2018 started off with a sovereign immunity bang, with the Saint Regis Mohawk Tribe filing a motion that implicitly suggests that the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) would only rule against them due to financial self-interest and political pressure.
(For more background on the Allergan/Saint Regis Mohawk IPRs, you can read my earlier posts on the topic. [1] [2])
Litigation Waivers and Sovereign Immunity
In order to understand why the Tribe chose to file such an unusual request, we need to go back a few weeks. In mid-December, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. started settling one of the more contentious issues in front of it—the question of whether sovereign immunity applies to inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. (IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.).
An expanded panel in IPR2017-01186 (and companion IPRs), where Ericsson is requesting a review of patents owned by the University of Minnesota, determined that “IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. is an adjudicatory proceeding of a federal agency from which state entities are immune.” This confirmed earlier IPRs which found that Eleventh Amendment sovereign immunity applies to IPRs.
However, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. also decided “that Patent Owner has waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.” In other words, if you sue someone using a patent, you waive your sovereign immunity with respect to their IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. of your patent. While this is not the rationale I would have preferred to see used in determining that sovereign immunity doesn’t bar review of a patent—I believe that sovereign immunity does not apply to IPRs, which are an action of a federal agency, as articulated in the brief we filed with the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.—it’s an important first step in preventing efforts to render IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. meaningless by the use of shielding ownership structures.
As expected, the University of Minnesota is requesting a writ of mandamus from the Federal CircuitSee CAFC, asking the Circuit to overturn the PTAB’s decision.
Responding to Ericsson
After the Ericsson decision, the basic assumption was that the Allergan/Saint Regis IPRs would also be covered under litigation waiver and thus sovereign immunity would be waived in these IPRs as well. It appears that the Saint Regis Tribe wanted to preemptively lay out an appeal argument that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. improperly decided to expand the panel hearing their case, and that they were doing so in response to improper influences.
The Saint Regis Tribe’s request asks for information about how judges are financially compensated, asks for copies of the performance reviews of the judges deciding their case, and effectively accuses the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. of conducting off-record ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. conversations about the case, while providing no evidence of any such conversations. The obvious implication is that the Tribe is asserting that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. behaved improperly.
People who make a living complaining about IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected. occasionally accuse the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. of “stacking panels”—of putting additional judges onto a PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decision in order to rule against a company they don’t like. It even came up during the Oil States argument, although it doesn’t appear to have been considered particularly important there. The Saint Regis Tribe appears to be buying into this conspiracy theory, and getting ready to litigate it.
The reality, unsurprisingly, is that those complaints are baseless. The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. does expand panels on occasion, but they do it for very specific reasons—and those reasons are hardly secret. The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. expands panels to ensure that important questions (like, for example, if sovereign immunity applies to IPRIntellectual Property Rights. Usually associated with formal legal rights such as patent, trademark, and copyright. Intellectual property is a broader term that encompasses knowledge, information, and data considered proprietary whether or not it is formally protected.) are decided by a panel that includes the most senior PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges, and to ensure that panels apply the law properly in instances where some members of the original panel appear to be applying the law improperly.
Setting aside the issue that discovery is generally directed at the petitioner or patent owner, not at the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., discovery in IPRs is generally disfavored, and will not be granted absent meeting a set of factors called the Garmin factors.
The very first Garmin factor? There must be “more than a possibility and mere allegation” that the discovery request will produce relevant and useful information. But the Tribe hasn’t produced any evidence that there’s any ex parteA Latin term, used as an adjective, indicating that an act (typically an adjudicative process) is done at the initiative of one party only, and without notice to other parties or the public. This term characterizes the patent examination process. conversations off-record, or anything else that would suffice to justify their implication that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. is only going to rule against them because of financial and political interests. They’re making baseless allegations and trying to obtain discovery based on those allegations.
The Tribe’s request is likely to be denied, and justifiably. The sovereign immunity laundering tactic that Allergan is employing was always questionable. The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. determining that it isn’t an acceptable tactic shouldn’t surprise anyone—and implying that the only reason the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. would rule that way is due to financial self-interest is the kind of thing you only do when you know you’re losing on the legal issues.
