January 11, 2019Newsletter

This Week at the Board - January 11, 2019

In Ethicon, Inc. v. Board of Regents, The University of Texas System (IPR 2019-00406 & IPR 2019-00407), the PTAB granted Patent Owner’s motion to stay proceedings pending resolution of the Regents of the University of Minnesota v. LSI Corp., Case No. 2018-1559, before the Federal Circuit, addressing the applicability of sovereign immunity to Inter Partes Review (“the UMN Appeal”). Both parties submitted substantial arguments on whether State sovereign immunity applies to an IPR, and if it is waived by asserting the patent in district court, which are the same issues before the Federal Circuit in the UMN Appeal. While the PTAB did not address the sovereign immunity issue, it took into account whether granting the stay would advance “the just, speedy, and inexpensive resolution” of the matter pursuant to 37 C.F.R. § 42.1(b).

The PTAB recognized the “potential litigation harm to Petitioner if this case is stayed,” but determined that this harm was “outweighed by the potential constitutional harm to Patent Owner, should the instant IPRs proceed on the merits.” The PTAB also noted that if a stay was not granted, the Patent Owner had indicated it would immediately request permission to file motions to dismiss seeking to preserve its rights to State sovereign immunity, and appeal to the Federal Circuit if those motions were denied, thereby triggering a stay pending the appellate review. 

Based on these factors, the PTAB determined that it would be more efficient and less expensive to the parties to stay the proceedings pending an initial ruling by the Federal Circuit on the UMN Appeal.

A link to the decision is found here.

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