University of Maryland patent immune to IPRs, says PTAB

A heart valve patent owned by the University of Maryland, Baltimore, is immune to inter partes review (IPR), according to the Patent Trial and Appeal Board (PTAB).

In the decision, handed down on Tuesday, May 23, the PTAB said that the university had sufficiently demonstrated that it may raise Eleventh Amendment immunity as a defence in an IPR proceeding, initiated by medical device company NeoChord.

The amendment deals with each state’s sovereign immunity.

In November 2015, NeoChord filed a petition requesting IPR of US patent number 7,635,386, which belongs to the university and is licensed by Harpoon Medical, a development stage medical device company.

The ‘386 patent covers methods and devices for performing cardiac valve repair.

In May 2016, the PTAB instituted IPR on the asserted ground of unpatentability and oral argument took place in January this year.

After the oral argument, the university filed a motion to dismiss the case.

This was later opposed by NeoChord on several grounds, one of which claimed that the university had waived its defence of sovereign immunity by licensing its patent to Harpoon Medical.

The university argued that it was entitled to assert sovereign immunity as a defence because it is an “arm of the state of Maryland”, and that the ‘386 patent is “property of the state”.

In the decision, the PTAB granted the university’s motion to dismiss and terminated the IPR.

“We conclude that the university has shown sufficiently that it may raise Eleventh Amendment immunity as a defence in this IPR proceeding,” said the court, adding that the university had not waived its defence through its licensing agreement.

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