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Tribal Sovereign Immunity and Patents: No More Debate

by John Aquino on 04/16/19

I have written before on this blog on tribal sovereign immunity and patents in regard to a Patent and Trademark Office ruling confirmed by the U.S. Court of Appeals for the Federal Circuit http://www.johntaquino.com/Blog-- Substantially-Similar.html?entry=tribal-sovereign-immunity-and-patents . Given my background as a former executive director of a tribal association, I commented on the importance of this immunity for tribes, lamented that the PTO's Patent Tribal and Appeal Board had been somewhat glib in ruling that the immunity was inapplicable for its proceedings, and hoped that higher courts would provide a more detailed discussion. 


But the Federal Circuit affirmed the PTAB's ruling, and on April 15, 2019, the U.S. Supreme Court denied review of the Federal Circuit's decision, letting the Federal Circuit's ruling stand. I regret that the feeling of some patent attorneys that the use of tribal sovereign immunity in this case was a sham will persist and that the broader discussion will not occur.

After the validity of its patents for its dry-eye treatment were challenged in inter partes review (IPR) petitions before the PTAB, which have often been criticized as favoring the petitioners, Allergan assigned its patents to the St. Regis Mohawk Tribe in upstate New York with the plan that the tribe would assert its sovereign immunity before the PTAB. After the PTAB ruled that the immunity didn't apply in its proceedings, on appeal before the Federal Circuit, the court acknowledged the legal existence of tribal sovereign immunity, found that it doesn't apply to actions brought by the federal government, and concluded that an IPR was similar to a federal administrative proceeding, even though, when the IPR was created by the American Invents Act, members of Congress labeled it a substitute for civil litigation where tribal sovereign immunity does apply. Allergan and the tribe petitioned the Supreme Court for review, and some attorneys predicted that the court would grant review, which it ultimately didn't. A denial of review only means that the court, for reasons it usually doesn't discuss, declined to review the lower court's ruling. Some had warned that Congress had been lobbied to decide the matter where it was likely to do so in a manner that would harm tribal immunity. At least in Congress, the matter would have been debated. But that is unlikely to happen given that the court's decisions.

And so the Federal Circuit ruling will stand, and the feeling that the use of tribal immunity was a sham rather than a legitimate business offer that the tribe was allowed to pursue will remain. As if tribes haven't been through enough.

There's a Dakota tribal saying that when you're riding a dead horse you should get off. It's similar to the adage reportedly coined by British member of Parliament Dennis Healy, "When you're in a hole, stop digging." But the end of this, I fear, is that tribes have one less horse to ride when from a business perspective they hadn't been left many to begin with.

Copyright 2019 by John T. Aquino

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