The Patent Trial and Appeal Board (PTAB) has rejected a motion to dismiss filed in several inter partes reviews (IPRs) by the Saint Regis Mohawk Tribe, declining to hold that the tribe’s sovereign immunity protects it from IPR. The February 23 ruling is just the latest setback for Allergan, the original owner of the patents challenged in those IPRs, which in September 2017 announced a controversial agreement under which it would assign the patents to the Mohawk tribe to shield the patents from PTAB challenges—only to see the same patents invalidated in district court. Meanwhile, shortly after the Board’s decision in the Allergan IPRs, Apple cited the same arguments in its opposition to a similar motion to dismiss in its IPR against MEC Resources, LLC, an entity owned by another Native American tribe seeking to leverage sovereign immunity.
A Delaware suit against Apple (1:17-cv-00223) has been transferred to California (3:17-cv-05457) following the substitution of a new plaintiff controlled by a Native American tribe. On August 17, original plaintiff Prowire LLC assigned the asserted inductor patent and a Taiwanese counterpart to the North Dakota-based MEC Resources, LLC, which replaced Prowire as the plaintiff later that month. District Judge Mark A. Kearney then granted Apple’s motion to transfer the case on convenience grounds on September 15. While Judge Kearney’s transfer order describes MEC Resources as a North Dakota citizen, the entity is in fact registered as a foreign LLC, as it is owned and operated by the Mandan, Hidatsa, and Arikara Nation, known officially as the Three Affiliated Tribes of the Fort Berthold Reservation, North Dakota. The assignment of Prowire’s patent to MEC Resources came shortly before the announcement of a controversial patent licensing strategy by the Saint Regis Mohawk Tribe, which has acquired patents from Allergan and SRC Labs and licensed them back to their original owners in order to shield the assets from inter partes review (IPR) through the tribe’s sovereign immunity.