On February 23rd, 2018, a panel of the Patent Trial and Appeal Board (PTAB or “Board”) decided that: (1) Indian tribal sovereignty did not apply to post-grant proceedings established under the America Invents Act (AIA) and (2) licensing agreements between a tribe and a third party that confer numerous rights to the third party can allow for post-grant proceedings to proceed without the participation of the Indian tribe. Mylan Pharmaceuticals, Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper 129. The decision stands as a firm rejection of Allergan’s strategy of transferring its patents to an Indian tribe to protect them from challenge in the PTAB. While not binding on other PTAB panels, the lengthy and thorough decision comes after fifteen individuals and organizations submitted amicus briefs. It suggests that the PTAB will likely view future tribal sovereign immunity arguments with skepticism.
Matthew I. Kreeger
Matt has over two decades of experience representing clients in intellectual property cases. He has represented numerous clients in the pharmaceutical, biotech and medical device industries, in cases involving technologies such as antibody therapeutics and diagnostics, nucleic acid testing, vaccines, and small molecules. Matt also works for clients in information technology, leveraging his software experience. In one case for a computer networking company, Matt More ›
Shouvik Biswas is of counsel in the Patent Group of Morrison & Foerster’s Washington, D.C. office. Shouvik's practice is focused on patent preparation and prosecution in the United States and foreign jurisdictions, strategic IP counseling and portfolio management, and adversarial proceedings before the United States Patent and Trademark Office. Shouvik's has handled matters in all stages of prosecution, including invention disclosures, new application drafting, office action More ›