The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. See Allergan and the Saint Regis Mohawk Tribe Enter Patent Agreement to Defend Against IPR of RESTASIS® Patents. After Allergan assigned the Restasis® patents to the Tribe, the Tribe filed a motion to dismiss the then-pending IPRs. Mylan Pharmaceuticals, Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131, IPR2016-01132, at Paper 78 (PTAB Sept. 22, 2017).
On February 23, 2018, the PTAB denied the Tribe’s motion to dismiss the pending IPRs. IPR2016-01127, paper 132. The PTAB held that the doctrine of tribal sovereign immunity does not apply to IPR proceedings. Id. at 11. This holding contrasts with PTAB decisions involving state sovereign immunity under the Eleventh Amendment, all of which hold that Eleventh Amendment immunity is available as a defense in IPR. See, e.g., Covidien LP v. University of Florida Research Foundation, IPR2016-01274, Paper 19, (PTAB Jan. 25, 2017); Neochord, Inc. v. University of Maryland, IPR2016-2016-00208, Paper 28 (PTAB May 23, 2017); and Reactive Surfaces LTD., LLP v. Toyota Motor Corp., IPR2017-00572, Paper 36 (PTAB July 13, 2017).
The PTAB stated that an “Indian Tribe’s sovereignty is ‘subject to the superior and plenary control of Congress,’” and in enacting the America Invents Act, Congress intended IPR to apply to any patent, regardless of ownership. IPR2016-01127, Paper 130 at 11 (PTAB Feb. 23, 2018) (quoting Santa Clara Pueblo v. Martinez, 436 U.S. 49, 58 (1978)). Therefore, the PTAB reasoned, there is no evidence that Congress intended Indian Tribe-owned patents to be immune to IPR under tribal sovereign immunity.
Additionally, the PTAB held that even if tribal sovereign immunity were to apply, the IPRs could proceed against Allergan, since Allergan is still an owner of the patents. In determining whether Allergan retained ownership rights in the patents, the PTAB evaluated seven different factors. IPR2016-01127, Paper 130 at 19-20. The PTAB then held that the nature of the assignment to the Tribe was such that “Allergan remains the effective patent owner.” Id. at 35. The PTAB also determined that the Tribe was not an indispensable party to the IPR. Under the reasoning of Reactive Surfaces, the PTAB stated that because Allergan has at least an identical interest to the Tribe, and because Allergan will be able to adequately represent the Tribes interest, the IPRs could continue without the Tribe. IPR2016-01127, Paper 132 at 36-39 (PTAB Feb. 23, 2018).
The PTAB set April 2, 2018 for Oral Hearing, and adjusted the deadline to enter final written decisions to June 6, 2018. IPR2016-01127, Paper 132 at 4. The Tribe filed a notice of appeal on February 28, 2018, in which the Tribe argues that the denial of sovereign immunity is immediately appealable under the collateral order doctrine. Paper 133 at 3 (PTAB Feb. 28, 2018).