St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Appeal No. 2018-1638, -1639, -1640, -1641, -1642, -1643 (Fed. Cir. July 20, 2018)
In a groundbreaking decision issued on Friday, the Federal Circuit held that tribal sovereignty immunity cannot be asserted in inter partes review (IPR). The ruling stems from an IPR of patents related to treatment for alleviating the symptoms of chronic dry eye.
Allergan Inc. owned patents relating to Restasis, a treatment of chronic dry eye (“the Restasis Patents”). Allergan sued generic drug manufacturers Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akorn, Inc. (“Appellees”), alleging infringement of the Restasis Patents. The generic drug manufacturers subsequently petitioned for IPRs of the Restasis Patents. While the IPRs were pending, Allergan transferred title of the Restasis Patents to the Saint Regis Mohawk Tribe. The Mohawk Tribe moved to terminate the IPRs—asserting tribal immunity—and Allergan moved to withdraw from the IPR proceedings.
On appeal, the Federal Circuit considered whether tribal sovereign immunity can be used to shield patents from IPRs. The panel looked to the Supreme Court’s decision in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743 (2002) (“FMC”), which reviewed the scope of state sovereign immunity in light of government agency-initiated proceedings. The FMC decision turned on whether commission adjudications “are the type of proceedings from which the Framers would have thought the States possessed immunity when they agreed to enter the Union.” The Supreme Court distinguished two categories: (1) private party-initiated proceedings similar to civil litigation, which warrant sovereign immunity application; (2) traditional agency action, which does not.
The Federal Circuit acknowledged the hybrid nature of IPR, for it possesses characteristics of both judicial and agency proceedings. Such tensions were laid bare in the tandem Supreme Court decisions Oil States Energy Services v. Greene’s Energy Group, LLC, 138 S. Ct. 1365 (2018) and SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). In Oil States, the Supreme Court recognized that IPR is “‘simply a reconsideration of’ the PTO’s original grant of a public franchise”; in SAS, the Court emphasized the way in which IPR “mimics civil litigation.”
On appeal, the Mohawk Tribe argued that IPR proceedings resemble civil litigation, noting that IPR is a “contested, adjudicatory proceeding between private parties in which the petitioner, not the USPTO, defines the contours of the proceeding.” The Appellees argued that IPR is a traditional agency action because the Board is reconsidering a grant of a government franchise, not adjudicating claims between private parties.
The Federal Circuit concluded that IPR is more like an agency enforcement action than a civil suit brought by a private party. First, the Director possesses broad discretion in deciding whether to institute review. That the agency chooses to institute the proceeding based on information supplied by a private party does not affect the Director’s broad discretion. Second, the Board may continue review in the absence of petitioner or patent owner participation—reinforcing the view that IPR is an act by the agency in reconsidering its own grant of a public franchise. Third, USPTO procedures do not mimic the Federal Rules of Civil Procedure. For example, petitioners cannot substantively amend petitions though civil plaintiffs may amend complaints; discovery in IPR is limited; and, unlike civil trials, live testimony is rare in IPR proceedings. Moreover, the mere existence of more inquisitorial proceedings, such as reexaminations, does not mean that immunity applies to IPR. To the contrary, IPR and reexaminations “have the same basic purposes, namely to reexamine an agency decision.”
In concurrence, Judge Dyk discusses the evolution of IPR as a proceeding designed to improve patent quality and restore confidence in the presumption of patent validity. History reveals that IPR is a derivative of reexamination proceedings created to offer a “second look” at patent grants.
Opinion can be found here.
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Interval Licensing LLC v. AOL, Inc., Appeal No. 2016-2502, -2505, -2506, -2507 (Fed. Cir. July 20, 2018)
In an appeal from judgment that a patent’s claims were directed to ineligible subject matter under 35 U.S.C. S 101, the Federal Circuit affirmed. The patent in suit covered computer software with an “attention manager” as part of its GUI. In a 22-page decision that follows the history of the abstractness doctrine and then applies the Supreme Court’s two-part test in Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Court found the claims to be abstract. Of note to the reader is the 17-page opinion by Judge Plager concurring in the result. But in a scathing indictment of the entire “abstractness” doctrine, Judge Plager “dissent[ed] from [the Federal Circuit’s] continued application of this incoherent body of doctrine.” Judge Plager’s opinion is well worth the read.
Opinion can be found here.
Blackbird Tech LLC v. ELB Electronics, Inc., Appeal No. 2017-1703 (Fed. Cir. July 16, 2018)
In an appeal from a district court judgment of noninfringement the Federal Circuit vacated and remanded, finding that the district court erred in construing the term “attachment surface” in a patent directed to a lighting fixture. The Court found that the district court improperly imported a limitation from an embodiment in the specification, which limitation was also originally present in the claim and expressly eliminated during prosecution “to resolve [35 U.S.C. §] 112 issues.” The Court rejected defendants’ argument that the prosecution history was ambiguous because the “112 issues” were not explained, finding that any skilled artisan would understand it to be an amendment required for patentability. Judge Reyna dissented, arguing that the limitation was required to give meaning to the limiting preamble.
Opinion can be found here.
