Our Locations

Media Office
For meetings and deliveries:
12 Veterans Square
1st Floor Left
Media, PA 19063 U.S.A.

Click here for maps and directions.

Postal Address
P.O. Box 209
Swarthmore, PA 19081-0209 U.S.A.

Phone: (610) 892-9942
Twitter: @TechLaw_Elman and @ElmanTechNews
eFax: (925) 226-4995

Contact Us
Send a written message. Note: there is no attorney-client relationship without a signed Letter of Engagement.

Your Name:
Your Email:
Your Location (City/State):
Phone (optional):

captcha
Please enter the text shown above:

Your Message:

Elman on Tech News via Twitter
Find us on Facebook

Can Tribes and State Universities Use Sovereign Immunity to Avoid Patent Litigation?

You may have seen our firm’s recent e-mail regarding the efforts of a drug company to prevent its patents from being invalidated by the Patent Trial and Appeal Board (PTAB) Allergan had transferred certain patents to St. Regis Mohawk Tribe and licensed them back, hoping to take advantage of the tribe’s sovereign immunity to block the inter-partes patent review process. That case is still unfolding in the courts and in Congress, but a recent court decision doesn’t bode well for patent owners who would follow this path.

In a refreshing case of common-sense prevailing over convoluted legal maneuvers, the efforts of the University of Minnesota (“UM”) to prevent PTAB inter-partes review, by claiming sovereign immunity, have failed. On December 19, an expanded PTAB panel, including the Chief Administrative Patent Judge, denied UM’s motion to dismiss a company’s request for inter-partes review of the patents. Though acknowledging that state universities are generally immune from inter-partes review, as arms of the state, the PTAB concluded that UM had waived its sovereign immunity under the Eleventh Amendment by filing an action in federal court alleging infringement of the patents at issue. This apparently was a bridge too far for the judges, since UM was obviously trying to have its cake and eat it too.

While the facts involved in the tribal and state university litigation are not identical, the recent PTAB ruling may provide insight into how it will handle the claim of tribal immunity. If the PTAB finds that the transfer of assets to the tribe was a sham transaction (one made solely to avoid a legal proceeding), then it will likely be invalidated. It’s an interesting legal question. Stay tuned.

Leave a Reply

You must be logged in to post a comment.

2017 Martindale-Hubbell® Peer Review Rating of AV Preeminent® Gerry Elman has received a 2017 Martindale-Hubbell® Peer Review Rating of AV Preeminent®
Clients’ Patents
Click here to see patents we’ve filed for various companies and inventors.
Sign up for free
Register here to receive email notifications of podcasts, blog posts and other informative material from Elman Technology Law. And join the annual mailing list for our calendar with images from historic patents.
Archive of Our Postings
Make a Payment
Elman Technology Law clients can quickly and securely make a payment using LawPay. Click on the LawPay box below.

Pay Your Invoice with LawPay