{"id":2131,"date":"2018-07-20T22:34:49","date_gmt":"2018-07-21T02:34:49","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2131"},"modified":"2018-07-28T23:25:03","modified_gmt":"2018-07-29T03:25:03","slug":"tribal-immunity-does-not-save-allegans-patents-from-ipr","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2131","title":{"rendered":"Tribal Immunity Does Not Save Allegan’s Patents from IPR"},"content":{"rendered":"

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.<\/a>, [2018-1638, 2018-1639, 2018-1640, 2018-1641, 2018-1642,\u00a02018-1643] (July 20, 2018), the Federal Circuit affirmed the PTAB’s denial of the Tribe’s motion to terminate on the basis of sovereign immunity.<\/p>\n

In an attempt to shelter its patents from IPR attack, Allegan assigned them to the Saint Regis Mohawk Tribe, who Allergan hoped could assert sovereign immunity to post grant challenges.<\/p>\n

The Tribe argued that tribal sovereign immunity applies\u00a0in IPR under FMC<\/em>, because like the\u00a0proceeding\u00a0in FMC<\/em>, an IPR is a contested, adjudicatory proceeding\u00a0between private parties in which the petitioner, not the\u00a0USPTO, defines the contours of the proceeding. Mylan argued that\u00a0sovereign immunity does not apply to IPR proceedings\u00a0because they are more like a traditional agency action — the\u00a0Board is not adjudicating claims between\u00a0parties but instead is reconsidering a grant of a government\u00a0franchise. Mylan further argued that even if the Tribe
\ncould otherwise assert sovereign immunity, its use here is\u00a0an impermissible attempt to \u201cmarket an exception\u201d from\u00a0the law and non-Indian companies have no legitimate\u00a0interest in renting tribal immunity to circumvent the law.\u00a0 Finally, Mylan argued that the assignment to the Tribe was\u00a0a sham, and the Tribe\u00a0waived sovereign immunity by suing on the patents.<\/p>\n

The Federal Circuit said that an IPR is neither clearly a judicial proceeding instituted\u00a0by a private party nor clearly an enforcement action\u00a0brought by the federal government, noting that in Oil States the Supreme Court said IPR is \u201csimply a reconsideration of\u201d the
\nPTO\u2019s original grant of a public franchise.<\/p>\n

Ultimately, several factors convinced the Federal Circuit that IPR is\u00a0more like an agency enforcement action than a civil suit\u00a0brought by a private party, and and thus tribal\u00a0immunity is not implicated. First, although the Director\u2019s\u00a0discretion in how he conducts IPR is significantly constrained,\u00a0he possesses broad discretion in deciding whether
\nto institute review.\u00a0\u00a0Although this is only one decision, it embraces the entirety\u00a0of the proceeding. If the Director decides to institute,\u00a0review occurs. If the Director decides not to institute, for\u00a0whatever reason, there is no review. In making this\u00a0decision, the Director has complete discretion to decide\u00a0not to institute review. The Director\u00a0bears the political responsibility of determining which\u00a0cases should proceed. While he has the authority not to\u00a0institute review on the merits of the petition, he could\u00a0deny review for other reasons such as administrative
\nefficiency or based on a party\u2019s status as a sovereign.\u00a0 Therefore, if IPR proceeds on\u00a0patents owned by a tribe, it is because a politically accountable,\u00a0federal official has authorized the institution of
\nthat proceeding.\u00a0\u00a0In this way, IPR is more\u00a0like cases in which an agency chooses whether to institute\u00a0a proceeding on information supplied by a private party. According to FMC,\u00a0immunity would not\u00a0apply in such a proceeding.<\/p>\n

The Federal Circuit added that the role of the parties in IPR suggests immunity\u00a0does not apply in these proceedings. Once an IPR\u00a0has been initiated, the Board may choose to continue\u00a0review even if the petitioner chooses not to participate, which reinforces the view that IPR is\u00a0an act by the agency in reconsidering its own grant of a\u00a0public franchise.<\/p>\n

The Federal Circuit also pointed out that although there are certain
\nsimilarities with the FRCP, the differences are substantial.\u00a0 Further a patent owner can seek to amend its patent\u00a0claims during the proceedings, an option not available in\u00a0civil litigation.<\/p>\n

Finally, while the USPTO has the authority to conduct\u00a0reexamination proceedings that are more inquisitorial\u00a0and less adjudicatory than IPR, this does not mean\u00a0that IPR is thus necessarily a proceeding in which Congress\u00a0contemplated tribal immunity to apply.\u00a0\u00a0The mere existence of more inquisitorial proceedings\u00a0in which immunity does not apply does not mean\u00a0that immunity applies in a different type of proceeding
\nbefore the same agency.<\/p>\n

Because it concluded that\u00a0tribal sovereign immunity cannot be asserted in IPR, the Federal Circuit did not reach the parties\u2019 other arguments.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., [2018-1638, 2018-1639, 2018-1640, 2018-1641, 2018-1642,\u00a02018-1643] (July 20, 2018), the Federal Circuit affirmed the PTAB’s denial of the Tribe’s motion to terminate on the basis of sovereign immunity. In an attempt to … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[26],"tags":[],"class_list":["post-2131","post","type-post","status-publish","format-standard","hentry","category-inter-partes-review"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2131","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2131"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2131\/revisions"}],"predecessor-version":[{"id":2132,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2131\/revisions\/2132"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2131"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2131"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2131"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}