University of Minnesota v. LSI Corp. (Fed. Cir. 2019)
As expected based upon the Federal Circuit’s prior rulings on tribal immunity, the court has now also ruled that 11th Amendment Sovereign Immunity does not protect patents owned by individual states (such as Minnesota) from being cancelled via inter partes review (IPR).
We conclude that state sovereign immunity does not apply to [IPR] proceedings.
What does this mean — state owned patents can more easily be challenged.
By its terms, the 11th Amendment prohibits US (Federal ) courts from exercising power over suits “against one of the United States” that are brought by Citizens of another State or a Foreign State.
The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.
Note, that the 11th Amendments does not prohibit actions against one State brought on behalf of another States or by the Federal Gov’t. Note also that the States also have inherent sovereign immunity that “neither derives from nor is limited by, the terms of the Eleventh Amendment.” Alden v. Maine, 527 U.S. 706, 713 (1999).
Although the terms of the 11th amendment appear to be directed to Article III court activities, immunity has also been found in administrative cases that the courts finds to be “similar to court adjudications.”
In its setup for this decision, the Federal Circuit walked through the patenting process — noting the many flaws and high likelihood that non-patentable claims are allowed to be patented. That foundation then highlights the need for further administrative action in fixing those bad patents — first reexaminations and reissues, and now inter partes review. Because this deeper look is costly, it makes sense to only target cases under dispute — fix the important patents and don’t worry about the rest. In other words, IPR proceedings should be seen as an extension of the examination process, not a court proceeding. The court explains briefly that “IPR represents the sovereign’s reconsideration of the initial patent grant.”
In the Allergan case, the Federal Circuit previously held that Native American tribal immunity does not protect tribal-owned patents from IPR challenges. Here, the court concluded that “the differences between state and tribal sovereign immunity do not warrant a different result than in Saint Regis. We therefore conclude that state sovereign immunity does not apply to IPR proceedings.”
= = = = =
In an interesting statement, the three judges on the panel – Judges Dyk, Wallach, and Hughes — added a non-binding set of “additional views” to their main opinion that identify am IPR proceeding as “an in rem proceeding to which sovereign immunity does not apply.” The court does not explain why it chose to include this unanimous statement as “additional views” rather than as the holding.
Pardon the Potential rePost (due to the inane count filter),
Raised earlier without answer (except Malcolm’s dust-kicking), but of what legal effect are “Additional Views?”
What “legal effect” (at least with respect to the courts themselves) are any opinions when we have a Supreme Court questioning the existence of stare decisis?
Combine that issue with the problem of an increasing number of patent maximalist types just making stuff up on the fly, or attacking strawmen instead of directly addressing the issue presented to them, and … well, you call it a real conundrum, I suppose.
The important thing is that patent attorneys have jobs. I guess we shouldn’t forget to focus on the important stuff.
Maybe be a little more specific with your assertion of what and how the Supreme Court is doing what you are suggesting.
I am sure that there is some meaningful context to your desire to apply whatever point it is that you think that you have to the topic at point here.
Your second paragraph is noting but your usual Accuse Others meme.
Your last paragraph is a horrible strawman, and more indicative of YOUR cognitive dissonance than anything else.
(But hey, at least with that last paragraph we won’t see [yet another] expungement of your political rant posts)
What is the inane count filter?
Different people have different number of posts allotted per any given time period.
Inanity comes about because those like Malcolm, who engage in drive-by Monologuing and does not engage on the merits has a limit almost twice that of others that engage on the merits and will engage in multiple dialogues.
Is your information based on a private conversation? Or inductive reasoning?
Based on cold hard facts, my shifting historical pseudonym friend (and of course, black and white
).
The veracity of “facts” is difficult to evaluate when they are secret, my shiftless snowflake friend.
Your mindless ad hominem does not change the black and white of cold hard facts. I am neither “shiftless” nor a “snowflake.”
It really does not matter at all whether YOUR concern of “veracity” is met or not.
There is NO “secret” anything here. You have NOT been paying attention. HAD you been paying attention, your concern for veracity would have been met.
Further, since YOU have not been paying attention, and the matter at hand IS something that the moderator of this blog controls, YOUR questioning (and insults) are directed to the wrong party. Please feel free to avail yourself of a proper path forward if you want to insist on having YOUR sense of “veracity” satisfied, given your inattentiveness.
Mindless? Not at all. And If NOT paying attention means not attempting to parse though one of your word salads more often than the rare occasion, you got me.
BTW, fourteen percent of UFOs are piloted by little green men from Alpha Centauri. Cold hard fact!!
Yes – mindless, as you are off and you are lazy in being off.
Your additional attempted insult of “word salad” does not do any favors to whatever point that you think that you are making.
Snark does not work for you, given how off and lazy you are.
So in view of the inane count filter, keeping you occupied with providing your knee-jerk snappy insults limits the number of your other inane posts — hmmmm . . . .
LOL – do you even realize the black and white blight that you just posted?
…by the way, your post is a fantastic example of why the Count Filter is so inane. Those like Malcolm that do not care at all to engage with anyone are free to use their quota to snipe and run. Others, like myself, that DO engage (and that engagement does include squashing gnats like you) — as well as partaking in substantive discussions with several different posters on any number of topics and sub-topics per thread — are artificially constrained.
That you may [giggle] at this realization and intimate that you would use distractionary posts so that real dialogue is hampered is an excellent argument to remove (or at least even out the count) that Count Filter.
So, despite yourself, I want to say: Thank you.
So . . . you have established that fourteen percent of UFOs are piloted by little green men from Alpha Centauri. Sounds fantasical.
… and then that black and white hurts you yet again.
Res ipsa loquitur.
Really?
Do you know what is worse than being pretentious?
Being pretentious and inapposite.
Let me guess: you made it through a first year of law school, and then decided that it was not really for you.
What other legal terms confuse you?
You err egregiously by A$$uming that I am confused.
As noted in an earlier blog re this Fed. Cir. decision in UNM v. LSI holding no sovereign immunity from IPRs against states:
While that per se may well be Sup. Ct. vulnerable, Gene’s blog author article had indicted that the PTAB decision below additionally held that the Patent Owner has waived its Eleventh Amendment immunity by filing a federal court infringement suit on the patent being challenged in the IPR. Since the Federal Circuit found that state sovereign immunity does not apply to IPR proceedings period, it decided that it did not address that issue of whether immunity was waived by UMN’s district court filing.
But that state affirmative action waiver is a more likely winning argument at the Sup. Ct. It could save most such IPR petitioners, since the vast majority of IPRs petitions are filed by lawsuit defendants. Having been raised and argued below it can be re-raised at the Sup. Ct. even though the Fed. Cir. chose not to rely on it.
“But that state affirmative action waiver is a more likely winning argument at the Sup. Ct.”
As we have both ntoed – this is NOT the “cut and dried” answer that here you make it out to be, if for only for the fact that these are two different forums under consideration, and suit in one does NOT NECESSARILY imply ANY sense of choice of waiver in the other.
“ since the vast majority of IPRs petitions are filed by lawsuit defendants. ”
And clearly, this is NOT a point in your favor, since the “rest of the story” here is that IPR petitions HAVE NO ARTICLE III REQUIREMENT at all.
If anything, Paul, this goes against your proposed (personal opinion) takeaway.
this is NOT the “cut and dried” answer that here you make it out to be, if for only for the fact that these are two different forums
Any other facts that support NOT finding a waiver of highly dubious immunity with respect to a PTAB proceeding when the waiver in an Art III Court is admitted/indisputable? Because this particular “fact” of yours isn’t a super compelling reason to reach the result you like.
Surely you have some other “facts”, though. Right? It’s not all just you pointing to your semen stains on your copy of the Constitution. Right?
Not “super compelling?”
Your feelings are noted.
The unanimous additional views is an odd development. I agree with the suggestion in another comment that maybe one or more of the judges didn’t want to make the in rem analysis precedential. It’s odd but it makes some sense. Unlike most other circuits, the Federal Circuit can’t rule one way and then see if another circuit confronts the same issue. In this case, applying St. Regis is sufficient to resolve the appeal. In some other case, the in rem point might be dispositive, so this panel explains what they think of the in rem point, but doesn’t tie the hands of future panels. I have no idea what was in the heads of the judges, but something like that may have been. Judge Leval’s “Dicta about Dicta” article had a cautionary note about alternative holdings. (see fn 23) link to law.nyu.edu
I’ve seen a few instances where all or some of the court joins a precedential opinion, and also a concurrence or separate thing that isn’t precedential and that gets into additional issues.
Here’s Halo, where Judge O’Malley and Judge Hughes concurred to suggest that the court reconsider its standards for enhanced damages.
link to scholar.google.com
Here’s a unanimous 6th Circuit decision, where the court unanimously wrote a precedential opinion on one issue and an “unpublished appendix” on other issues: “We affirm the district judge on all points, writing for publication only with regard to the sentencing discretion issue. All other issues raised by Appellants are addressed and decided in an unpublished appendix to this opinion.”
link to scholar.google.com
It’s not common, but I think the unanimous “additional views” thing makes sense here.
How is:
“but doesn’t tie the hands of future panels”
NOT an attempt at an advisory opinion?
In addition to this and the one above, one additional comment has been caught in the filter.
Wanted to thank you for the Judge Leval article, as well as point out that the late Ned Heller has also provided a link to a different article (also written by a judge) concerning the danger of “law through dicta” (even, or perhaps especially, law through Supreme Court dicta).
The partition into an actual holding of the case and the separated, unanimous, but not holding (for whatever reason), brings to mind a question of: to what effect (in law) does this partitioned view portend?
It obviously is not a holding of the case.
It is also not dicta, as it is indeed fully separated from the holding.
Is it to be taken as signaling what is NOT the law? Since it is a position that all three panel members feel strong enough to include, but not strong enough to include in the “decision” itself, and only (and merely) a part of some “non-precedential” aspect, a question is naturally prompted as to not only why was it kept out, but now that it HAS been kept out, where does that place the meaning of the very item kept out.
It carries the rather odd lead-in of: “While the opinion for the court does not reach the issue,.”
If not reached, why include at all? Is the court merely signally how it may feel, IF the issue were to have been reached? How is that different from an “out-of-bounds” advisory opinion?
In this day and age in which legislating from the bench is being seen with more and more clarity as a problem to be avoided (see the near unanimous views of the Tillis Congressional Hearing witnesses, as well as the fact that all three branches of the government have criticized the over reach of the Supreme Court’s legislating from the bench), this particular panel seems intent on drawing more attention to “policy judging” and as several others below put it: writing law.
A further note: this tribunal took great pains to attempt to set out a “but this is merely dealing with patents” type of distinction, and I have to wonder if the “separation” was due in part that if the “in rem” argument was actually included in the “decision” (at least the part that carries weight going forward), would the court have opened itself up as attempting TOO much, and the decision then be seen to impact MORE THAN “just patents?”
As Malcolm trips and “waxes eloquently” (leastwise as ‘eloquent’ as he is maximally capable of), the “background” by Judge Dyk is an indictment of the reach of anti-patent propaganda into (at least certain members of) the judicial zeitgeist.
Judges are citing “Amicus” writings as if the uncontested mantra therein were actually uncontested facts, as if those writings WERE statutory law (as opposed to being criticisms of controlling statutory law).
To Malcolm’s feeling-driven “If i were a Professor,” I would start him off with the actor John Houseman’s quote from the movie “The Paper Chase” at the hour and six minute mark.
It seems like a basic to understand Separation of Powers, but a basic that bears emphasis here.
If I were a full-time tenured professor of patent law, I would assign the Regents of Minnesota case very early in the semester. The background provided at the beginning of this case is perhaps the most sober assessment in the CAFC’s case law of the state of the US patent system and how we got to this place — very quickly! — from the incredible and utterly hopeless backwaters that the system endured pre-1980. It’s an incomplete history, to be sure, but it’s at least it’s not transparently trying to hide the ball (although it would be improved had it mentioned State Street bank and the spigots getting turned up to 11 in the late 90s).
Perhaps most importantly, the case hammers the final nails into the concept that the “presumption of validity” exists for procedural reasons. It’s hard to believe, but once upon a time there were blo g tr 0 lls here who insisted — in the face of all the facts to the contrary — that it was somehow legally incorrect to call a j u nk patent a j u nk patent because “it was presumed valid.” Of course we all laughed. Here’s a choice passage:
Nonetheless, in light of the USPTO’s constrained resources and the absence of material outside input during the initial examination, it is inevitable that there are patents granted in error. [see footnote 6]
Footnote 6: See Quality, Incentives, & Clarity, at 25 (“[E]xaminers’ time pressures are one of the central challenges for patent quality.”); see also Michael D. Frakes & Melissa F. Wasserman, Does the U.S. Patent and Trademark Office Grant Too Many Bad Patents?: Evidence from a Quasi-Experiment, 67 Stan. L. Rev. 613, 652–53 (2015) (finding increased patent grant rates correlated with in-creased resource strain on the USPTO); Shawn P. Miller, Where’s the Innovation: An Analysis of the Quantity and Qualities of Anticipated and Obvious Patents, 18 Va. J.L. & Tech. 1, 45 (2013) (estimating that 28% of issued patents would be invalidated as anticipated or obvious).
That’s 28% percent overall. The percentage of invalid or ineligible patents in the data processing logic space is probably closer to 60% (and that’s factoring in the viability of the incoherent CAFC opinions presently propping up the eligibility of the remaining 40% of logic patents).
Here’s one quick way to determine if a granted patent is invalid or not: look to see if the claims recite “machine learning” or “artificial intelligence.” Probably 90% of those are invalid c -r @ p. Can anyone guess why?
Edit: Perhaps most importantly, the case hammers the final nails into the concept that the “presumption of validity” exists for anything but procedural reasons.
Kind of changes the meaning a bit. 😛
Do you really think that the difference that you are aiming for somehow does not make that particular stick in the bundle of property rights of a granted patent disappear? That it somehow is now not a stick in the bundle of property rights?
No “right” has “disappeared”. The presumption is still there (not that it was a “right” in the first place). And Congress can define a “patent” any way that chooses so even something was “lost”, that’s your problem (should you choose to obsess over it).
Remember, Bildo: a lot of things have happened in direct response to the behavior of a-h0-les like you. Enjoy.
“The presumption is still there”
You have NOT been paying attention.
At the institution decision point, that presumption (presence AND level) is not longer there.
This happens well before any actual “adjudication.”
This ALSO happens in light of Congress NOT changing the meaning and designation of patents as property.
At the institution decision point, that presumption (presence AND level) is not longer there.
Assuming this is correct, so what? You’ve been given all the due process that your precious presumption provides and you’ll get even more after that. If the patent doesn’t appear to have been mistakenly granted (a decision which you are entitled to object to in writing because of your precious presumption), then no decision is instituted. If, ultimately, after you’ve been given a chance to weigh in, the patent does appear to have been mistakenly granted, then you were never entitled to any presumption in the first place. So kiss it goodbye, wipe away your tears, grow up a little, and prove that the petitioner was wrong so you can get your patent back. Sniveling like a little baby and soiling yourself while you run around with the Constitution screeching about how unfair it all is not a good look. I know this is a difficult concept for a lot of people, but mainly overweight balding white dudes hiding their abject ugliness with goatees who probably have bedrooms filled with tons of Confederate and N@ zi “memorabilia.”
No need to assume – but even you should be able to connect the dots.
(It’s kind of THE point at hand, and directly refutes your assertion — that is “so what”)
directly refutes your assertion
LOL
Try again, d-psh-t. My gob but you’re a piece of work.
No matter how tightly you clench your eyes, the fact that YOU choose not to see does not make the need to “try again” be MY need.
The “additional views” bit is quite puzzling. To my mind, the in rem argument is the strong argument for why sovereign immunity does not apply. Nevertheless, all three judges on the panel decided to make this argument, but not to make it in the precedential portion of the decision. Why so? I am really lost as to the thinking here.
“… is the strong argument…”
Er, “… is the stronger argument… .” Mea culpa.
Maybe they lacked the courage of their convictions…
(no snark intended)
The unanimous “additional views” suggests that one or more nonpanel members of the court had some misgiving(s) about making the additional views precedential.
That’s a pretty bold assertion, TP — do you have any backing whatsoever to support that this happened here, or in fact has ever happened for any CAFC panel decision?
(Not snark – would genuinely be interested in seeing the foundation for your assertion)
Not snark? I don’t recall any 3=judge precedential Fed. Cir. opinion where all 3 signed on to “additional views.” And I do not have any secret knowledge of this particular case. The internal operating procedures of the Fed. Cir. are available on their website. Non-precedential opinions are pretty much automatic for mandate but an opinion to be designated precedential is subject to torpedoing from judges not on the panel. Occam’s Razor suggests somebody had a problem about making the “additional views” precedential. The simplest explanation is usually the best explanation.
No. There is no suggestion of Occam’s Razor from the procedures on their website, or for that matter, any decision ever following your supposition (unless you have somethingmore….)
A bit of apologies TP, as it appears that my reply may be taken as being snarky – none was intended, and I am truly interested in the foundation — and effects — of this separation.
Now if I wanted to be snarky, I would answer your call above with a citation to Occam’s Razor — would you find that satisfying?
Right, but that does not answer my question—it merely moves the question off one degree. Why did they have those misgivings? That is the part that puzzles me.
I did think your open question might be more subtle. My answer is I have no idea.
I have no idea.
Fair enough. I expect that we are all in the same boat here (although I would be interested to read the skinny if some CAFC clerk wants to dish the dirt).
Sounds like you’re asking somebody to crawl around inside the mind of Pauline.
I also have no idea why there are ex parte reexams but there’s a Third Party Requester in inter partes reexams. Who are the 2 other parties?
The late Ned Heller might have jumped all over your reference to Pauline (and chastised her earlier decision as being one that placed both feet on a steep and slippery slope which has resulted in the current mantra of “to unsecure these rights” once granted and departed from the Executive Branch…
Ned Heller was a fake news inhaling and fake news spewing Drumpf bootlicker.
Your “one-bucketing” is noted.
Especially as he had advised others in relation to dealing with you to: “enjoy the swagger.”
Of course, that was well before he landed in that “one-bucket.”
I’m not sure if there is a specific doctrine in this regard, but deciding that IPRs are in rem would be new law whereas following St. Regis would be following existing law. Since both would lead to the same result, the prudent course would be to follow existing law. That being said, the in rem issue was apparently addressed by both parties so it seems that it would be appropriate to decide this as an alternate grounds for affirmance.
In short, I would like to know, too.
Their write up vis a vis the in rem position does NOT indicate that the court thought that this would be “new law.”
At all.
Exactly. The lack of equivocation in the additional views is precisely why one would expect these additional views to be in the majority opinion as an alternate ground for affirmance. The only explanation I can think of is that this would have been the first Federal Circuit case to explicitly declare that an IPR is an in rem proceeding. Given that it was unnecessary to do so, it is plausible that a panel wold avoid this outcome. However, it still isn’t clear why the panel felt that it needed to say something other than “Having decided this case on the basis of St. Regis, we are not reaching the issue of…”.
They actually do lead into the “additional thoughts” with a “we do not reach…” see page two: “While the opinion for the court does not reach the issue,”
I meant why didn’t they stop at “We are not reaching the issue of…” Instead, they went on to say, “but had we reached the issue, we would have…”
Decent enough question, NS II.
See my follow-up above at post 6.
As I noted immediately following the St. Regis decision, the reasoning there was focused NOT on any particular level of immunity from “Sovereign,” and would apply to its same effect whether the “Sovereign” was either of “State” or the lesser “Tribal.”
Perhaps the “separation” here is more of a merely “what we already said” type of thing, and that prior “what we said,” did not include the “in rem” discussion.
IPRs, like reexaminations, have always been In Rem, because they are not adverse judgments just against a party, they are claim invlaidity decisions as to everyone.
Article III results of finding a patent invalid ALSO are decisions as to everyone….
Not sure this reaches the point that you may think it does…
Do the folks who think that the CAFC got this one wrong—those who think, in other words, that states should be able to escape the PTAB’s jurisdiction by asserting sovereign immunity—also think that the PTAB cannot declare an interference with a state-owned patent? I notice, for example, that no one in Eli Lilly & Co. v. Univ. of Wash., 334 F.3d 1264 (Fed.Cir.2003) seemed to think that UW could have escaped the proceeding on the basis of sovereignty.
Context matters.
Dr. Noonan kindly alerted me to a footnote in the opinion that addresses my point:
This footnote accentuates the point that I am making: if interferences are even closer to adjudication between private parties, then the argument sovereign immunity should apply is even stronger for interferences than it is for IPRs. And yet, precisely *none* of the voices currently advocating for sovereign immunity to apply in IPRs is on record as having held that sovereign immunity should have precluded interferences involving state-owned patents.
This rather serves to illustrate that the folks making the pro-sovereign immunity argument in the IPR context are arguing in bad faith. They do not actually care about the putative insult to the dignity of sovereigns—they just want *any* stick ready to hand with which to beat the IPR system. They just hate IPRs, and are content to throw any old nonsense at the wall—no matter how embarrassingly vacuous—in the hope that some of this slop will eventually stick.
They care as much about the rights of sovereignty, or the inviolability of jury trials, or the prohibition against uncompensated takings (etc.) as they care about a timber wolf’s fart in the Yukon. Their impassioned dilation on these themes is all just so much flatus vocis.
What is “bad faith” is your pretending that your asinine comments have not been replied to because “wah, he is too harsh with me.”
Thst is not true Greg. The goal is to expose the fundamental Constitutional violation of the executive branch deciding disputes between private parties. There is no question that is what the PTAB was designed to do and what it is doing. It is duplicitous of the government (USPTO/DOJ) and these judges to switch positions and say otherwise here and in Oil States.
The goal is to expose the fundamental Constitutional violation of the executive branch deciding disputes between private parties.
Literally no one thought that it was a “Constitutional violation” for the PTO to administer interferences pre-AIA, and yet what is an interference but an instance of the “executive branch deciding disputes between private parties”? The whole argument is bad faith, and the proof of its bad faith nature is evident in the fact that when the SCotUS ruled against Oil States’ challenge, the contingent who had back Oil States’ position did not say “well, I guess that we were wrong about our Constitutional law argument,” but rather went chasing immediately after the next (i.e., St. Regis Mohawks) loony-tunes theory that was going to take down the IPR system.
None of this is about principled legal analysis. 100% is about motivated reasoning toward a commercially convenient conclusion.