Regents of the University of Minnesota v. Cellco Partnership

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 Patent Trial and Appeal Board (PTAB) has denied the University of Minnesota’s motion to dismiss six inter partes reviews (IPRs) brought by Ericsson, ruling on December 19 that the university had waived its Eleventh Amendment sovereign immunity from IPR by asserting the challenged patents in district court. The Board’s decision casts doubt on a related, controversial strategy pioneered in the fall by the Saint Regis Mohawk Tribe, which acquired patents from Allergan and SRC Labs, LLC and licensed them back in order to shield the patents from IPR using the tribe’s own sovereign immunity.

The University of Florida Research Foundation, Incorporated has filed suit against GE (1:17-cv-00171) and Koninklijke Philips (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 Patent Trial and Appeal Board (PTAB) continued to see the filing of petitions for inter partes review (IPR) against publicly traded NPEs in March 2017, including Acacia Research Corporation; Finjan Holdings, Inc.; Pendrell Corporation; TiVo Corporation (formerly known as Rovi Corporation); and Wi-LAN Inc. (WiLAN). A variety of prolific, privately held NPEs were also targeted for IPR throughout March, including Blackbird Tech LLC, General Patent Corporation, IP Edge LLC, Realtime Data LLC, and Papst Licensing GmbH & Company Kg, along with several inventors and inventor-controlled NPEs and an assortment of other plaintiffs.

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.

The Regents of the University of Minnesota filed suit against AT&T, Sprint, T-Mobile, and Verizon, asserting a group of patents that have not been seen in previous litigation (7,251,768, 8,588,317, 8,718,185, 8,774,309, RE45,230). The patents relate to wireless communication and transmission of wireless signals, and defendants’ 4G LTE networks are accused of infringement. With the exception of the ‘768 patent, the asserted patents issued within the last year; the ‘768 patent issued in 2007. The university filed one previous suit in 2007, which concluded in July 2013 when the Federal Circuit Court of Appeals upheld a district court’s grant of summary judgment of invalidity as to the asserted patents. The patents asserted in the previous suit relate to a biomedical device. 11/5, District of Minnesota, 0:14cv04666, 0:14cv04669, 0:14cv04671, 0:14cv04672