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.

The decision (here) explains:

Congress has enacted a generally applicable statute providing that any patent (regardless of ownership) is “subject to the conditions and requirements of [the Patent Act].” 35 U.S.C. § 101; see also 35 U.S.C. § 261 (“Subject to the provisions of this title, patents shall have the attributes of personal property.”) (emphasis added). Congress has further determined that those requirements include inter partes review proceedings. See 35 U.S.C. §§ 311–319. In this regard, Congress has given the Patent Office statutory authorization both to grant a patent limited in scope to patentable claims and to reconsider the patentability of those claims via inter partes review. ….¶ Courts have recognized only limited exceptions when a generally applicable federal statute should not apply to tribes. . . .¶ We find that none of these exceptions apply to our statutory authority over these proceedings.

Moreover, the Board explained that AIA patentability trials are not of the type that comport with the core notions of sovereign immunity. In a footnote, it differentiated patent interferences, explaining that: “Our analysis herein is specific to the applicability of tribal immunity in inter partes review proceedings, in which the Board assesses the patentable scope of previously granted patent claims, and does not address contested interference proceedings, which necessarily involve determining the respective rights of adverse parties concerning priority of inventorship. Cf. Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1382 (Fed. Cir. 2007).”

That is:

In these proceedings, we are not adjudicating any claims in which Petitioners may seek relief from the Tribe, and we can neither restrain the Tribe from acting nor compel it to act in any manner based on our final decisions. Indeed, there is no possibility of monetary damages or an injunction as a “remedy” against the Tribe. Rather, as discussed above, the scope of the authority granted by Congress to the Patent Office with respect to inter partes review proceedings is limited to assessing the patentability of the challenged claims.

Furthermore, the Board does not exercise personal jurisdiction over the patent owner. At most, the Board exercises jurisdiction over the challenged patent in an inter partes review proceeding.

This analysis tracks that of the concurrence in the state sovereign immunity decision.

Finally, the Board held that even if immunity applied to the St. Regis tribe that Allergan could continue without the tribe’s participation:

Based on the terms of the License between Allergan and the Tribe, we determine that the License transferred “all substantial rights” in the challenged patents back to Allergan.

The Federal Circuit will review both the PTAB’s state and tribal sovereign immunity decisions in the short term. Stay tuned.