Patent Trial and Appeal Board Chief Judge David Ruschke recently dealt sovereign immunity a crippling blow. Although Judge Ruschke confirmed that Eleventh Amendment immunity does apply to sovereign actors, he held that when a sovereign actor files a patent infringement lawsuit, immunity is waived. Given that 80 percent of inter partes reviews involve patents in parallel litigation, Judge Ruschke’s order markedly blunts sovereign immunity strategies.

Judge Ruschke’s opinion was given in an order denying a motion to dismiss for sovereign immunity. This article (1) describes the background of the parties and their arguments for and against the motion to dismiss, (2) analyzes the order denying the motion to dismiss, and (3) explores the future of sovereign immunity in the Patent Trial and Appeal Board (PTAB).

Originally published in Law 360 on January 3, 2018.