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)

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.