Federal Circuit to Weigh in on Tribal Immunity

A federal appellate court is on its way to deciding whether patent holders can look to tribal immunity as a shield from the Patent Trial and Appeal Board.

A panel of judges for the U.S. Court of Appeals for the Federal Circuit heard arguments in a case questioning whether a Native American tribe’s sovereign immunity can protect patents it holds from PTAB review. The court appeared to be on track to reach a split decision, with two judges focusing on whether the company that developed a patented product was only benefitting from giving its patents to the tribe by having the tribal shield and the third judge seeming to favor the patent holder by saying the case looked to be more akin to a civil dispute, where tribal immunity would apply.

Last year, pharmaceutical company Allergan gave its patents for dry eye relief product Restasis to the St. Regis Mohawk Native American tribe and licensed them back. The move was designed to protect Allergan’s patents from an inter partes review process brought by competitor Mylan by shielding them with the tribe’s sovereign immunity. Although the case caught the eye of IP attorneys, Allergan’s move is similar to a common practice where a company relies on a state university to conduct research and file a patent and use state sovereignty to avoid challenges in the courts.

For Allergan, however, it didn’t have the support or research of a state university. And the distinction for the company might come down to the question of what Allergan gained from the transaction other than patent protection.

To read this story and other complete articles featured in the June 11, 2018 print edition of Law Week Colorado, copies are available for purchase online.