Since early 2017, courts have grappled with the issue of whether the sovereign immunity held by states and Native American tribes could shield them from inter partes review (IPR). That debate was resolved in April as to Native American tribes, when the US Supreme Court declined to review a July 2018 Federal Circuit decision that tribal sovereign immunity does not apply to IPR. Now, the Federal Circuit has ruled that states similarly lack immunity from IPR, holding in an appeal of IPRs filed against the public University of Minnesota by Broadcom (Avago and LSI) and Ericsson that there was no reason to treat states differently from tribes in this context.

The US Supreme Court has declined to grant certiorari in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals (2018-0899), ending a controversial patent-shielding strategy first used in late 2017 by a Native American tribe and its counsel. Under that strategy, the Saint Regis Mohawk Tribe acquired certain patents from pharmaceutical company Allergan and NPE SRC Labs, LLC, hoping to shield those assets from inter partes review (IPR) using the tribe’s sovereign immunity. However, in February and July 2018, the Patent Trial and Appeal Board (PTAB) and Federal Circuit each ruled that the tribe could not assert its immunity against IPR, although they each reached that conclusion on markedly different grounds from one another.

In October 2018, the Patent Trial and Appeal Board (PTAB) continued to see petitions for inter partes review (IPR) filed against Native American tribes following the Federal Circuit’s July ruling that the tribes’ sovereign immunity does not apply in the context of IPR, including a petition brought against the Saint Regis Mohawk Tribe over patents at issue in the campaign waged by SRC Labs, LLC. That petition was filed shortly before the Federal Circuit declined to revisit its sovereign immunity opinion in late October. Also in October, the PTAB instituted trial in four IPRs against a subsidiary of Quarterhill Inc., which just reported a significant drop in quarterly patent licensing revenue over the previous year. Meanwhile, October saw a number of notable final decisions, including one issued in an IPR against a subsidiary of General Patent Corporation.

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.

Early last month, Allergan and the Saint Regis Mohawk Tribe announced a controversial arrangement under which the tribe would acquire the patents for Allergan’s dry eye treatment Restasis and license them back to Allergan. While the deal was intended to shield the patents from inter partes review (IPR) under the tribe’s sovereign immunity, that protection does not protect the patents from district court validity challenges, since the filing of suit waives immunity for such proceedings. As a result, Allergan’s deal with the tribe did not prevent District Judge William C. Bryson from ruling, on October 16, that all of the asserted claims from the six Restasis patents at issue are invalid as obvious over prior art (2:15-cv-01455). That order comes shortly after the September assignment of an additional 59 Restasis patent assets, from Allergan to the Saint Regis Mohawks, was made public by the USPTO. Meanwhile, the tribe has started a new campaign with coplaintiff SRC Labs, LLC under a similar licensing arrangement; the two entities have accused Amazon (2:17-cv-00547) and Microsoft (1:17-cv-01172) of infringing several computing patents.