Any patent litigant unwilling to acquiesce to an adverse judgment from the Patent Trial and Appeal Board (PTAB) can appeal to the Federal Circuit. 28 U.S. Code § 141. But the right to appeal is not the same as the wisdom of filing an appeal, as illustrated by the decision of the Federal Circuit last week in Board of Regents of the University of Texas System v. Baylor College of Medicine.

The case arose over an inter partes review petitions filed by Baylor against the University of Texas Board of Regents (UT). The Board filed motions to dismiss both petitions, asserting that as an arm of the state, sovereign immunity precluded being subjected to the proceedings. The PTAB denied the motions, citing the Federal Circuit's determination that state sovereign immunity did not prevent a petitioner from instituting an IPR against a state or arm of the state, in Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 908 (2020). As set out in a per curiam opinion by the Court:

As UT recognizes, we held in University of Minnesota that "sovereign immunity does not apply to IPR proceedings when the patent owner is a state." . . . UT contends, however, that "the University of Minnesota panel applied the wrong standards and reached the wrong conclusion when it held" that state sovereign immunity does not apply to IPR proceedings. . . . But, as UT also recognizes, "[t]his panel is bound by the University of Minnesota decision."

Agreeing it was so bound, the panel affirmed the PTAB's denial of UT's motion.

It can only be surmised that UT is now preparing a certiorari petition of its own to test whether "the University of Minnesota panel applied the wrong standards and reached the wrong conclusion" in its decision denying sovereign immunity from PTAB proceedings for state universities. On the other hand, perhaps UT has a licensee with a license provision mandating an appeal on any matter involving a licensed patent. More unlikely is the possibility that being UT they believed they could be more persuasive than MN in making their case. But not having been the beneficiary of a Christmas miracle, the IPR proceeding should proceed against UT before the PTAB in due course.

Board of Regents of the University of Texas System v. Baylor College of Medicine (Fed. Cir. 2020)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges Lourie and Stoll
Per curiam