By Scott A. McKeown
| February 27, 2013
11th Amendment Immunity from DJ Action Does Not Extend to USPTO

11th Amendment Immunity from DJ Action Does Not Extend to USPTO


State university technology transfer programs enjoy immunity from declaratory judgment (DJ) actions of patent invalidity/non-infringement. This is because state entities qualify for 11th amendment immunity from suits in federal district courts. So, absent the rare waiver of 11th amendment immunity, licensing targets of state university technology transfer programs have no recourse to proactively challenge the subject patents in the federal district courts.

The immunity benefit enjoyed by such state-run technology transfer licensing programs was most recently made clear in Cyanotech Corp. v. Valensa Intl. & The Univ. of Ill. (D.Haw) (here) In Cyanotech, the DJ action against the Univ. of Illinois was dismissed based on 11th amendment grounds.

Yet, a DJ action in the district courts is not the only avenue to challenge the validity of an issued patent in a forum more favorable to potential licensees. As demonstrated by early filings at the USPTO's Patent Trial & Appeal Board (PTAB) universities are increasingly the target of Inter Partes Review (IPR) Filings. 

Since September 16, 2012, IPR proceedings have been available to challenge issued patents of any vintage. IPR was specifically fashioned by Congress to improve upon and replace the old inter partes patent reexamination proceeding. Such patent reexamination proceedings had long existed prior to September 2012. Yet, IPR proceedings are quite  a bit different from a challenger perspective.

First, unlike inter partes patent reexamination, IPR proceedings must, by statute, conclude within a 12-18 month time frame. While inter partes patent reexaminations were accorded "special dispatch" within the USPTO it was not uncommon for such proceedings to span 5-7 years in length if fully contested. Thus, the increased speed of the new IPR proceedings allows the PTAB to serve as a true dispute resolution forum for real time business issues.

Second, IPR proceedings are not handled by patent examiners, but instead, technically trained judges. Directly accessing technically trained judges has the advantage of shortening the necessary processing times for these proceedings so that key claim interpretation and evidentiary requirements can be assessed a mere months after petition filing.

Not surprisingly, there is a growing minority of university patents at issue in IPR proceedings. Indeed some of the patents at issued at the PTAB are owned by the University of Illinois (although unrelated to the Cyanotech dispute). Other universities defending IPRs are The Board of Regents of the University of Michigan, and The Trustees of Colombia University.

For at least those licensing campaigns in the predictable arts, IPR is a significant new obstacle of state university tech transfer programs. Yet, as IPR is limited to patents and printed publications only, the licensing of Bio/Pharma portfolios may still proceed relatively unencumbered as 112 and 101 challenges still remain the best defenses in those disputes.
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