On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity. The court expressly declined to make any decision about state sovereign immunity in this case. The PTAB has found that state sovereign immunity can prevent IPR, although it may be waived if the patent is enforced in district court by the assignee (see “Expanded PTAB Panel Finds Sovereign Immunity Waived By Patent Enforcement”).
Judges Dyk, Moore, and Reyna issued the opinion, in which Judge Dyk concurred. The court found that IPR is more like “an agency enforcement action than a civil suit brought by a private party” based on several factors:
- “First, although the Director’s discretion in how he conducts IPR is significantly constrained, he possesses broad discretion in deciding whether to institute review. Oil States, 138 S. Ct. at 1371… Therefore, if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of that proceeding. See Alden v. Maine, 527 U.S. 706, 756 (1999) (contrasting suits in which the United States ‘exercise[s] . . . political responsibility for each suit prosecuted” in order to fulfill its obligation under the Take Care Clause with “a broad delegation to private persons to sue nonconsenting States’).”
- “Second, the role of the parties in IPR suggests immunity does not apply in these proceedings. Once IPR has been initiated, the Board may choose to continue review even if the petitioner chooses not to participate. 35 U.S.C. §...
