The University of Florida earned a victory in a patent dispute that could prove to be a landmark decision for other state research universities.
Womble Carlyle Patent attorney Chris Humphrey discussed the implications of Covidien LP v. University of Florida Res. Found. Inc. with Technology Transfer Tactics. In the case, the Patent Trial and Appeal Board found that the University of Florida's Research Foundation is a branch of the State of Florida and, thus, entitled to assert a sovereign immunity defense to inter partes review challenges.
This case prompted two other schools to use sovereign immunity as a defense to patent challenges. The Tech Transfer Central article examines all three cases, including key differences between them. For example, is the sovereign immunity defense waived if a university participates in the inter partes review proceedings? Humphrey notes this is a key distinction between the Florida case and a similar case involving University of Maryland in Baltimore.
"It would be prudent for any university considering use of the defense to raise it at the earliest opportunity, which would be before even making the initial substantive response to an IPR petition, as in the case of the University of Florida," Humphrey tells Technology Transfer Tactics.
Click here to read "Sovereign immunity growing as inter partes defense, effect on licensing terms unclear" in Technology Transfer Tactics.
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