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.
The Patent Trial and Appeal Board (PTAB) remained at the center of a heated public debate over the issue of tribal sovereign immunity in December 2017. Motions to dismiss filed by the Saint Regis Mohawk Tribe in IPRs against several Allergan patents—acquired by the tribe and licensed back to their original owner to shield them through sovereign immunity—remain pending as the PTAB considers a wave of amicus briefs filed on both sides of the issue. The Board has since denied the tribe’s motion for an oral hearing on discovery related to alleged bias held by the USPTO and its leadership, and that bias’s effect on the selection of judges for the tribe’s case. Meanwhile, among the petitions for inter partes review (IPR) filed in December was one brought by Apple against MEC Resources, LLC, an entity owned by another Native American tribe, which took over an existing lawsuit asserting the challenged patent against Apple in the fall. Also in December, the Board issued institution decisions in petitions against Iridescent Networks, Inc.; Lone Star Silicon Innovations LLC; and publicly traded Quarterhill Inc.; while an IPR against Packet Intelligence LLC ended in an adverse judgment after petitioner Sandvine prevailed in a November trial.
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.
In a lawsuit filed on March 2, Prowire LLC has accused Apple (1:17-cv-00223) of infringing a single patent (6,137,390) through the manufacture and sale of consumer electronics that contain certain inductors, identifying only the iPad 4 by name. The ‘390 patent generally relates to an inductor having its coil embedded in a particular form of “magnetic resin”. It issued to Industrial Technology Research Institute (ITRI) in October 2000; Prowire’s new complaint is the second filed within roughly two weeks to assert a patent developed at ITRI.