21 December 2017
Reporter: Barney Dixon

PTAB strips university of IPR immunity

The US Patent Trial and Appeal Board (PTAB) has stripped the University of Minnesota of its sovereign immunity in an inter partes review (IPR) challenge.

In a ruling on 19 December, a PTAB panel held that the university cannot use its sovereign immunity to dismiss an IPR challenge brought by Ericsson.

It said this would avoid the unfair situation that could result if a state were permitted to file suit in a federal court and at the same time claim immunity against the defendant.

The panel said that “allowing [the] patent owner to assert its Eleventh Amendment immunity in this proceeding selectively so as to bar petitioner from obtaining the benefits of an IPR of the asserted patent would result in substantial unfairness and inconsistency.”

This ruling could have repercussions for the Saint Regis Mohawk Tribe, whose Restasis dry eye medicine patents are currently embroiled in an IPR challenge. The tribe had previously filed for a motion to dismiss the proceedings.

Allergan transferred its entire portfolio of Restasis patents to the Saint Regis Mohawk Tribe in an attempt to grant the patents immunity from IPR.

The deal came under fire from various parties, including generic pharmaceutical manufacturers and technology associations.

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