UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNERS’ REPLY IN SUPPORT OF MOTION TO DISMISS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNERS’ REPLY IN SUPPORT OF MOTION TO DISMISS
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`IPR IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Petitioner’s suggestion that the University of Minnesota and its Regents are
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`“separate and distinct” entities for immunity purposes (Opp. 3) is meritless. The
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`University is a corporation which was incorporated by the Minnesota legislature in
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`1851. See Minn. Terr. Laws, ch. 3 (1851); Regents of Univ. of Minn. v. Lord, 257
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`N.W.2d 796, 799 n.1 (Minn. 1977) (reproducing the University’s Charter); see also
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`Ex. 2007.1 The University’s Charter is “perpetuated” in the state constitution. See
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`Minn. Const., art. XIII, § 3. Section 4 of the Charter vests “[t]he government of
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`th[e] University . . . in a Board of twelve Regents.” “The Board of Regents is the
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`governing body of the [University].” Star Tribune Co. v. Univ. of Minn. Bd. of
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`Regents, 683 N.W.2d 274, 280 (Minn. 2004) (citing § 4 of the Charter). In light of
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`this organizational structure, which was laid out in the Motion to Dismiss (Mtn. 9-
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`10) and which is not disputed by Petitioner, a proceeding brought against the
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`Regents is plainly a proceeding against the University itself.
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`Miller v. Chou, 257 N.W.2d 277 (Minn. 1977), the case cited by Petitioner
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`as support for the suggestion that the University and the Regents should be treated
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`1 Petitioner objects to Exhibit 2007, a copy of the Charter, but the Charter is a
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`statute. For the Board’s convenience, Patent Owners submitted a copy instead of
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`simply citing the statute. For the same reason, Patent Owners submitted copies of
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`relevant assignments records (Exhibits 2003-2006) instead of simply providing
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`reel/frame numbers.
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`1
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`IPR IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`as distinct entities, in fact directly refutes that suggestion. In Miller, the Supreme
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`Court of Minnesota noted that by “perpetuat[ing] unto [the] university” “all the
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`rights, immunities, franchises and endowments” previously conferred upon it, the
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`state constitution perpetuated the Regents’ sovereign immunity against being sued
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`in state court. 257 N.W.2d at 278, 280. Thus, far from treating them as distinct
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`entities, Miller recognized that the University’s “rights, immunities, franchises and
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`endowments” necessarily included the Board of Regents’ right to assert immunity
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`when a complaint is filed against it in state court. In doing so, Miller followed
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`State ex rel. Univ. of Minn. v. Chase, 220 N.W. 951, 953-54 (Minn. 1928), which
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`held that the University’s constitutionally-protected “rights, immunities, franchises
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`and endowments” included the Regents’ authority, conferred unto them by the
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`Charter, to govern the University without interference. Chase explained:
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`That a corporation was created by the act of 1851 and “perpetuated”
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`by the constitution with “all the rights, immunities, franchises and
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`endowments” which it then possessed is plain. Of that corporation the
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`regents were both the sole members and the governing board. They
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`were the corporation in which were perpetuated the things covered by
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`the constitutional confirmation.
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`Id. at 954 (emphasis added).
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`Courts thus do not distinguish between the University and the Regents in
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`Eleventh Amendment cases, as seen in the cases cited in the Motion to Dismiss.
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`Raygor v. Regents of the Univ. of Minn., 534 U.S. 533, 535-36 (2002) (treating a
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`2
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`IPR IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`suit against the Regents as a suit against the University, “an arm of the State of
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`Minnesota”); Richmond v. Bd. of Regents of Univ. of Minn., 957 F.2d 595, 596 (8th
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`Cir. 1992) (treating a suit against the Regents as a “suit against the University of
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`Minnesota”); Issaenko v. Univ. of Minn., 57 F. Supp. 3d 985, 993 (D. Minn. 2014)
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`(referring to the University and the Regents as “collectively, ‘the University’”); see
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`also Humenansky v. Regents of the Univ. of Minn., 152 F.3d 822, 823 (8th Cir.
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`1998) (treating a suit against the Regents as a suit against the University, “an
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`instrumentality of the state”). These cases plainly recognize that a suit brought
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`against the Regents is a suit against the University itself,2 regardless of how the
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`complaint is styled. Petitioner’s suggestion that those cases do not indicate that the
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`Board of Regents is an arm of the state (Opp. 6.) is simply incorrect.
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`This is a proceeding against an arm of the State of Minnesota entitled to
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`share in the State’s immunity. The Board should grant the Motion to Dismiss.
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`2 Petitioner does not dispute that the University is immune, apart from speculating
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`that a sovereign could lose immunity if it were “being indemnified by a private
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`entity.” (Opp. 6.) The decision cited by Petitioner as support for this suggestion,
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`Doe v. Lawrence Livermore Nat’l Lab., 65 F. 3d 771 (9th Cir. 1995), was reversed
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`on direct review by the U.S. Supreme Court, see Regents of the Univ. of Cal. v.
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`Doe, 519 U.S. 425 (1997), though Petitioner fails to acknowledge this (even as it
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`cites the Supreme Court case elsewhere in its Opposition (see Opp. 4)).
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`3
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`Dated: March 24, 2017
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`IPR IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for TMC and
`The University of Minnesota
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`4
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`IPR IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNERS’ REPLY IN SUPPORT OF MOTION TO DISMISS was served on
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`March 24, 2017 by email on the following counsel of record for Petitioner:
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`David O. Simmons (dsimmons@ivcpatentagency.com)
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`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Mark A.J. Fassold (mfassold@wattsguerra.com)
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`Jorge Mares (jmares@wattsguerra.com)
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`Dated: March 24, 2017
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for TMC and
`The University of Minnesota
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