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Venable LLP

Spotlight On: Biosimilar Litigations - May 2025

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Biosimilar Litigations include litigations relating to biosimilar/follow-on products of CDER-listed reference products. Litigations between biosimilar applicants/manufacturers and reference product sponsors as well as...more

Haug Partners LLP

“Shall Be the Property” Is Insufficient to Automatically Assign Title to an Invention in a Contract

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On August 2, 2021, in Omni MedSci, Inc. v. Apple Inc., No. 20-1715, slip op. (Fed. Cir. Aug. 2, 2021), a Federal Circuit panel decision, with a dissent, upheld the district court’s denial of Apple Inc.’s (“Apple”) motion to...more

Sunstein LLP

When a State University is a Reluctant Plaintiff, Can Its Licensee Sue Anyway?

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Companies seeking to license patents from state universities face a special risk--sovereign immunity. The 11th Amendment to the US Constitution deprives federal courts of jurisdiction to hear complaints brought by a citizen...more

Farella Braun + Martel LLP

Monetizing University Patent Portfolios During the Economic Downturn

Colleges and universities may be leaving money on the table with under-utilized patent portfolios. The time is right, as the law has shifted in favor of patent owners, both in inter partes review litigation before the Patent...more

McDermott Will & Emery

Don’t Mess with Texas? State Sovereignty Doesn’t Make Plaintiff Immune to Venue Transfer

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The US Court of Appeals for the Federal Circuit rejected the arguments of a state university in support of sovereign immunity and affirmed the district court’s decision to transfer the case to the District of Delaware. Board...more

Troutman Pepper Locke

Pepper Hamilton Higher Education "In Brief" Webinar Series: Intellectual Property Basics - What Every Higher Education...

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With a constantly evolving legal landscape, colleges, universities and independent schools encounter a vast spectrum of new topics on any given day. Pepper Hamilton's Higher Education Practice Group has created its "In Brief"...more

Knobbe Martens

Federal Circuit Review - September 2019

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State Sovereignty Principles Do Not Allow a State to Bring a Patent Infringement Suit in an Improper Venue - In Board of Regents v. Boston Scientific Corp., Appeal No. 2018-1700, the Federal Circuit ruled that the patent...more

Knobbe Martens

Federal Circuit Review - August 2019

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Mere Potential for Future Appeal Does Not Prevent Triggering Estoppel of Inter Partes Reexamination When Party Fails to Seek Relief in the First Instance - In Virnetx Inc. v. Apple Inc., Appeal Nos. 2017-1591, -1592,...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Closes Another AIA Loophole

The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole. The case, Regents of the University of Minnesota v....more

McCarter & English, LLP

Sovereign Immunity Does Not Shield State-Owned Patents From Inter Partes Review

States and their agencies, particularly state universities, are often parties to patent infringement litigation in federal courts. An increasingly common defense to infringement allegations is to ask the Patent Office to...more

Knobbe Martens

Federal Circuit Review - March 2019

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Federal Circuit Determines Time-Barred Petitioner Joined to an IPR Has Appellate Standing - In Mylan Pharmaceuticals Inc. v. Research Corporation Tech., Appeal Nos. 2017-2088, -2089, -2091, the Federal Circuit held that a...more

Knobbe Martens

PTAB Finds that Suing in Federal Court Waives Sovereign Immunity

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On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court. ...more

Tarter Krinsky & Drogin LLP

State University's Filing Of Patent Infringement Action Waives Sovereign Immunity To IPR Proceedings

The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the...more

Morrison & Foerster LLP

PTAB Deals A Crippling Blow To Sovereign Immunity

Patent Trial and Appeal Board Chief Judge David Ruschke recently dealt sovereign immunity a crippling blow. Although Judge Ruschke confirmed that Eleventh Amendment immunity does apply to sovereign actors, he held that when a...more

Jones Day

PTAB Recognizes Limits to Eleventh Amendment Sovereign Immunity

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In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more

Mintz - Intellectual Property Viewpoints

Assertion of Patents Results in Loss of Sovereign Immunity for Public Universities

On December 19, 2017, an expanded panel of the Patent Trial and Appeal Board (PTAB) ruled that the state of Minnesota waived its Eleventh Amendment immunity to challenges to patent validity by inter partes review (IPR) by...more

Goodwin

PTAB Finds Sovereign Immunity in IPR Waived by Filing Infringement Action in Federal Court

Goodwin on

Yesterday, in Ericsson Inc. v. Regents of the University of Minnesota, an expanded 7-judge PTAB panel ruled that a patent owner waives a claim to sovereign immunity in an IPR “by filing an action in federal court alleging...more

Miles & Stockbridge P.C.

Uptick in University Enforcement of Intellectual Property an Indication of Stricter Enforcement Policy or a Passing Trend?

Universities have traditionally been reluctant to enforce their intellectual property (IP) against third parties. There are many reasons for this position, including adverse publicity associated with such suits, the time...more

Jones Day

Eleventh Amendment Revisited – Board Again Finds Sovereign Immunity Applies to PTAB

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Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed...more

Womble Bond Dickinson

State Universities Gain Immunity from IPRs

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State Universities Gain Immunity from IPRs - Today, many universities own extensive patent portfolios that are managed by sophisticated tech transfer offices. Universities obtain these patents for many reasons, not the...more

Troutman Pepper Locke

State Universities Rejoice: PTAB Recognizes Sovereign Immunity Defense

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In Covidien LP v. University of Florida Research Foundation Inc., the Patent Trial and Appeal Board (the “Board”) upheld a defense of sovereign immunity asserted by the University of Florida Research Foundation (the...more

BakerHostetler

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

BakerHostetler on

Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner...more

Cooley LLP

Alert: PTAB Rules That Patents Owned by State Entities Cannot Be Challenged Without Consent

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Last week, the Patent Trial and Appeal Board (PTAB) dismissed petitions for inter partes review (IPR) of a patent assigned to the University of Florida Research Foundation (UFRF) based on sovereign immunity, Covidien LP v....more

Foley & Lardner LLP

Sovereign Immunity of State Universities: Can It Shield Them from AIA Patent Challenges?

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In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of Florida (“UF”) patent...more

Knobbe Martens

University of Minnesota Sues Gilead Sciences for Infringement of Hepatitis C Patents

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On August 29, 2016, the Regents of the University of Minnesota (“the University”) filed suit against Gilead Sciences (“Gilead”) for patent infringement in the District Court for the District of Minnesota. According to the...more

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