Rubén Muñoz Quoted in Technology Transfer Tactics on PTAB’s Sovereign Immunity Ruling

Technology Transfer Tactics has quoted Akin Gump intellectual property partner Rubén Muñoz in “Latest PTAB decision weakens sovereign immunity defense,” an article reporting on a recent decision by the Patent Trial and Appeal Board (PTAB). The decision pertains to the issue of state universities using sovereign immunity to defend against inter partes review (IPR).

The PTAB, as the article reports, dismissed a recent sovereign immunity challenge in a case involving the Regents of the University of Minnesota. Muñoz said until and unless the decision is overturned, it’s bad news for state universities. In clear cases of infringement, he said, universities have been willing to sue in district court to protect their patents because they are generally on good footing there. In this instance, however, the decision means district court litigation makes you more susceptible to PTAB challenges, where patent holders are not on such solid ground, giving “more leverage to potential infringers.”

Muñoz said universities that could void sovereign immunity with litigation should look more toward business solutions outside the courtroom. The university had more leverage before this decision, he said, but now a threat to sue in district court might be met with a threat to take the patent to PTAB for an IPR.

“This could have a direct impact on how much a university asks for in negotiating a license, because if the other party says no the university can’t be so quick to say, ‘okay then, we’ll sue you,’” Muñoz explained. “Patents are only as good as how much revenue they bring in, and if you can’t assert them to enforce that exclusionary right, what good are they? Universities won’t be able to be as aggressive with patent infringers, so they will have to be more flexible with business solutions, which often will mean taking less for the license.”