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ARTICLE · 05 JULY 2019

State Sovereign Immunity Does Not Apply To IPR Challenges

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In Regents of the University of Minnesota v. LSI Corp., Nos. 18-1559 et al. (Fed. Cir. June 14, 2019), the Federal Circuit reversed the PTAB's decision

United StatesIntellectual Property
Benjamin T. Hemmelgarn
Benjamin T. Hemmelgarn
Kevin Rodkey
Kevin Rodkey
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In Regents of the University of Minnesota v. LSI Corp., Nos. 18-1559 et al. (Fed. Cir. June 14, 2019), the Federal Circuit reversed the PTAB’s decision finding that state sovereign immunity would apply to IPR proceedings, but had been waived, and held that state sovereign immunity does not protect state-owned patents from challenges from IPR challenges.

University of Minnesota (UMN), an arm of the state of Minnesota, sued LSI and customers of Ericsson in district court, alleging infringement of several patents relating to semiconductors and 4G LTE networks. LSI and Ericsson then filed IPR petitions challenging the patents. UMN moved to dismiss the IPR challenges based on state sovereign immunity. The Board denied UMN’s motions, finding that UMN had waived its right to assert state sovereign immunity by filing suit in district court. UMN appealed.

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