Since early 2017, courts have grappled with the issue of whether the sovereign immunity held by states and Native American tribes could shield them from inter partes review (IPR). That debate was resolved in April as to Native American tribes, when the US Supreme Court declined to review a July 2018 Federal Circuit decision that tribal sovereign immunity does not apply to IPR. Now, the Federal Circuit has ruled that states similarly lack immunity from IPR, holding in an appeal of IPRs filed against the public University of Minnesota by Broadcom (Avago and LSI) and Ericsson that there was no reason to treat states differently from tribes in this context.
The University of Florida Research Foundation, Incorporated has filed suit against GE (1:17-cv-00171) and KoninklijkePhilips (1:17-cv-00170), accusing the two companies of infringing a single patent (7,062,251) generally related to the processing and display of medical data against the defendants’ data connectivity systems and products related to medical care. Both complaints assert that as an arm of the state of Florida, the university “enjoys sovereign immunity”, further “expressly reserv[ing] its sovereign immunity from any inter partes review” (IPR). In January, the Patent Trial and Appeal Board (PTAB) held for the first time, in an IPR filed by Covidien against the same university (IPR2016-01276), that the states’ Eleventh Amendment sovereign immunity extends to universities.
The Regents of the University of Minnesota have filed suit against Broadcom (Avago) and subsidiary LSI, alleging that the two companies have infringed a single patent (5,859,601) generally related to a method for encoding data for writing onto a magnetic disk in a hard disk drive (0:16-cv-02891). LSI is accused of infringement through its hard disk controller systems-on-a-chip (“SOCs”) and/or stand-alone read channel chips sold under the brand name TrueStore, including products that offer a technology called “Magnetic Transition Run” (MTR) that purportedly reduces error rates during data writing. Avago, meanwhile, is accused of infringement by handling the US sales and distribution of LSI products. The University pleads that the accused chips are incorporated into hard drives manufactured by Western Digital (HGST) and Seagate, neither of which is named as a defendant.