Government Brief Faults Tribal Immunity Logic

On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe.

In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity. The government brief explains that “[n]o principle of sovereign immunity entitles an Indian tribe to withhold a public franchise from reconsideration by the superior sovereign that granted it.”

The brief (here) explains that, as a threshold issue, although IPR is initiated by a private party, it is not a private suit between parties entitled to sovereign immunity. Rather, an IPR proceeding is a government instituted review, explaining:

" Inter partes review is a discretionary administrative mechanism for the USPTO to correct its own mistakes. Although it is triggered by a petition from a private party, 35 U.S.C. § 311, that petition does not itself commence the inter partes review, but rather asks the Director of the USPTO to exercise his discretion to institute a proceeding.

Explaining that the Supreme Court’s Oil States decision confirmed that inter partes review is properly understood as the government’s reconsideration of the government’s own decision to approve a public franchise, the brief emphasizes that there is no immunity — state or tribal — to agency actions of the federal government.

" [T]he sovereign immunity of a tribe, like the sovereign immunity of a State, does not extend to prevent the federal government from exercising its superior sovereign powers. Consequently, neither a State nor an Indian tribe enjoys immunity against proceedings instituted by agencies of the federal government acting under federal law.

(internal citations omitted)

The brief does not address the PTAB’s reasoning that sovereign immunity is waived by parallel district court litigation. Stay tuned.

Scott A. McKeown is an author of the Patents Post Grant.