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« Conference & CLE Calendar | Main | Senate Subcommittee on Intellectual Property Holds Hearings on Proposed Revisions to 35 U.S.C. § 101 »

June 16, 2019


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 BPAI’s jurisdiction on the basis of sovereignty.

There was a footnote regarding interferences in the decision:

We did not hold that interference proceedings were barred by state sovereign immunity in Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1382 (Fed. Cir. 2007), nor do we decide that issue here. We note that interference proceedings may more closely resemble agency adjudication between private parties as compared to IPR proceedings.

Perhaps this distinction is enough, but we have no case law on the question.

The distinction is certainly enough for the point that I am making: if interferences are even closer to adjudication between private parties, then the argument that 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 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.

At least three other times it has been remarked back to the same comment from Mr. DeLassus that context matters.

Perhaps he is looking for a different answer.

I truly doubt the veracity of a statement like:"

This rather serves to illustrate that the folks making the pro-sovereign immunity argument are arguing in bad faith."

You want an unrelated context on different fact patterns to be inserted on matters that simply are different. The fact that you yourself can distinguish the matter shows that a rebuttal can easily so do so, and thus, it would NOT be worthy to pursue that line of thinking.

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