asserting claims in court.
The summary further notes potential ambiguities regarding the finality and appealability of PTAB decisions to grant immunity, especially given conflicting statutory provisions and pending appellate cases. In addition to discussing the procedural and legal foundations for sovereign immunity in PTAB trials, the document touches on international considerations under the WTO TRIPS Agreement, which mandates non-discriminatory treatment of foreign nationals in intellectual property matters. Lastly, the business implications of these legal precedents are highlighted, including their potential impact on collaborative research, joint ownership, technology transfer, and university spinouts. The overall effect of these immunity decisions is to strengthen the position of state universities as patent holders in the face of administrative patent challenges, while raising questions about consistency, fairness, and recourse in the broader intellectual property system.
