896 F.3d 1322
Fed. Cir.2018Background
- Allergan owned patents covering Restasis; multiple generics (Mylan, Teva, Akorn) filed IPR petitions challenging those patents after related district-court litigation.
- While IPRs were pending, Allergan assigned the Restasis patents to the Saint Regis Mohawk Tribe and the assignment was recorded with the USPTO.
- The Tribe asserted tribal sovereign immunity and moved to terminate the IPRs; Allergan moved to withdraw from the proceedings.
- The Patent Trial and Appeal Board denied both the Tribe's motion to terminate and Allergan's motion to withdraw; Allergan and the Tribe appealed.
- The Federal Circuit reviewed whether tribal sovereign immunity can bar IPR proceedings and whether the Board erred in denying the motions; it affirmed the Board.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether tribal sovereign immunity bars IPR proceedings | Tribe: IPR is a contested, adjudicatory proceeding like FMC, so tribal immunity applies to bar review | Appellees: IPR is an agency reconsideration/enforcement action by the USPTO, thus immunity doesn't apply; assignment is a sham/waiver arguments | IPR is an agency reconsideration (hybrid but primarily agency action); tribal sovereign immunity does not bar IPRs — affirmed |
| Whether the Director's and USPTO's role permits agency action against a sovereign | Tribe: petitioner-driven nature of IPR (party-defined contours) shows private-adjudicative character | Appellees: Director has gatekeeping discretion and USPTO can proceed without petitioner, showing exercise of federal authority | Court: Director's discretion to institute and USPTO's ability to continue/defend proceedings means the USPTO acts as the United States; immunity inapplicable |
| Procedural parity with civil litigation (impact on immunity analysis) | Tribe: IPR mimics civil litigation (SAS emphasis) so FMC analogy supports immunity | Appellees: IPR procedures differ substantially from district-court litigation (limited discovery, claim-amendment rules, short hearings) so FMC does not control | Court: Differences from district-court procedures (limited discovery, USPTO control, ability to proceed without parties) support treating IPR as agency reconsideration, not private-party adjudication |
| Whether other defenses (sham assignment or waiver) must be decided | Tribe/Allergan relied on assignment and immunity; Tribe argued sovereign status; Allergan sought withdrawal | Appellees argued assignment was sham and Tribe waived immunity by prior suit | Court: Declined to reach sham/waiver issues because holding that tribal immunity does not apply to IPRs disposed of the appeal |
Key Cases Cited
- Okla. Tax Comm'n v. Citizen Band Potawatomi Indian Tribe of Okla., 498 U.S. 505 (tribal sovereign immunity doctrine)
- Santa Clara Pueblo v. Martinez, 436 U.S. 49 (tribal sovereign immunity as common-law doctrine)
- Fed. Maritime Comm'n v. S.C. State Ports Auth., 535 U.S. 743 (agency adjudication v. sovereign immunity analysis)
- Alden v. Maine, 527 U.S. 706 (government political responsibility and suits by the sovereign)
- Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (IPR as agency reconsideration of patent grants)
- Oil States Energy Servs. v. Greene's Energy Grp., LLC, 138 S. Ct. 1365 (USPTO role and IPR as reconsideration of grant)
- SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (adversarial, party-directed features of IPR)
- Miccosukee Tribe of Indians of Fla. v. United States, 698 F.3d 1326 (tribes may not invoke immunity against superior sovereign actions)