May 19, 2019

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St. Regis Mohawk Tribe Petition for Centiorari Denied

On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.

On July 20, 2018, the Federal Circuit upheld a finding by the Patent Trial and Appeal Board (PTAB) in St. Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. 2018) that tribal immunity did not extend to the agency proceeding before the PTAB known as an inter partes review (IPR). Id. at 1329. In doing so, the Federal Circuit compared the IPR process to agency enforcement actions and district court proceedings.

The Federal Circuit noted that the director of the PTAB has discretion regarding whether or not to institute an IPR and found that “if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of that proceeding.” Id. at 1327.

At the end of the day, the Federal Circuit found that an IPR proceeding is distinct enough from a district court proceeding such that the tribal immunity defense that is permitted in an Article III court does not apply to PTAB proceedings. By denying St. Regis’s petition, the Federal Circuit opinion stands as the final determination on this issue.

Click here for the Court decision.

Copyright 2019 K & L Gates

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About this Author

Jason A. Engel, Registered Patent Attorney, KL Gates, Law Firm
Partner

Jason A. Engel is a registered patent attorney with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim...

312-807-4236
Benjamin E. Weed, Registered Patent Attorney, KL Gates, Chicago Law Firm
Partner

Mr. Weed is a registered patent attorney with a background in computer science. He concentrates his practice in patent litigation, post grant practice at the Patent Trial and Appeal Board, prosecution, counseling, due diligence, and opinion work. Prior to his career as a lawyer, Mr. Weed worked as a software developer at Motorola, Inc.’s Chicago-area corporate headquarters.

As a PTO-registered lawyer, Mr. Weed has experience handling standard patent prosecution matters as well as matters before the Board of Patent Appeals and Interferences. Mr. Weed also has experience with post-grant proceedings at the Patent Trial and Appeal Board, and has been involved in the preparation and prosecution of more than 30 inter partes review and covered business method review petitions.  In all instances, Mr. Weed’s involvement has been on behalf of Petitioners and has been coupled with overall trial strategy for co-pending district court litigation. He has experience handling ex parte reexamination, broadening reissue, and inter partes reexamination on behalf of clients at the United States Patent and Trademark Office.

312-781-7166
Erik J. Halverson, PTO Registered Patent Attorney, KL Gates, Law Firm
Associate

Erik Halverson is an associate in the Chicago office, a PTO-registered patent attorney, and a member of the IP Procurement and Portfolio Management practice group.

Mr. Halverson focuses on patent related matters such as drafting, prosecuting, and analyzing U.S. and international patent applications involving a variety of technologies. He also provides strategic counseling, due diligence research and analysis for portfolio acquisitions, and opinion work such as patentability, validity, non-infringement, and freedom-to-operate opinions.

312-807-4240