Brief Amici Curiae of Intellectual Property Professors in Support of Appellees, Regents of the University of Minnesota v. LSI Corp., Nos. 2018-1559, -1560, -1561, -1562, -1563, -1564, -1565 (Fed. Cir. Aug. 7, 2018)

31 Pages Posted: 28 Aug 2018

See all articles by Tejas N. Narechania

Tejas N. Narechania

University of California, Berkeley, School of Law

Mark A. Lemley

Stanford Law School

Date Written: August 7, 2018

Abstract

The U.S. Patent and Trademark Office may, in inter partes review, reconsider its decision to grant a state’s patent application without implicating that state’s sovereign immunity. State sovereign immunity limits the federal government’s “judicial power” under Article III of the Constitution. But the Patent Office does not exercise such Article III power when it reconsiders a decision to grant a patent. State sovereign immunity also limits the ability of private complainants to hale a state into a federal proceeding that closely resembles an ordinary lawsuit. But private complainants do not institute inter partes review: Rather, it is the Patent Office that decides whether to institute review. And inter partes review differs from ordinary litigation in several other relevant respects. Inter partes review and federal litigation differ because their primary purposes differ. Patent litigation typically resolves cases or controversies among private disputants. But inter partes review is instead primarily designed to allow the Patent Office “a second look at an earlier administrative grant of a patent” — one that ensures “that patent monopolies are kept within their legitimate scope.” The Supreme Court has repeatedly affirmed the government’s continuing jurisdiction over such federal grants — including those conferred on the states — to ensure that they remain within lawful bounds. So too with state-owned patents and inter partes review. Indeed, the government’s power to check the scope of such patents helps to assure an ongoing balance between public and private patentees.

Keywords: patent, inter partes review, sovereign immunity, state sovereign immunity, PTAB, Federal Circuit, PTO, patent office, IPR

Suggested Citation

Narechania, Tejas N. and Lemley, Mark A., Brief Amici Curiae of Intellectual Property Professors in Support of Appellees, Regents of the University of Minnesota v. LSI Corp., Nos. 2018-1559, -1560, -1561, -1562, -1563, -1564, -1565 (Fed. Cir. Aug. 7, 2018) (August 7, 2018). Stanford Public Law Working Paper; UC Berkeley Public Law Research Paper. Available at SSRN: https://ssrn.com/abstract=3233790 or http://dx.doi.org/10.2139/ssrn.3233790

Tejas N. Narechania (Contact Author)

University of California, Berkeley, School of Law ( email )

215 Boalt Hall
Berkeley, CA 94720-7200
United States

Mark A. Lemley

Stanford Law School ( email )

559 Nathan Abbott Way
Stanford, CA 94305-8610
United States

Register to save articles to
your library

Register

Paper statistics

Downloads
39
Abstract Views
341
PlumX Metrics
!

Under construction: SSRN citations will be offline until July when we will launch a brand new and improved citations service, check here for more details.

For more information