Addressing for the first time the issue of whether an inter
partes review (IPR) may proceed where one of the co-owners was
entitled to sovereign immunity under the 11th Amendment, the Patent
Trial and Appeal Board (PTAB) held that the proceeding could
continue against the co-owner not entitled to sovereign immunity,
even in the absence of the other co-owner. Reactive Surfaces
Ltd., LLP v. Toyota Motor Corp., Case No. IPR2017-00572, Paper
32 (PTAB, July 13, 2017) (Moore, APJ).
Reactive Surfaces filed an IPR against a patent co-owned by
Toyota and Regents of the University of Minnesota (collectively,
patent owner), alleging that the patent owner's patented
processes for preparation of a protein-polymer composite material,
and the patented material itself, were obvious in view of prior
art. During prosecution of the patent, three of the six named
inventors assigned their interest in the patent to the Regents. The
remaining three inventors assigned their rights to
