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Board Rules that Tribal Immunity is Unavailable to Avoid Inter Partes Review Challenge

On Feb. 23, 2018, the Patent Trial and Appeal Board (“Board”) ruled an assertion of Tribal sovereign immunity would not avoid challenges to certain patents that had been assigned to the Saint Regis Mohawk Tribe (“the Tribe”). See Mylan Pharm., Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper No. 130 (February 23, 2018).  In our earlier post entitled “Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review” we reported that certain Orange Book-listed patents had been assigned to the Tribe, which licensed the patents back to the original assignee, in an effort to obtain dismissal of the pending inter partes reviews (“IPRs”) against those patents. 

As background, Mylan and others had joined in IPR challenges, with a consolidated hearing scheduled for September 2017. IPR2016-01127, Paper No. 130 at 2.  Less than a week before that hearing, counsel for the Tribe contacted the Board to notify them that the Tribe had acquired rights to the challenged patents and was seeking permission to file a motion to dismiss the proceedings based on the Tribe’s sovereign immunity. Id.  Thereafter, motion practice on the issue was authorized, including unprecedented permission by the Board authorizing third parties to file amicus briefs. Id. at 2-4.

The Board denied the Tribe’s motion on several grounds, the first of which was that the Board found no controlling precedent or any statutory basis for the application of tribal immunity to IPR proceedings. Id. at 7-10.  Notably, in coming to that conclusion, the Board specifically distinguished prior cases addressing “state sovereign immunity.” Id. at FN 4 (emphasis added).  The Board separately found the tribal immunity doctrine does not apply to IPR proceedings, and that “Courts have recognized only limited exceptions when a generally applicable federal statute,” such as those governing IPRs, “should not apply to tribes.” Id. at 11-13.  The PTAB also recently curtailed use of sovereign immunity as a defense against IPRs when the patent at issue has been enforced in patent litigation, as discussed in “Expanded PTAB Panel Finds Sovereign Immunity Waived By Patent Enforcement.”

In addition, and going a step further, the Board determined it could proceed even if participation of the Tribe was terminated, as the proceeding could continue with the original assignee as the “patent owner.” Id. at 18-19.  Going forward, the Board has ordered the parties to “coordinate their efforts” and to “file joint papers in these proceedings unless otherwise authorized by the Board.” IPR2016-01127, Paper No. 132 (February 23, 2018) at 3.

In that regard, the Board has now resumed the schedule of the proceedings that was previously suspended, has tentatively set the oral hearing for April 3, 2018, and adjusted the time for the final written decision to June 6, 2018 – exactly 1.5 years from the institution dates of the underlying proceedings. See 37 C.F.R. 42.100(c) (allowing extension of up to six months beyond normal one-year time to final written decision, consistent with 35 U.S.C. § 316(a)(11)).

© 2020 Foley & Lardner LLPNational Law Review, Volume VIII, Number 57


About this Author

Andrew R. Cheslock, Foley Lardner, Patent Litigation Lawyer, Reexamination Proceeding Attorney
Senior Counsel

Andrew Cheslock is an associate and intellectual property lawyer with Foley & Lardner LLP. He has extensive experience in patent litigation, reexamination, and counseling in the electronics and software fields. Mr. Cheslock is a member of the firm’s IP Litigation, Patent Office Trials, and Electronics Practices.

Mr. Cheslock’s technical background includes familiarity and practical engineering experience with operating systems, compilers and programming languages, embedded systems, microprocessors, logic devices, database management systems...