Regents of the University of Minnesota. v. LSI Corp., No. 18-1559 (Fed. Cir. 2019)
Annotate this CaseUniversity of Minnesota (UMN), an arm of the state of Minnesota, pursues patent protection for inventions resulting from its research and is the owner of the patents at issue. LSI designs and supplies semiconductors; it allegedly infringed UMN’s 601 patent, which claims particular types of “read channel” chips. Ericsson, a telecommunications company. Its customers’ use of Ericsson’s products was alleged to infringe four UMN patents that claim technology used for 4G LTE networks. UMN sued LSI and separately sued Ericsson’s customers. Ericsson intervened in the customer suits. After the commencement of the infringement suits, LSI and Ericsson separately petitioned the Patent Trial and Appeal Board for inter partes review, seeking a determination of unpatentability of the challenged claims on grounds of anticipation and obviousness. The Board declined to dismiss the petitions, rejecting an argument that states enjoy sovereign immunity in IPR proceedings. The Federal Circuit affirmed. IPR represents the sovereign’s reconsideration of the initial patent grant, and the differences between state and tribal sovereign immunity do not warrant a different result than in circuit precedent concerning tribal sovereign immunity: State sovereign immunity does not apply to IPR proceedings.
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