Download This PaperShielded by Sovereignty: The Implications for Patentees of Covidien v. University of Florida Research Foundation and Its Progeny
Final draft published in the AIPLA Quarterly Journal; Fall 2017, Vol. 45-4
51 Pages Posted: 15 Sep 2017 Last revised: 9 Feb 2018
Date Written: August 2, 2017
Abstract
This Article reviews both the recent history of the Patent Trial & Appeal Board's Inter Partes Review proceedings and the history of the doctrine of sovereign immunity as it relates to state entities such as public universities, as well as other sovereigns such as Native American nations. After addressing the specific holdings in the PTAB's recent decisions in Covidien v. University of Florida Research Foundation, Neochord v. University of Maryland, and Reactive Surfaces v. Toyota, this Article then discusses the various steps (some potentially drastic) that non-state-actor patent holders might take in order to try to insulate their patents from post-grant review proceedings at the PTAB under the Board’s reasoning. Finally, this Article considers some of the potential risks of such strategies, ranging from contrary decisions by the PTAB or superseding decisions by the Federal Circuit or Supreme Court to the danger of losing control of the patents at issue.
Keywords: Patent, Patent Trial and Appeal Board, PTAB, Inter Partes Review, IPR, Sovereign Immunity, Native American, NPE, Non-Practicing Entity, PAE, Patent Assertion Entity, Universities
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