Sovereign Immunity Again Applied To IPR

For the third time, the Board applied sovereign immunity as a defense to IPR. In Reactive Surfaces Ltd. v. Toyota Motor Corporation (IPR2017-00572 & IPR2016-01914), the Board determined that a public university could raise the defense of sovereign immunity as a reason why it should not be subject to IPR. However, in Reactive Surfaces, the Board refused to dismiss the proceeding because it found that Toyota, a co-owner of the challenged patent that did not claim sovereign immunity, "would represent adequately the [university's] interests."

Before determining that the IPR could proceed without the university, the Board first addressed whether the university could raise sovereign immunity in IPR. The panel cited the Covidien decision (IPR2016-01274), where Wolf Greenfield first developed sovereign immunity as a defense to IPR, and the NeoChord decision (IPR2016-00208). The Board noted that neither of those decisions are binding but found "their reasoning persuasive."