The University of Florida picked up some big wins in the NCAA Men’s Basketball Tournament, moving into the tourney’s Sweet Sixteen. But the Gators also earned a big patent dispute victory recently in Covidien LP v. University of Florida Res. Found. Inc.—a win that stands to benefit other state research universities.
The Patent Trial and Appeal Board ruled in the Covidien case that the University of Florida Research Foundation is a branch of the State of Florida and, as such, is entitled to assert a sovereign immunity defense (under the Eleventh Amendment to the U.S. Constitution) to inter partes review challenges. As a result, the Patent Trial and Appeal Board dismissed Covidien’s claims of patents owned by the University of Florida Research Foundation.
Womble Carlyle Patent attorney Chris Humphrey believes the implications of the PTAB’s decision go far beyond this case. He said the ruling gives potential licensees added confidence that when they license a patent from a state university, that patent won’t be invalidated.
“We’ve never had a squarely addressed decision on why sovereign immunity applies to these new post-grant proceedings that we have available to us now, things like the IPR procedure that was at issue in this case,” Humphrey tells Technology Transfer Tactics in the March 2017 issue (subscription required).
He explains that licensees with an exclusive license agreement are in a particularly strong position. Such licensees now can assert these patents in district court litigation without having to defend against an IPR challenge.
“That has been a very common response and now it seems unlikely that would be allowed,” Humphrey tells Technology Transfer Tactics. “Then the licensee is in great shape, forcing the alleged infringer to fight the battle in district court rather than before the PTAB.”
In this related article, Humphrey and Womble Carlyle colleagues Will Hubbard and John Morrow explore the Covidien decision in greater detail, and address how state universities can best employ sovereign immunity to protect their patent portfolio.
Chris Humphrey concentrates on patent prosecution, particularly domestic and foreign prosecution of mechanical, chemical and biotechnology patents, with an emphasis on life science related technologies. Humphrey also provides counseling on all aspects of intellectual property, including patent infringement and validity. He practices in Womble Carlyle’s Raleigh, N.C. office.