Sovereign Immunity at the PTAB: Gimmick or Genius?

Monday, October 23, 2017

When drugmaker Allergan announced in early September that it had transferred patents on a best-selling eye drug to the Saint Regis Mohawk Tribe in upstate New York, IP experts were caught flat-footed. Allergan's move to sidestep an inter partes review at the PTAB by taking advantage of the Tribe's sovereign immunity brought patent law deep into unfamiliar territory.

The terrain might be strange, but many patent owners and petitioners -- and not only in the pharmaceutical industry -- now realize they need to understand the lay of the land. This month, the St. Regis Tribe sued Amazon and Microsoft for patent infringement, asserting data processing patents it was assigned by SRC Labs. Right now, deal makers far and wide are scrambling to do more transactions based on immunity. Brooks Kushman Principal Lissi Mojica participated on a multi-disciplinary panel that addressed such questions as:

  • What is the nature of tribal immunity? Do Indian tribes offer special advantages in these deals, or could a patent owner just as well make a deal for a state government to harbor patents?
  • What was the basis for the PTAB's earlier decisions this year to grant immunity to state university patent owners such as the University of Florida? How does tribal immunity differ from states' immunity?
  • Does it make a difference to the legal analysis that the St. Regis Tribe took ownership of patents that were already being challenged at the PTAB?