United States: Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions

In a case of first impression, the PTAB recently decided that the doctrine of tribal sovereign immunity does not apply to inter partes review proceedings.  See Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127; IPR2016-01128; IPR2016-01129; IPR2016-01130; IPR2016-01131; IPR2016-01132, Paper 130 ("Mylan").  Prior to the Mylan decision, the PTAB had never addressed a claim of tribal sovereign immunity by a patent owner.  Just over a year ago, the PTAB decided in Covidien LP v. University of Florida Research Foundation Incorporated ("Covidien") that Eleventh Amendment sovereign immunity applied to PTAB proceedings and, therefore, insulated arms of a state, such as state universities, from PTAB actions absent consent.   see,  PTABLitigationBlog  post regarding Covidien; see also  PTABLitigationBlog  post regarding Neochord. In Mylan, however, the PTAB declined to expand its Covidien holding to provide immunity to Indian tribes.

Shortly after the PTAB's decision in Neochord, Inc. v. University of Maryland, Baltimore ("Neochord"), that further insulated state universities from PTAB review, the Saint Regis Mohawk Tribe ("the Tribe") established the "Office of Technology, Research, and Patents" and entered into a patent assignment agreement with Allergan, Inc. ("Allergan") in which Allergan assigned to the Tribe a set of U.S. patents and applications related to Allergan's "Restasis" drug.  The Tribe granted back to Allergan an irrevocable, perpetual, transferable, and exclusive license for the patents for all FDA-approved uses in the United States.  At the time, the PTAB had already instituted inter partes review on Allergan's patents based on petitions filed by Mylan Pharmaceuticals, Inc.  After executing the agreements with Allergan, the PTAB allowed the Tribe to file a motion to terminate the inter partes review proceedings based on the Tribe's alleged sovereign immunity.

The PTAB declined to hold that the doctrine of tribal immunity should be applied to inter partes review proceedings because of the "recognized differences between the state sovereign immunity and tribal immunity doctrines, and the lack of statutory authority or controlling precedent" to do so.  The PTAB noted that federal courts have recognized only limited exceptions when a generally applicable federal statute should not apply to tribes and found that inter partes review proceedings were not one of those exceptions because such proceedings do not interfere with the Tribe's "exclusive rights of self-governance in purely intramural matters."  The PTAB also noted that Indian tribes have not enjoyed immunity in other types of federal administrative proceedings used to enforce generally applicable federal statutes.

In tension with its Covidien and Neochord decisions, the PTAB also concluded that "reconsideration of the patentability of issued claims via inter partes review is appropriate without regard to the identity of the patent owner" because (a) the PTAB is not adjudicating any claims in which Petitioners may seek relief from the patent owner; (b) the PTAB can neither restrain the patent owner from acting or compel it to act; (c) there is no possibility of monetary damages or an injunction as a remedy against the patent owner; and (d) the PTAB does not exercise personal jurisdiction over the patent owner.  The PTAB also pointed out that even if the parties to an inter partes review settle their dispute, the PTAB may continue to independently determine any question of patentability.  The PTAB, however, did not explain why this reasoning would not also apply to states as patent owners, and it remains to be seen whether this argument is advanced in future litigation, especially considering that Administrative Patent Judges Bisk and Harlow (neither having participated in Mylan) have previously argued in concurring opinions that state universities, having availed themselves of the Patent Office's procedures to secure patent rights, have waived sovereign immunity against reconsideration in inter partes review.

Assuming arguendo that the Tribe was entitled to assert sovereign immunity, the PTAB also decided that termination of the proceedings was not warranted because they could proceed with another patent owner's participation—Allergan's.  Despite Allergan and the Tribe's agreements that ostensibly transferred ownership of the challenged patents to the Tribe, the PTAB held that the licensing agreement transferred "all substantial rights" in the challenged patents back to Allergan, including (1) the right to sue for infringement; (2) the exclusive right to exploit the patents; (3) the right to sublicense; (4) reversionary rights in the patent; (5) the right to litigation or licensing proceeds; (6) the obligation to pay maintenance fees and the right to control Patent Office proceedings; and (7) the right to assign interests in the patents.  The PTAB found any rights retained by the Tribe "illusory."  Because Allergan remained the effective patent owner, the PTAB determined that the proceedings could continue with Allergan's participation only, regardless of whether tribal sovereign immunity applied to the Tribe.  This analysis, although dicta, should serve as a warning to patent owners, contemplating similar conveyance and licensing arrangements with state universities, that the PTAB may likewise find the licensee the "effective patent owner" if it maintains "all substantial rights" to the challenged patents.

In sum, Mylan has eliminated the possibility of relying on tribal immunity to insulate patents from inter partes review.  It remains to be seen whether the Federal Circuit has jurisdiction to review the PTAB's decisions regarding sovereign immunity on constitutional grounds, and if so, Practitioners should be interested to know whether states waive immunity by availing themselves of the Patent Office's procedures to secure patent rights and whether inter partes review is appropriate regardless of the identity of the patent holder.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
McDermott Will & Emery
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Marshall, Gerstein & Borun LLP
McDermott Will & Emery
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions