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Regents of the University of Minnesota v. LSI Corp.

State Sovereign Immunity Does Not Apply in IPR

Regents of the University of Minnesota v. LSI Corp., __ F.3d __, 2019 WL ___ (Fed. Cir. June 14, 2019) (DYK (with additional views), Wallach, Hughes) (PTAB) (4 of 5 stars)

Fed Cir affirms PTAB decisions declining to dismiss IPR petitions. The PTAB did not err in determining that state sovereign immunity does not apply to IPR proceedings. The opinion reviews the history and implementation of IPR, and notes that EPRx and IPRx did not implicate state sovereign immunity. It rejects the argument that immunity should apply to IPR due to “similarities with Article III proceedings where sovereign immunity applies.” Op. at 20. Discussing Saint Regis Mohawk Tribe, 896 F.3d 1322 (Fed. Cir. 2018), the opinion describes the differences between IPR and typical civil litigation. The differences between tribal and state sovereign immunity “do not warrant a departure from the reasoning in Saint Regis.” Op. at 24. That Congress has authority to abrogate tribal sovereign immunity, but not state sovereign immunity, was not central to Saint Regis’s reasoning. And the presumption that state sovereign immunity applies to proceedings unknown at the time of the Constitution (in Hans, 134 U.S. 1 (1890)) does not apply because, per Oil States, 138 S. Ct. 1365 (2018), it was understood pre-Constitution that a patent system could includes a path to patent cancellation, and because per Federal Marine Commission, 535 U.S. 743 (2002), the Hans presumption does not apply in the context of an agency’s reconsideration of a previous action. In a final footnote, the opinion addressed Hyatt, 139 S. Ct. 1485 (2019) and concluded that it did not hold that state sovereign immunity applies in agency proceedings.

Additional views: Judge Dyk (joined by the rest of the panel) writes separately to describe his view that “state sovereign immunity also does not apply in IPR proceedings because they are in substance the type of in rem proceedings to which state sovereign immunity does not apply.”

KEYWORDS: INTER PARTES REVIEW; SOVEREIGN IMMUNITY