Today, in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, the Federal Circuit held that tribal sovereign immunity does not provide a right of immunity in inter partes reviews (IPR).

In an opinion by Judge Moore, writing for herself and Judges Dyk and Reyna, the Federal Circuit focused on the PTO Director’s ability to decide whether or not to proceed with an IPR, a decision which ensures that “if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of that proceeding.”  This aspect of IPR is sufficient to treat IPR as a proceeding “in which an agency chooses whether to institute a proceeding on information supplied by a private party,” exactly the type of proceeding which the Supreme Court has previously held would not be subject to state sovereign immunity, and by extension to tribal sovereign immunity.  (CCIA joined an amicus brief suggesting the Federal Circuit deny tribal immunity on this ground, among others.)  

The panel’s opinion does not decide the issue of state sovereign immunity, but strongly suggests that a similar determination will be reached when the issue is appealed.

While the panel’s opinion is clear and well-supported by the case law, a petition for certiorari would not be surprising, especially given the Court’s recent jurisprudence with respect to tribal immunity.