PTAB ‘deals blow to sovereign immunity tactic’

The US Patent Trial and Appeal Board (PTAB) has asserted its right to review the validity of patents owned by the University of Minnesota, rejecting the public university’s argument that its “sovereign” status grants it immunity, Reuters reported.

The PTAB ruling could be a setback to efforts by pharmaceutical and technology firms to shield patents from the court by transferring them to entities like state universities and Native American tribes.

As government entities, they can assert sovereign immunity, a legal doctrine that holds they cannot face litigation without their consent.

Reuters reported that in a January ruling in a different case, PTAB said it recognized the defense of sovereign immunity.

However, the board said on Tuesday the University of Minnesota had waived its immunity by filing lawsuits in federal court in 2014 accusing telecom equipment maker Ericsson and other companies of infringing the same patents, Reuters reported.

Ericsson challenged the validity of the University of Minnesota’s patents before PTAB, and the case was put on hold pending a decision by the board.

The PTAB ruling throws into doubt the tactic adopted by drug giant Allergan which transferred patents in its dry-eye treatment Restasis to the upstate New York Saint Regis Mohawk Tribe, which licensed them back to Allergan in exchange for ongoing payments.