Appeals from the United States Patent and Trademark Office,
Patent Trial and Appeal Board in Nos. IPR2017-01068,
IPR2017-01186, IPR2017-01197, IPR2017-01200, IPR2017-01213,
Michael A. Albert, Wolf, Greenfield & Sacks, PC, Boston,
MA, argued for appellant. Also represented by Stuart Duncan
Smith, Richard Giunta, Gerald B. Hrycyszyn, Charles T.
Kristopher L. Reed, Kilpatrick Townsend & Stockton LLP,
Denver, CO, argued for all appellees. Appellees LSI
Corporation, Avago Technologies U.S. Inc. also represented by
Edward John Mayle, David E. Sipiora.
S. Davies, Orrick, Herrington & Sutcliffe LLP,
Washington, DC, for appellees Ericsson Inc.,
Telefonaktie-bolaget LM Ericsson. Also represented by Easha
Anand, Will Melehani, San Francisco, CA; Edmund Hirschfeld,
New York, NY; Debra Janece McComas, Haynes & Boone, LLP,
Dallas, TX; J. Andrew Lowes, Richardson, TX.
Mortara, Bartlit Beck LLP, Chicago, IL, argued for
intervenor. Also represented by Nevin M. Gewertz; Meg E.
Fasulo, Denver, CO.
Courtney Dixon, Appellate Staff, Civil Division, United
States Department of Justice, Washington, DC, argued for
amicus curiae United States. Also represented by Mark R.
Freeman, Alisa Beth Klein, Mark B. Stern, Joseph H. Hunt.
Stephen Johnson, Vinson & Elkins LLP, Washington, DC, for
amicus curiae Association of Public and Land-grant
Universities. Also represented by John Patrick Elwood.
Michael W. Shore, Shore Chan DePumpo LLP, Dallas, TX, for
amici curiae STC.UNM, The Board of Trustees of Purdue
University, The Board of Trustees of Indiana University. Also
represented by Alfonso Chan, Russell J. DePalma; Andrew M.
Howard, Howard & Spaniol, PLLC, Dallas, TX.
Molnar Fisher, Solicitor General, Indiana Office of Attorney
General, Indianapolis, IN, for amici cu-riae State of
Indiana, State of Texas, State of Hawaii, State of Illinois,
State of Massachusetts, State of Michigan, State of
Minnesota, State of Mississippi, State of New Jersey, State
of Ohio, State of Rhode Island, State of South Carolina,
State of Utah, State of Virginia. Also represented by Jason
R. LaFond, Office of the Attorney General of Texas, Austin,
Thorne, Kellogg, Hansen, Todd, Figel & Frederick,
P.L.L.C., Washington, DC, for amici curiae Computer &
Communications Industry Association, High Tech Inventors
Alliance, The Internet Association, L Brands, Inc., Newegg
Inc., Red Hat, Inc., SAP America, Inc., SAS Institute Inc.,
The Software & Information Industry Association, Symmetry
LLC, Xilinx. Also represented by Daniel Simon Guarnera,
Ariela M. Migdal, Gregory G. Rapawy.
Thayer, Washington, DC, for amicus curiae ACT The App
Anna-Rose Mathieson, California Appellate Law Group, San
Francisco, CA, for amicus curiae America's Health
A. Lemley, Durie Tangri LLP, San Francisco, CA, for amici
curiae Jeremy W. Bock, Michael A. Carrier, Andrew Chin, Brian
L. Frye, Shubha Ghosh, Yaniv Heled, Mark A. Lemley, Yvette
Joy Liebesman, Brian J. Love, Susan Barbieri Montgomery,
Tejas N. Narechania, Tyler T. Ochoa, Arti K. Rai.
Dyk, Wallach, and Hughes, Circuit Judges.
Opinion for the court by Circuit Judge Dyk, in which Wallach
and Hughes, Circuit Judges, join.
Additional views by Circuit Judges Dyk, Wallach, and Hughes.
Regents of the University of Minnesota ("UMN")
appeals from decisions by the United States Patent and
Trademark Office ("USPTO") Patent Trial and Appeal
Board ("Board") declining to dismiss petitions for
inter partes review ("IPR"). The petitions were
alleged to be improper because states supposedly enjoy
sovereign immunity in IPR proceedings. We conclude that state
sovereign immunity does not apply to these proceedings, and
therefore we affirm.
University of Minnesota is an arm of the state of Minnesota
and is one of the largest public research institutions in the
country. It pursues patent protection for inventions
resulting from its research and is the owner of U.S. Patent
Nos. 5, 859, 601 ('601 patent), 7, 251, 768 ('768
patent), 7, 292, 647 (RE45, 230 patent), 8, 588, 317
('317 patent), 8, 718, 185 ('185 patent), and 8, 774,
309 ('309 patent). The patents were assigned to UMN at
the outset of prosecution, and they were issued between
January 12, 1999, and July 8, 2014. These patents cover two
LSI Corp. designs and supplies semiconductors; it is alleged
to infringe UMN's '601 patent, which claims
particular types of "read channel" chips. Appellee
Ericsson Inc. is a telecommunications company. Its
customers' use of Ericsson's products was alleged to
infringe UMN's '768, RE45, 230, '317, '185,
and '309 patents. These patents claim technology used for
4G LTE networks.
alleging infringement of these patents, sued LSI and
separately sued Ericsson's customers in district court.
Ericsson intervened in the customer suits.
the commencement of the suits for patent infringement, LSI
and Ericsson separately petitioned for IPR seeking a
determination of unpatentability of the challenged claims on
grounds of anticipation and obviousness. See LSI Corp. v.
Regents of the Univ. of Minn., No. IPR2017-01068, Paper
1 (P.T.A.B. Mar. 10, 2017); Ericsson Inc. v. Regents of
the Univ. of Minn., Nos. IPR2017-01186, Paper 1
(P.T.A.B. Mar. 28, 2017); IPR2017-01197, Paper 1 (P.T.A.B.
Mar. 29, 2017); IPR2017-01200, Paper 1 (P.T.A.B. Mar. 30,
2017); IPR2017-01213, Paper 1 (P.T.A.B. Mar. 30, 2017);
IPR2017-01214, Paper 1 (P.T.A.B. Mar. 30, 2017);
IPR2017-01219, Paper 1 (P.T.A.B. Mar. 30, 2017).
the petitions for IPR were filed, and before the USPTO
decided whether to institute IPR, UMN filed a motion to
dismiss in each proceeding based on state sovereign immunity.
The USPTO convened an expanded panel, consisting of three
administrative patent judges as well as the Chief Judge,
Deputy Chief Judge, and two Vice Chief Judges. In each
proceeding, the Board concluded that state sovereign immunity
applied to IPR proceedings but that UMN waived its immunity
by filing suit against petitioners in district
court. A concurrence to each of the Board
decisions concluded that sovereign immunity was not
implicated in part because "[a]t its core, inter
partes review is a circumscribed in rem
proceeding, in which the Patent Office exercises jurisdiction
over the patent challenged, rather than the parties
named." J.A. 13; J.A. 33.
appealed the Board's decisions, and the cases have been
consolidated on appeal. Gilead Sciences, Inc., facing the
same issue for its own IPR petitions, sought leave to
intervene, which was granted. Regents of the Univ. of
Minn. v. LSI Corp., Appeal No. 2018-1559 (Fed. Cir. Apr.
19, 2018), ECF No. 35. We have jurisdiction under 28 U.S.C.
this appeal was pending, this court decided Saint Regis
Mohawk Tribe v. Mylan Pharmaceuticals Inc., 896 F.3d
1322 (Fed. Cir. 2018), holding that IPR proceedings were not
barred by tribal sovereign immunity. A petition for
certiorari was filed in that case, and the petition was
denied, 139 S.Ct. 1547.
Post-Issuance Administrative Proceedings
the issue of state sovereign immunity requires a detailed
understanding of the history of IPR proceedings and the
reasons that Congress created such proceedings.
USPTO is an agency within the Department of Commerce and is
"responsible for the granting and issuing of
patents." 35 U.S.C. §§ 1, 2. Almost every year
the number of submitted patent applications has increased,
from approximately 100, 000 in 1980 to nearly 650, 000 in
2018. U.S. Patent & Trademark Office, U.S. Patent
Statistics, Calendar Years 1963-2015,
offices/ac/ido/oeip/taf/us_stat.pdf; U.S. Patent &
Trademark Office, FY 2018 Performance &
Accountability Report 179 tbl.2 (2018) [hereinafter
FY2 2018 P&A Rpt.],
USPTOFY18PAR.pdf. This has led to a steady backlog of
applications, and the USPTO now issues approximately 300, 000
patents each year. FY 2018 P&A Rpt., at 180
tbl.3; id. at 181 tbl.6. To perform its duty to
examine and issue patents, the USPTO relies on a corps of
approximately 8, 000 patent examiners who are charged with
determining whether an applicant is entitled to a patent for
a claimed invention. Id. at 205 tbl.28. Although
essential to the examination process, the agency struggles to
attract and retain examiners able to perform sufficiently
thorough prior art searches and make a patentability
the large number of patent applications, patent examiners
only receive roughly 22 hours to review each application,
which 70% of examiners have reported as insufficient time.
U.S. Gov't Accountability Office, GAO-16-490,
Patent Office Should Define Quality, Reassess Incentives,
and Improve Clarity 10, 25-26 (2016) [hereinafter
Quality, Incentives, & Clarity]. In those 22
hours, examiners must ensure not only that technical
formalities are met, but also that the statutory requirements
for patentability, such as novelty and non-obviousness, are
met. For this determination, the USPTO relies on the
examiner's prior art searching, aided by prior art the
many years, until 2000, there was virtually no public input
in the initial examination process since patent applications
were not published. Beginning in 2000, patent applications
have been typically published 18 months after the earliest
claimed filing date, see 35 U.S.C. § 122; 37
C.F.R. § 1.211, and Congress has provided for some
limited public participation during the initial examination,
see 35 U.S.C. §§ 122(c), (e); H.R. Rep.
No. 112-98, pt. I, at 48-49 (2011); 37 C.F.R. §§
1.290-91. 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.
not a new phenomenon. In 1980, Congress was concerned that
this was "a situation where a limited staff is trying to
cope with a constantly increasing workload and is under
pressure to make speedy determinations on whether or not to
grant patents." S. Rep. No. 96-617, at 8 (1980); see
also Patent Reexamination: Hearing on S. 1679 Before the
Comm. on the Judiciary, 96th Cong. 3 (1980) (statement
of Sen. Bayh) (characterizing the USPTO as "an
understaffed and overworked office trying to handle an ever
increasing workload"); Industrial Innovation and
Patent and Copyright Law Amendments: Hearing on H.R. 6033,
H.R. 6934, H.R. 3806, H.R. 2414 Before the Sub-comm. on
Courts, Civil Liberties & the Admin. of Justice of the H.
Comm. on the Judiciary, 96th Cong. 580-81 (1981)
(statement of Sidney A. Diamond, Commissioner of Patents and
Trademarks). Congress' solution was to provide for
reexamination of the original patent grant.
general, until 1980 the only way the original patent grant
could be challenged was in patent litigation in district
court by a declaratory judgment action or as a defense in a
patent infringement action, both of which could be extremely
expensive and both of which generally were not available
until a claim of infringement was asserted by the patent
owner. See Patlex Corp. v. Mossinghoff, 758 F.2d
594, 601-02 (Fed. Cir. 1985); S. Rep. 96-617, at 9-10
(testimony of Sidney A. Diamond, Commissioner of Patents and
Trademarks). In this respect, the United States'
patent system diverged from its English origins, which had
for centuries recognized the executive's ability to
reconsider a prior patent grant. In 18th-century England,
parties could challenge the validity of a patent by
petitioning the government via the Privy Council to revoke
the public franchise. Oil States Energy Servs., LLC v.
Green's Energy Grp., LLC, 138 S.Ct. 1365, 1376-78
(2018). "The Privy Council was a prominent feature of