Academic journal article St. John's Law Review

Patently Inconsistent: State and Tribal Sovereign Immunity in Inter Partes Review *

Academic journal article St. John's Law Review

Patently Inconsistent: State and Tribal Sovereign Immunity in Inter Partes Review *

Article excerpt

introduction

From 2016 to 2017, the Patent Trial and Appeals Board ("PTAB" or the "Board"), an adjudicatory branch of the United States Patent and Trademark Office ("USPTO"),1 instituted five separate inter partes review ("IPR") proceedings against patents owned by various state universities.2 Upon instituting these proceedings, the universities all moved to dismiss the proceedings on state sovereign immunity grounds.3 While only three of these proceedings resulted in the dismissal of the state entities,4 the cumulative effect of the five proceedings was that state-owned patents are clearly insulated from IPR proceedings by state sovereign immunity so long as the state does not (1) bring a federal patent infringement suit or (2) transfer all substantive rights in the patent in question to a separate third party.5

Perhaps inspired by these developments, the pharmaceutical company Allergan adopted a noteworthy approach to the IPRs that were instituted against six of its patents on December 8, 2016.6 Attempting to avoid the proceedings, Allergan assigned all of its rights in the six patents to the Saint Regis Mohawk Tribe, a federally recognized Indian tribe.7 The tribe then moved to dismiss the proceedings based on tribal sovereign immunity.8 However, in Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe (Mylan I), the PTAB found that unlike states, tribes could not use their sovereign immunity to avoid IPRs.9 The United States Court of Appeals for the Federal Circuit affirmed the PTAB's holding in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. (Mylan II).10 As a result of these decisions, there was a brief inconsistency between how tribal sovereign immunity was treated and how state sovereign immunity was treated in IPR proceedings11 until the recent decision in Regents of the University of Minnesota v. LSI Corp.12 In that case, the Federal Circuit corrected course by holding that state sovereign immunity may not be applied in IPRs.13 Nonetheless, the Supreme Court can still potentially grant certiorari and reverse the Federal Circuit's decision, which would result in the inconsistency between state and tribal sovereign immunity in IPRs being revived.14

This Note is composed of four parts. Part I reviews the origins, development, and purpose of both tribal and state sovereign immunity, compares the two doctrines, and concludes that the two are functionally the same despite deriving from different historical roots. Part II provides an overview of the history and purpose behind the patent system, the America Invents Act, and IPRs. Part II also analyzes the constitutionality of IPRs, as decided by the Supreme Court in Oil States Energy Services, LLC v. Greene's Energy Group, LLC.15 Part III introduces and addresses the five IPR decisions on state sovereign immunity, Mylan I, and Mylan II. In addition, it discusses the PTAB's internal inconsistency in applying state and tribal sovereign immunity and the inconsistency between the PTAB's state sovereign immunity precedent and the Federal Circuit's rationale and holding in Mylan II. Finally, Part IV of this Note argues that (1) the Federal Circuit's Mylan II holding is correct; (2) policy implications dictate that sovereign immunity of either form should not apply in IPRs; and (3) if the Supreme Court grants ceriorari in LSI Corp., Mylan II's holding, as well as the LSI Corp. holding should be read to prohibit both state and tribal immunity equally because of the similarity between the two doctrines.

I. Tribal Sovereign Immunity Versus State Sovereign Immunity

A. The Origins, Development & Purpose of Tribal Sovereign Immunity

The doctrine of tribal sovereign immunity provides that Native American tribes recognized by the United States may not be subjected to lawsuits brought by states, private individuals, or private entities.16 Although this doctrine as we know it today is a creature of federal common law,17 it is nonetheless firmly engrained in the legal doctrine of the United States18 and has historical roots that date back to before the United States Constitution was ratified. …

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