On Friday, 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.) issued a ruling rejecting Allergan’s sovereign immunity claims.
As Patent Progress has previously described [1][2][3], Allergan sold their patents to a Native American tribe, licensed them back, and required the tribe to claim sovereign immunity against inter partes reviews. But, as also previously described here, there are real problems with that assertion, problems 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. identified in their decision.
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. ruled on two major issues—whether tribal sovereign immunity applies to inter partes reviews (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.) in general and whether this particular 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. could continue even if sovereign immunity applied.
Does Tribal Sovereign Immunity Apply To IPRs?
The PTAB’s answer to this question was a resounding no. First, 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. noted that there’s neither case law nor statutory reasons to apply tribal sovereign immunity to agency proceedings like 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.. Second, as I noted back in October, tribal sovereign immunity does not apply to federal administrative proceedings like 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.. 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. agreed, finding that tribal sovereign immunity does not apply to IPRs, which are of course federal administrative proceedings. And third, 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. noted that in an 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., the ultimate remedy is applied only to the challenged patent, not to the patent owner. This sort of proceeding isn’t the type of “suit” which traditionally triggers sovereign immunity.
This might also have impacts on state sovereign immunity going forward. While there are good case law reasons to consider the applicability of state sovereign immunity, unlike tribal sovereign immunity, state sovereign immunity also doesn’t apply to federal administrative proceedings and IPR’s structure makes it not the sort of suit which traditionally triggers state sovereign immunity.
Can This 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. Proceed Even If Immunity Applies?
The second question was, assuming immunity does apply—which it doesn’t—could the 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. proceed anyway with Allergan remaining in the case? Allergan, per 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. decision, remains an effective patent owner even after the transfer—a transfer that Federal CircuitSee CAFC Judge Bryson (sitting by designation) characterized as a “rental” of sovereign immunity. Judge Bryson had “serious concerns about the legitimacy” of the transaction, concerns 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. reiterated.
In particular, 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. noted that the Tribe retained only “illusory” rights to sue on the patent. They also noted that, despite Allergan and the Tribe’s insistence that the Tribe has real rights to license the patent for non-FDA uses, the Tribe is actually barred from licensing the patent in any way that might result in a product competing with Allergan’s product, whether FDA-approved or not. This provision essentially bars the Tribe from actually licensing their patent in any way, meaning that only Allergan retains any real rights with respect to the patent.
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 pointed out that the Tribe’s argument that they retained real rights to practice their patent runs in complete contrast to the Tribe’s own claims that they wouldn’t be investing any money in the patent, but only holding the patent.
Based on these factors, 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. determined that Allergan, not the Tribe, is the effective patent owner and thus determined that the 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. can continue whether or not sovereign immunity applies to IPRs.
In other words, not a single judge—whether of 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. or Federal CircuitSee CAFC variety—who’s looked at the Allergan transaction has been impressed.
What’s Next?
The 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. schedule resumes, with a final decision due by June. The Tribe and Allergan are likely to appeal the decision on immunity, along with any adverse decision on the patents at issue, to the Federal CircuitSee CAFC.
Given Judge Bryson’s existing opinion of the Allergan deal, that doesn’t seem likely to be a productive appeal.