Since Congress’s enactment of the Leahy-Smith America Invents Act, the power and influence of the Patent Trial and Appeal Board as an adjunct to (or substitute for) patent litigation has steadily grown. And just as the PTAB and district courts both face difficult questions of substantive patent law, many of the difficult jurisdictional and procedural issues that have presented in district court litigation have found counterparts in the PTAB, too. One category of such challenges regards the power of the PTAB to hear claims involving other governmental entities. Are the states immune from the power of the PTAB?

I conclude that they are not. State sovereign immunity jurisprudence suggests at least three reasons why this is so. First, state sovereign immunity is primarily a limit on Article III's federal judicial power. But the PTAB does not exercise such power. Second, the Supreme Court has explained that the Eleventh Amendment’s penumbras may also shield states from nonjudicial proceedings that closely resemble an ordinary lawsuit. But inter partes review differs from ordinary litigation in several significant, relevant respects. And, third, these distinctions suggest a more novel basis for subjecting states to the PTAB’s jurisdiction. The Supreme Court has repeatedly affirmed the federal government’s power to sue the states to protect federal interests. And the federal government has a clear, compelling interest in ensuring that public rights, such as patents, are kept within their legitimate scope. Hence, because inter partes review is instituted by the Director of the Patent Office to cancel patents that may have been granted in violation of federal patent law, the Patent Office may review state-owned patents, state immunity notwithstanding, no less than it can review private patents. Such review helps assure balance between public and private patentees.