Clearly wishing to maintain the momentum and initiative in its inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, the St. Regis Mohawk Tribe and Allergan jointly filed a Notice of Appeal to the Federal Circuit yesterday, February 28, 2018, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A), and 37 C.F.R. § 90.2 for the PTAB's decision denying the Tribe's Motion to Dismiss IPRs in those patents assigned to the Tribe by Allergan last fall. The parties indicated in a footnote that Allergan was identified as a "patent owner" on the appeal solely due to the PTAB's order that the caption must so designate what the parties contend is an exclusive licensee. The Notice bases the procedural competence of the appeal under 28 U.S.C. § 1295(a)(4)(A) on the collateral order doctrine, which according to the Notice can be invoked to overcome the final judgment rule under 28 U.S.C. § 1291 regarding questions of tribal sovereign immunity; cited in support of this application of the doctrine to tribal immunity questions are several appellate court decisions, including Chehazeh v. Attorney Gen. of U.S., 666 F.3d 118, 136 (3d Cir. 2012); Burlington N. & Santa Fe Ry. Co. v. Vaughn, 509 F.3d 1085, 1094 (9th Cir. 2007); Osage Tribal Council ex rel. Osage Tribe of Indians v. U.S. Dep't of Labor, 187 F.3d 1174, 1179 (10th Cir. 1999); In re Board of Regents of Univ. of Texas Sys., 435 F. App'x 945, 947-48 (Fed. Cir. 2011); and Baum Research & Dev. Co. v. Univ. of Massachusetts at Lowell, 503 F.3d 1367, 1369 (Fed. Cir. 2007).
The Notice also recites a litany of grounds for the appeal; for the Tribe these include:
• Whether the Board erred in denying the Tribe's Motion to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign Immunity.
• Whether the Board erred in finding that inter partes review is not the type of "suit" to which an Indian tribe would traditionally enjoy immunity under common law, declining to find the holding in Federal Maritime Commission v. South Carolina State Ports Authority, 535 U.S. 743, 754-56 (2002), applies to Tribal sovereigns as it does State university sovereigns.
• Whether the Tribe is entitled to a dismissal of the Proceedings under tribal sovereign immunity because an IPR is adjudicative in nature, Tribes have inherent immunity from suit, and absent express abrogation, there is no indication that Congress intended the Tribe be subject to actions in this forum.
• Whether the Board's conclusion that it is not...
