' Brianna Potter | MTTLR

The Reach of Sovereign Immunity in IPRs

How does one balance the rights of sovereigns residing within a greater jurisdiction with fundamental rules of fairness? This question was recently decided by the Federal Circuit in the context of Inter Partes Review (IPR) in the case of St. Regis Mohawk Tribe. The St. Regis Mohawk tribe gained national attention when Allergan sold their patent rights to the tribe in exchange for money and an exclusive license to the drug. The lawyer orchestrating this transaction openly admitted that his purpose was to take advantage of the tribe’s sovereign immunity and avoid the easier-to-file-than-a-regular-lawsuit IPRs. This open attempt to beat the system is perhaps one reason why the Patent Trial and Appeal Board (PTAB) stated that tribal immunity didn’t apply to their proceedings. The Federal Circuit agreed, stating that IPRs are different enough from Article III adjudication to not trigger tribal immunity. At the end of their opinion, the court said that they would “leave for another day the question of whether there is any reason to treat state sovereign immunity differently.” But the court’s analysis in the decision may already answer that question. The test for attachment of sovereign immunity in agency proceedings hinges on the similarity between said proceeding and civil litigation. The question then is, does an IPR look like civil litigation? On the one hand, the Supreme Court has stated that IPRs “mimic[] civil litigation.” However, in Oil States, the case where the Supreme Court declared IPRs not unconstitutional, the Court described the proceedings as being a “reconsideration of the Government’s decision to grant a public franchise.” With these in mind, the Federal Circuit, in...