PTAB: Tribal immunity does not apply to inter partes review proceedings.

Mylan and Teva v. St. Regis Mohawk Tribe (PTAB 2018)

In a long 42 page opinion, a PTAB panel has denied St. Regis Mohawk Tribe’s motion to dismiss the pending inter partes review (IPR) proceedings against its patents.  Here, the panel holds plainly that “Tribal immunity does not apply to inter partes review proceedings.”  Although the PTAB identified state sovereign immunity as a different question, the ruling here certainly suggests that

The case will be appealed to the Federal Circuit — I expect the court will be willing to hear a mandamus action, but we may have to wait until a final decision of validity — something that the equitable owner Allergan has been working hard to avoid.  The sovereign immunity question is the type of threshold question decided at the IPR petition stage.  Under the statute, PTO petition decisions are not subject to appeal. However, the issues here appear to fall squarely within the exceptions noted by the Supreme Court in Cuozzo.

Allergan owned several patents that it granted to the Mohawk Tribe back in 2017.  Although the patents are quite valuable, Allergan actually paid the Mohawk Tribe to take the patents.  The scheme allowed Allergan to still exclusively control use of the underlying inventions and potentially benefit from the Sovereign Immunity given to Indian Nations within the United States.

In reviewing whether sovereign immunity applies here, the PTAB held the following:

  • There is no statutory basis for the application of Tribal Immunity in IPR proceedings.
  • There is no controlling precedent requiring the application of Tribal Immunity in IPR proceedings. (Decisions by other Federal Agencies is not controlling precedent.)
  • Granting of sovereign immunity to the States in the IPR context does not require granting of sovereign immunity to the Indian Nations.
  • Congress granted the PTO with broad IPR authority over “any patent.”
  • In IPR actions, the jurisdiction is in rem – over the patent – rather than in personam – over the patent owner.  This means that IPRs are less offensive of any immunities.
  • IPR actions are not the “type of suit” to which tribal immunity applies at common law since petitioners are not seeking anything from the tribe (only cancellation of its valuable property rights).

The collection of these legal determinations served as the PTAB’s foundation for its final decision of no immunity.

The PTAB then went on to look at the particular situation in this case – where the Mohawk Tribe is the assignee, but Allergan holds all effective rights.  After reviewing the details of the transfer, the PTAB ruled in the end that it could treat Allergan as the “patent owner.” See Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1250 (Fed. Cir. 2000) (a “party that has been granted all substantial rights under the patent is considered the owner regardless of how the parties characterize the transaction that conveyed those rights.”).

I would see this case as quite different if the Mohawk Tribe had actually bought the patents or obtained them through some positive-value venture.  Here, the approach is blatant rent seeking and I am glad that the PTAB was able to work its way through.

88 thoughts on “PTAB: Tribal immunity does not apply to inter partes review proceedings.

  1. 11

    On another tribal immunity case, the Supreme Court on March 21 is scheduled to hear:

    DECISION BELOW: 389 P.3d 569
    CERT. GRANTED 12/8/2017
    Does a court’s exercise of in rem jurisdiction overcome the jurisdictional bar of tribal sovereign immunity when the tribe has not waived immunity and Congress has not unequivocally abrogated it?

    1. 11.1

      Can this be a coincidence?

      1. 11.1.1


    2. 11.2

      Thanks, and one summary of that case is here:
      “A couple who owned property adjacent to land owned by the Upper Skagit Indian Tribe filed [a “quiet title”] suit, seeking a court order that a parcel of disputed land belonged to them rather than to the Tribe. The Tribe moved to dismiss the suit, arguing it was immune from suit under the doctrine of sovereign immunity. A Washington state superior court denied the Tribe’s motion. On appeal, the Washington State Supreme Court affirmed. The Washington State Supreme Court concluded that because the suit only required the district court to exercise jurisdiction over the land—not over the Tribe—sovereign immunity did not prevent the suit from going forward. The Tribe appealed to the United States Supreme Court.”

      [Query: Since a tribal land boundary is supposed to have be established by a treaty with the Federal Government, why was this case not transferred to a Federal Court? Will not resolution require interpretation of the treaty and a court approved survey?]

      1. 11.2.1

        Paul, almost all land in the US traces back to a patent granted either by England, the US, the Spanish or some other national sovereign. Still, land disputes between private parties are litigated in State courts.

        I do not see the Federal question.

      2. 11.2.2

        Paul, do you find it a tad bit odd that the PTAB would adopt a position regarding tribal immunity that is so at variance with official position of the current government as expressed in this case that there would be no way for the government to support the PTAB position except on the basis that there was no assignment in fact?


          Ned, as I noted some time ago, that is really academic, since a federal legal issue of this importance is going to have to be decided by the reviewing federal courts, which are not in the least bound by whatever an administrative agency panel below holds on that legal issue.
          Even the alleged “assignment” decision here may not get any fact-finding deference on appeal, if treated as judicial interpreting of contract language.
          And re that other Tribal immunity case now at the Sup. Ct. – no, ultimate tribal land boundaries did not get defined by the Spanish or English, and the U.S. Federal government has exclusive authority for all tribal treaties.


            You have a most odd view of what is “academic,” Paul.

            Almost as if you are cheerleading the IPR and refuse to see the abounding infirmities (pretending that they do not exist).

            The larger point here is that the “judicial function” of the administrative agency of the Executive branch is totally out of control in its hubris.

            As previously pointed out, the PTAB attempted a small “dial back” when the Oil States case was prominently before the Supreme Court, and this action (among many actions) reveal that the PTAB IS out of control.

            I do hope (for poor James Madison’s sake, as he spins in his grave) that the Supreme Court is able to connect the dots.


              And you are as usual deliberately miss-representing the point, which is simply that a mere PTAB motion decision [that it had to make, even though you imply otherwise], on a fact-free legal issue of first impression like this, is as meaningless as the purely purely personal legal opinions expounded on this blog. The Fed. Cir. has to actually decide the issue.


                I have made NO such “miss-representing the point” – your accusation simply falls flat.

                Maybe you should read what I actually wrote, Oh IPR Cheerleader you.


                Why make an obvious piece of crap decision?

                If the PTAB had ruled to dismiss the case, Mylan would have immediately appealed to the CAFC or (the correct course) lobbied Congress to modify the dependent sovereign immunity of the tribes.

                Nothing would have been different, but the PTAB

                · would not have insulted our intelligence and

                · would not be (according to the metaphor in the image above) using a sledgehammer to try to kill the bee on the its metaphorical nose by making a decision directly opposite to the position that the US government is taking before SCOTUS.

                To tell the truth, I am glad of this decision because it screams payoff or other corruption and because it makes ever more clear that the USPTO has become a crooked organization destroying US patent system and undermining the US political economic system.


                link to


                is as meaningless as the purely purely personal legal opinions expounded on this blog

                Feel free Paul to control your own “meaninglessness” and stop your own purely personal legal opinion expounding.

                Or does your “advice” only apply to others and not you?

    3. 11.3

      From the government brief:

      “Whether the sovereign immunity of a federally recognized Indian tribe bars an action against the Tribe to quiet title to property purchased by the Tribe outside of its reservation, where the Tribe has not waived its immunity and Congress has not unequivocally abrogated the Tribe’s immunity.”

      “State courts cannot circumvent tribal sovereign immunity by exercising in rem jurisdiction over tribal property…;

      Sovereign immunity bars suits against the sovereign’s property….”

      “The Washington Supreme Court held that tribal sovreign immunity did not bar respondents’ action to quiet title to land owned by an Indian tribe, based on the rationale that the state court could exercise in rem juris-diction over the land itself without obtaining personal jurisdiction over the sovereign landowner. The United States has long been “committed to a policy of supporting tribal self-government and self-determination.” National Farmers Union Ins. Cos. v. Crow Tribe of In-dians, 471 U.S. 845, 856 (1985). A tribe’s sovereign immunity from suit is one important protector of tribal autonomy. Additionally, the United States, as a sovereign landowner that has waived its immunity from suit only in specific circumstances and only in federal court, see Quiet Title Act, 28 U.S.C. 2409a, has an interest in ensuring that state courts do not quiet title to land owned by the United States based on the rationale adopted by the Washington Supreme Court.”

    4. 11.4

      Here is another tribal land dispute case taken by the Supreme Court, including its most most up-to-date guidance on Article III jurisdiction relative to acts of Congress taking it away: Patchak v. Zinke, No. 16-498. This is an actual decision, issued February 27th.

    1. 10.1

      Thanks. The interesting part of this appeal is to avoid mandamus restraints by stating that:
      “The Board’s decisions in the Proceedings are immediately appealable under 28 U.S.C. § 1295(a)(4)(A) via the Collateral Order Doctrine, which applies to agency adjudications rejecting sovereign immunity claims. [citing cases from other circuits.]”

      1. 10.1.1

        Until this unusual appeal is accepted will the APJ panel proceed to enter a final judgement, since the absence or non-participation of a party does not require stopping a pending IPR, and this IPR was properly initiated against a then-complete patent owner that did not have any immunity [the alleged assignment occurred afterwards here].


          The point of the PTAB being put on notice is that its decision is suspect.

          Proceeding in the face of this to drive towards final judgement is imprudence defined.

  2. 9

    Dennis, this is re “The case will be appealed to the Federal Circuit — I expect the court will be willing to hear a mandamus action, but we may have to wait until a final decision of validity — something that the equitable owner Allergan has been working hard to avoid.”
    Others have also speculated on a mandamus attempt here. However, I believe this runs afoul of some general case law that courts should not normally intervene in on-going [uncompleted] administrative proceedings. [This was a denied motion here, not a decision.] I believe that legal principle has been applied to ongoing PTO interferences, and to attempts to stop reexaminations? Also note that if the alleged change of ownership of the patents in these IPRs was actually not [under the broad exclusive license and control grant-back to Allergan] that the tribal immunity issue is not even ripe for decision. My understanding is that these IPRs are not far from a final decision?

    1. 9.1

      the tribal immunity issue is not even ripe for decision.

      Not so – the immunity item is a jurisdiction question, and applies immediately.

      1. 9.1.1

        That might be the case if the this was an IPR started against a party with immunity, but it is not. The IPR was started against a party with no immunity who is later on trying, by motion, to substitute another party that might have immunity.


          Does not matter Paul – jurisdiction is ALWAYS a relevant question.


            The obvious hypothetical example case is the following.

            A tribal council of an unrecognized tribe owns property, which is the subject of an action to quiet title.

            During the proceeding, the tribe is recognized, and the tribal council become a dependent sovereign.

            The now sovereign tribal council immediately motions for dismissal of the action for lack of subject matter jurisdiction.



              I am not sure that your hypothetical tracks appropriately.

              In your hypothetical, there is no transfer of the property under question.

              Instead, the hypothetical more or less is about the nature of the person who consistently owned the property – the owner legal status – evolving.

              Here, we have a very different situation. Here, the property ownership has not evolved at all – in the sense of a single owner’s legal status evolving.

              Here, the thrust (instead of on any one evolving owner) is on a de facto encumbrance on the alienation of that single property form one owner to another.

              Patent property was intended to be fully and freely alienable. I hesitate (but do not preclude entirely) to embrace any notion of “subtle” or de facto restraints on alienation of the patent property.



                Are you sure? I reach the limit of my legal expertise with this hypothetical. There might have to be at least a pro-forma transfer of property from the pre-recognition tribal council to the recognized tribal government. Also the asset in question might actually be transferred from a plethora of private profit and non-profit US entities holding shares in the property to a public tribal entity. The hypothetical could at least involve pro forma alienation of a property from at least one US non-tribal owner to a tribal sovereign.

  3. 8

    May I be so bold as to ask a question? Mueller indicted a number of Russians for blogging. The subject matter of their blogging was political. They blogged anonymously. The purpose was to create confusion in the recent presidential election.

    But the act itself, blogging, I think is legal. I think it is activity that is protected under our Constitution, and not denied to anybody regardless of their nation of origin, or their political purposes. Political purposes actually is the whole point of the protection of the First Amendment.

    MM, do you have any views on whether anonymous blogging for political purposes is not only illegal, but criminal?

    1. 8.1

      Mueller indicted a number of Russians for blogging.

      Can you fill in the context? That short summary statement is not true on its face, now is it?

      1. 8.1.1

        From the Guardian, “The Russians allegedly posed as Americans to operate bogus social media accounts, buy advertisements and stage political rallies.”

        They certainly try to hide the fact that they were Russians. But the whole point of anonymous blocking is to hide one’s identity. Thus, the indictment basically reduces to the fact that they were Russians hiding their identity while engaging in blogging, buying advertisements and staging political rallies. But how is that a crime if anonymous Americans could do the same thing and not be subject to any criminal violation?

        Would it be a crime for a Democrat depose as a Republican and say crazy things? Ditto the converse? It happens all the time. One of the major complaints here by Night is that some of the bloggers here are not what they seem to be. But is this a criminal offense?


          They certainly try to hide the fact that they were Russians.

          Golly gee, I wonder why?

          But the whole point of anonymous blocking is to hide one’s identity.

          Try to believe it, folks.

          Look, Ned: I know that you have your face pressed up to the rightwing pu k e funnel 24-7. The rest of us just aren’t as st up id as you are. Twist in the wind, bro’, along with your @ h0le perznert and the rest of your j@ c ked-up dying party of greedy white r@ cist mis 0gynist @ h0le ignorami.

          If you need the help of an army of tr 0lls from another country to win elections, then at least be open about it. Because you’re very serious, Ned! Truly one of the deepest thinkers around.


          I was looking for more details specific to the indictment (not a news source describing their reactions or a generic version).

          Something is getting lost in translation – do you have a link to the actual indictment?

          Malcolm / put down the h a t e pipe – your rant is nothing but mindless ad hominem and in no possible way advances any type of dialogue.


          Mueller indicted a number of Russians for blogging.

          No, Mueller indicted a russian conspiracy to influence our elections, and the mechanism by which they did so was blogging.

          But how is that a crime if anonymous Americans could do the same thing and not be subject to any criminal violation?

          Because one group of people are Americans and the other are not. That’s like asking why bribery is illegal when it’s not a crime for one person to give another person money. As Calvera said – In Texas, only Texans can rob banks.


            Random, seriously? If one has a right to do something, one has a right to do something. It makes no difference what their motive is or was.

            Mueller is seeking to criminalize legal activity. I was just trying to point that out.

            I wonder if some smart lawyer can enter a special appearance on behalf of the Russians to argue that they cannot be guilt of a crime just because they do something they have a right to do, like blog, where most people lie like dogs anyway because most such communications are anonymous.

            To be sure, there is some illegal activity alleged as well: stealing the IDs of Americans to establish themselves as Americans when they were not. But that is a separate crime. Blogging, advertising, organizing demonstrations are all quite legal.


              To be sure, there is some illegal activity alleged as well

              That’s kind of a rather important point, eh?

                1. I am not sure (IANAL), but I believe that the Russian government could have manipulated the US election legally if Russian agents set up a 501 (c) (4) organization and made sure to make contributions that did not cross the bounds set by Citizens United v. FEC and by v. FEC.

                  This subject is not as completely off-topic as it might seem.

                  From the standpoint of the Russian Federation, the USA has been infringing on the Russian Federation sphere of influence on the borders of the Russian Federation.

                  Mucking with the US election to elect Trump is probably the gentlest and least violent method to educate the US government that there are consequences to trampling on the interests of other sovereigns.

                2. Many thanks Joachim – of note is that activities of nationals are legal while the same activities – if performed by non-nationals is illegal.

                  That directly deflates Ned’s alarm.


                Really good points Joachim.


            Thanks Random – I thought that there had to be something being lost in translation.

  4. 7

    IPR actions are not the “type of suit” to which tribal immunity applies at common law since petitioners are not seeking anything from the tribe (only cancellation of its valuable property rights).


    Spare us, Dennis. Those claims are junk and you know it.

    Any “value” they have is predicated solely on one’s willingness to swallow the sham “transfer of rights” that has taken place.

    Allergan is horrible company and St. Regis is just as rotten. Rotten l0 wlife greedy people and sc um b@ g attorneys.

    That’s all anybody needs to know. If you have questions, just ask.

    1. 7.1

      Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1250 (Fed. Cir. 2000) (a “party that has been granted all substantial rights under the patent is considered the owner regardless of how the parties characterize the transaction that conveyed those rights.”).

      That’s called “justice”, scriveners.

      1. 7.1.1

        MM, I haven’t read the case yet, but it struck me that all that discussion amount sovereign immunity is pure dicta given the holding that Allergan retained all substantial rights. One cannot call something an assignment when in fact it is not an assignment.


          Which is in part such a shame that the proper finding of “Sham” was not annunciated by the PTAB.

    2. 7.2

      If you have questions, just ask.

      Will you ever be able to recognize that the Ends do not justify the Means?

      For example, clench tight your eyes and just pretend that claims that you would find perfectly reasonable become in the situation as presented here. Take away your “sniff” mewling and try to focus on the bigger picture.

      1. 7.2.1

        clench tight your eyes and just pretend that claims that you would find perfectly reasonable become in the situation as presented here

        Pretty much nobody with an ounce of ethics who has “perfectly reasonable” claims is going to engage in a sham transaction with some Indian tribe to avoid an IPR.

        I know this is a hard lesson, “anon”, but not everybody thinks like you do. I realize for a lot of people life is just a big game that you try to win by amassing as much wealth and property as you can by any means necessary. That’s just not true of everybody. And I have a news flash for the Machievellians out there: watch your back. Things change quickly.


          You have not pulled your head out.

          All that you have done is declare that the legal issue need not be looked at.

          Please do as I asked – focus not on your dismissive mantra and focus on the legal issue.

  5. 6

    It is of course possible to deny that the right to a jury trial exists in patent cases, as Mark Lemley has recently done in his article Why Do Juries Decide if Patents are Valid? But H. Tomás Gómez-Arostegui and Sean Bottomley have shown in their amicus curiae brief that Lemley’s historical account is riddled with errors, because in fact courts of equity routinely sent cases to the law courts for final disposition in which all questions of fact were resolved by juries. After an exhaustive study, they conclude that:

    link to

    Pretty much anyone that is intellectual honest and looks into one of Lemley’s papers finds that the paper is riddled with errors. (That are almost assuredly intentional.)

    1. 6.1

      Night, do not be confused by the fact that Chancery was the place where the writ scire facias was returned. The writ was filed on the law side of Chancery, and the jury trial was conducted at King’s Bench. For the purpose of the scire facias, the two courts were considered one court.

      Whether or not courts of equity asked the law courts to consider the validity of a patent if raised in response to a request for injunction is somewhat irrelevant to the question of whether there is a right to a trial by jury when the remedy being sought is the revocation of one’s patent. In England there was no collateral estoppel. Thus a ruling by a court that a patent was invalid in a case that originated as a request for an injunction did not actually revoke the patent. The patent owner could bring further actions and more than one patentee did, some winning a ruling of validity in the second actions.

      Your post here points to a fundamental confusion that both you have Oil States counsel have/had about this case. The issue is not whether generally infringement actions, a request for injunctions, where validity was raised as defense, had a right to a jury trial. The issue is whether a patent owner had a right to a jury trial if the action was an action to revoke his patent for invalidity.

      1. 6.1.1

        Perhaps. But Lemley is still wrong.


          Night, quite.

          There is also a burrowing dispute between Mossoff and Oren Bracha on the issue of whether patents were property in England or simply instruments of royal prerogative used to advance government policy objectives. Bracha openly criticized Mossoff and his Harvard thesis, and became the darling of the supporters of IPR, being cited very, very often by amicus briefs.

          But as pointed out by Distant Perspective, English patents were the highest former property and could not be revoked even by the Crown. The Crown had to pursue revocation actions in the courts. As Distant demonstrated, while the Privy Council considered patent revocation petitions, the remedy was actually a threat to the patent owner to file a scire facias action if necessary less he voluntarily acted in accordance with the ruling of the Council. Thus Oren Bracha was completely wrong – at least at the time of the founding of the United States.


            It outrages me that these professors seem immune to ethics complaints. They–to my mind–are very clearly misrepresenting cites and not citing to sources directly contrary to their thesis.


              My comment vis a vis ethics appears to have been removed…

              (or maybe it was just snagged in the “do not have a dialogue” filter….)


                As I thought…

                Your comment is awaiting moderation.
                February 27, 2018 at 10:22 am

                It is not so much that they want to play “fanatasy land” with their wishful thinking – it is that they have no compunction to misrepresenting what their wishful thinking is to the courts or to students (who cannot tell the difference).

                As I have posited previously, attorneys have a code of ethics due to the proximity we have with shaping law. Law professors should have at least double a strictness of ethical duties given their attempts to shape law (in the pose of “masters” of the law), as well as their position in shaping the minds of future attorneys.


              Well, Night, everyone noticed the Historians brief in Oil States. Everyone. See, e.g., Epstein’s citation to the Historian’s brief in his recent article on Oil States. link to

              I daresay, it will be a long time hence that Lemley regains any credibility whatsoever. He has been exposed as a hack.


                Sorry to break it to you Ned, but Lemley’s following has not dissipated one iota.

                People who follow him employ the “6-is-a-genius-because-he-agrees-with-me” mindset.

                1. anon, the snakes that follow the putative St. Patrick are welcome to continue to worship an empty suit, but no court worthy of its integrity will ever again cite one of Lemley’s article as “authority.” He is finished. Once one’s reputation for honesty is ruined, it cannot be restored. Like a fallen “angel,” he would have to leave town, adopted an new name, and preferably, change his ways.

                2. but no court worthy of its integrity will ever again cite one of Lemley’s article as “authority.”

                  I can easily guarantee you that a court WILL do so.

                  As to court – any court – being “worthy of its integrity,” that is more than just a little bit of a loaded statement.

  6. 5

    It is interesting that waiver was not a basis of the decision. In this situation, the IPR was instituted, and Allergan filed its response. It was to the point of having the hearing scheduled.
    Saint-Regis Mohawk Tribe did not acquire the patents until after the institution. The patents were acquired with the IPR condition. Since this condition already existed, it would be an implicit waiver by the tribe when the patents were acquired.
    If the tribe did not want to be part of a suit, they could have declined to acquire the patents with the IPR condition already attached.
    It seems that this should have been included as an alternative basis for affirmance.
    The Board’s reasoning is more focused on when the IPR is filed and instituted after a tribe owns the patents.

    1. 5.1

      just for jakes…,

      Your comment is awaiting moderation.
      February 26, 2018 at 5:06 pm

      Not sure that your analysis carries. The assertion of immunity could not attach prior to ownership, and if (properly found), such an assertion could only be applied AFTER ownership established it.

      You cannot waive what was not there, and you cannot find affirmative waiver before the possibility of applying waiver.

  7. 4

    I don’t really understand the tribe’s sovereign immunity argument. Maybe someone can explain it.

    The ultimate question in Inter Partes Review is really whether a patent claim should have been granted by the USPTO in the first place. It involves a challenge to patentability of one or more patent claims. “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. 311(b)

    Inter Partes Review is not about whether someone can or cannot sue the tribe for patent infringement and obtain damages for any such infringement, or even whether a tribe can or cannot grant its own “tribal patents” applicable solely within its own jurisdiction. Therefore, unless someone can explain the tribe’s case, at this point I tend to agree that IPR actions are not the “type of suit” to which tribal immunity applies at common law, and in IPR actions, the jurisdiction is in rem – over the patent – rather than in personam – over the patent owner.

    1. 4.1

      cannot sue the tribe for patent infringement and obtain damages for any such infringement

      That’s not the point of the immunity assertion.

      The point of the immunity assertion is that NO third party (one with standing or otherwise) can drag the tribe into any judicial forum (be that an Article III forum or otherwise) without the consent of the tribe.

      This part of the item mirrors (exactly) state immunity.

      Your focus is not on the correct elements of what immunity carries.

      And once again, the designation of “in rem” does not matter for this legal point.

      1. 4.1.1

        In that case, it seems to me that they dragged themselves in when the obtained a patent. If they want an enforceable right then they need to play by the same rules as everyone else and have its validity adjudicated. Or do they want to have their cake and eat it too?

        However, I suppose one might argue that they get to choose the forum (i.e. not the USPTO, but a US district court), and when (at the time of an infringement action and not before). If that’s what you mean, then thanks.


          Congress decides when tribal sovereign immunity applies and not a rogue administrative agency.

          You are completely wrong.

          It may seem unfair, but sovereigns don’t play by the same rules as everyone else. IANAL, but I have consulted in international legal disputes.


            It’s unfair to characterize the Patent Trial and Appeal Board as “rogue”. The case came to them, and they had make a decision one way or the other on the issues raised. They may or may not have decided wrongly, but an Article III court will ultimately determine whether they were right or wrong in their interpretation, after which the PTAB will comply. They’d only be rogue, if they tried to ignore the courts and persist in their own judgment. That hasn’t happened yet and probably won’t.


              It is absolutely fair to characterize the agency as rogue.

              The definition fits.


              Mark, your voice of reality will be unappreciated by the rant crowd here, some of which don’t even know that the drug company paid the Tribe for the sham title change attempt to escape its IPRs, not the other way around.


                “voice of reality”….

                Give Ned back his “6-is-a-genius-because-he-agrees-wth-me” shtick.



          You appear to not recognize the concept of sovereign immunity – it is difficult to gauge a reply that would make sense to you if you lack that basic understanding.

          (The short of it is that Sovereign Immunity expressly does create an uneven playing field)

  8. 3

    I posted this comment earlier on IPWatchdog, but it is more relevant on this thread.

    To sum up my discussion below, in their quest to murder the US patent system and do possibly unrecoverable damage to the US political, economic, and social system, the APJ clowns of the PTAB simply don’t care about the law as Gene has so ably pointed out in the article that starts his thread on this subject

    A long time ago I consulted for the State Department with respect to the international telecommunications legal regime, which was defined by the CCITT-ITU back then. The CCITT-ITU seems to have been renamed ITU-T. The telecommunications and telegraphy standards constitute treaties between sovereigns even though only AT&T had real interest in the case of the USA before the breakup. Thus the US State Department consulted with AT&T to obtain advice on a given issue. In the event of a genuine dispute between sovereigns, the parties would agree to adjudication by the ICJ or in rare cases by ITLOS. I think now a trade related telecommunications case might go before the Appellate Body of the WTO, but WTO adjudication of this sort post-dates my time, and I would have to review the rules and regulations with respect to international telecommunications. Before the breakup, the USA would be a party in such a proceeding, which would be directed by the State Department. AT&T would provide consultation.

    While the decision is more coherent than the typical PTAB final written decision, it seems casuistical and to a large extent irrelevant. (IANAL. An expert on sovereign immunity in US law should comment.)

    As I understand, a sovereign is immune to civil and criminal proceedings unless the sovereign agrees (or — in cases of tribal sovereign immunity — until Congress defines tribal sovereign immunity to be defeasible in a specific situation).

    All the discussion of real party in interest or essential party seem irrelevant to the Doctrine of Sovereign Immunity. The agreement is not a sham legally, and action by the PTAB might deprive a tribal sovereign of a revenue stream and thus constitutes a civil action to which a tribal sovereign is supposed to be immune unless Congress says the tribal sovereign is not immune.

    I understand that the anti-patent mafia is already attempting to tear the heart of the US legal, political, and social fabric. Thus from the standpoint of the USPTO capos and button men, trying to claim a power heretofore reserved only to Congress makes perfect sense, but it is just one more stab to the heart of the USA.

    I also must point out that the decision would not apply if Dubai (or the UAE) had made the deal with Allergan. The UAE and Dubai are full independent sovereigns. Dubai has announced it will encourage local tech startups, many of which might seek US patents. It would make perfect sense for Dubai to purchase IP from its startups on the model of the St. Regis sale. If one full sovereign evaded the post-grant review proceedings today, they all will tomorrow.

    Then many foreign startups would be immune to the PTAB con scam, and post-grant review proceedings become an open gate through which foreigners storm and seize the US tech markets that depend on IP.

    This logic makes it clear that the anti-patent mafia constitutes an anti-American seditious conspiracy, which is killing American hi-tech in a despicable un-American effort to eliminate new disruptive local competitors.

    If Trump can fling the accusation of “treason” at Democrats, who don’t applaud him, patent system advocates have much more reason to fling the accusation of treason at the anti-patent mafia.

    1. 3.1

      You might have to dial back your “American hi-tech” plank, given that the US patent system is open for use regardless of the entity being US or not.

      1. 3.1.1

        I suppose the PTAB could potentially ignore the sovereign immunity associated with the sovereign wealth funds of China, Norway, Australia, Russia, South Korea, Iran, etc. exactly as tribal sovereign immunity is being ignored.

        All of these funds of full sovereigns could purchase US patents exactly as the St. Regis Indian Tribe did.

        I find the argument of the PTAB mind-boggling because once upon a time and not very long ago sovereigns went to war on account of the type of crap that the PTAB is shoveling on the legal system — by the way the sovereigns that went to war in the past include US Indian tribes. At least in the past policies that created casus belli were not typically made by a rogue administrative agency.


          Foreign nations do not carry the sovereign immunity aspect that we are talking about.


            Then I misremember some of the tariffing issues. Isn’t sovereign immunity at least part of the source of embassy inviolability?

            This question is pure curiosity. IANAL, and I never studied the Doctrine of Sovereign Immunity in detail because it was only a small part of the cases with which I was dealing (point-to-multipoint billing and tariffing in situations where some of the conference legs were international), and there were experts that understood the Doctrine.

            Of course, I am talking about international law and not US national law.


              I am not saying that the version of sovereign immunity you reference do not exist – just that they are different.

    2. 3.2

      the anti-patent mafia constitutes an anti-American seditious conspiracy, which is killing American hi-tech in a despicable un-American effort to eliminate new disruptive local competitors.

      Please name some names, Joachim. Who’s at the top of this “conspiracy”? Let everyone know.

    3. 3.3


      Feel free to not answer (not my intention to put you in trouble), but with your newish Patent Agent status, do you carry malpractuce insurance?

  9. 2

    To sum up this decision in one sentence: “We’re the PTAB so we can do whatever we want”. Not a surprising result. Looking forward to reversal on appeal…if Congress doesn’t act first to remove tribal sovereign immunity in PTAB proceedings.

    1. 2.1

      Regardless of the specific rationale underpinning the PTAB decision, the only satisfactory decision they could reach is one against the patentee. Were the decision to go in the other direction, then any subsequent court action would be undertaken by the IPR petitioner, whose interests in someone else’s tribal immunity are secondary (at best) to their interest in defeating the specific litigation against them. (Not to mention that issues of standing and jurisdiction are more questionable when an IPR petitioner is trying to overturn a PTAB institution decision.)

      This way, the St. Regis Mohawk Tribe will be arguing for their own interests with respect to tribal immunity, which could potentially have ramifications beyond IPRs.

      1. 2.1.1

        APOTU, I’m not following you. Had the PTAB had said, SRM is right, they’ve got tribal sovereign immunity, case dismissed, then Mylan would have appealed on that specific question, and *SRM* would have defended on the question of tribal sovereign immunity. The substantive questions of patentability would not yet have been dealt with by the PTAB, so the sovereign immunity would be the only question at issue. If in that case the PTAB was reversed, the case would then have been remanded to the PTAB for further consideration (institution, etc.).

    2. 2.2

      Atari Man,

      As I noted on the previous thread, the fact that Congress is contemplating such a change in law de facto points out the current situation is otherwise.

      We have the PTAB clearly out of place on this point.

      The far better thrust would have been declaring the deal a sham deal and avoiding any discussion of tribal immunity.

      1. 2.2.1

        (Which in some not insignificant way reflects how the PTAB has also declared (even after one of its own earlier decision said otherwise) that the PTAB does not care about any factual predicate to the 101 legal decision.

        These moves undo the olive branch gestures that the PTAB had made while the Oil States Case was directly before the Supreme Court.

        I certainly hope that the Supreme Court is taking notice of this.

        I can only imagine how fast James Madison must be spinning in his grave.


          I can only imagine how fast James Madison must be spinning in his grave.

          Nobody cares about this junk patent, “anon.”


            The issues is NOT about “this junk patent.”

            Pull your head out. My points are to the larger issues of law that apply to ALL patents.

  10. 1

    “Although the PTAB identified state sovereign immunity as a different question, the ruling here certainly suggests that”… that…

    …that the PTO and the courts will give states immunity, but not tribes, on the flimsiest of “courts of the conqueror” rationales?

    1. 1.1

      Was there not a decision in December that indicated that even State immunity would not be given deference by the PTAB?

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