Expanded Ptab Panel Finds Sovereign Immunity Waived By Patent Enforcement

In a case of first impression, an expanded PTAB panel (including Chief APJ Ruschke) found that a parallel enforcement action by a patent owner waives its sovereign immunity defense against under the 11th Amendment an AIA petition in Ericsson v. Regents of the University of Minnesota.  The expanded panel first affirmed its earlier decisions finding that sovereign immunity will prevent an IPR from proceeding against a patent owner who has not waived the defense. In this particular case, however, the patent owner "waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding."

Expanded Panel Procedure