Sovereign Immunity

Subscribe to Sovereign Immunity via RSS

Federal Circuit Denies Tribal Sovereign Immunity from PTAB Proceedings

Last Friday, the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) denial of tribal sovereign immunity as a patent owner defense to an AIA trial challenge. The decision tracks my November prediction that the Court would follow its reasoning in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017), which explained that PTAB proceedings were not “trials” in an Article III sense. You can find Friday’s decision in St. Regis Mohawk Tribe v Mylan Pharm., Inc. (here)

The Board noted that the question of state sovereign immunity was left for another day, but was it really?
Continue Reading Tribal Sovereign Immunity Denied, Will State Immunity Hold at the PTAB?

Government Brief Faults Tribal Immunity Logic

On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.  As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe.

In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity.  The government brief explains that “[n]o principle of sovereign immunity entitles an Indian tribe to withhold a public franchise from reconsideration by the superior sovereign that granted it.”
Continue Reading PTAB’s Sovereign Power Superior to State/Tribes

Stay To Force PTAB Outside of Statutory Time Limit?

Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis® 
Continue Reading CAFC Shuts Down PTAB Pending St. Regis Mohawk Tribe Appeal

Preserving Access to Cost Effective Drugs (PACED) Act

Senator Tom Cotton (R-Arkansas) and Senator Claire McCaskill (D-Missouri) along with Senators Pat Toomey (R-Pennsylvania), Joni Ernst (R-Iowa), David Perdue (R-Georgia) introduced the Preserving Access to Cost Effective Drugs (PACED) Act (S.2514), to “restore the power of the Patent and Trademark Office and federal courts, and the…

Federal Statutes Applicable to Tribes Absent Expression to the Contrary

In addition to the state sovereign immunity dispute now headed to the Federal Circuit, you might recall that the Patent Trial & Appeal Board (PTAB) was also considering the related question of whether sovereign immunity applies to Board proceedings involving Native American tribes. Last Friday, the Board decided that tribal immunity does not apply to USPTO proceedings in Mylan v. Saint Regis Mohawk Tribe.
Continue Reading PTAB Denies Tribal Immunity Bid

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week.
Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC