PTAB Rejects Tribal Immunity Proceedings

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.

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