Clearly wishing to maintain the momentum and initiative in its inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, the St. Regis Mohawk Tribe and Allergan jointly filed a Notice of Appeal to the Federal Circuit yesterday, February 28, 2018, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A), and 37 C.F.R. § 90.2 for the PTAB's decision denying the Tribe's Motion to Dismiss IPRs in those patents assigned to the Tribe by Allergan last fall.  The parties indicated in a footnote that Allergan was identified as a "patent owner" on the appeal solely due to the PTAB's order that the caption must so designate what the parties contend is an exclusive licensee.  The Notice bases the procedural competence of the appeal under 28 U.S.C. § 1295(a)(4)(A) on the collateral order doctrine, which according to the Notice can be invoked to overcome the final judgment rule under 28 U.S.C. § 1291 regarding questions of tribal sovereign immunity; cited in support of this application of the doctrine to tribal immunity questions are several appellate court decisions, including Chehazeh v. Attorney Gen. of U.S., 666 F.3d 118, 136 (3d Cir. 2012); Burlington N. & Santa Fe Ry. Co. v. Vaughn, 509 F.3d 1085, 1094 (9th Cir. 2007); Osage Tribal Council ex rel. Osage Tribe of Indians v. U.S. Dep't of Labor, 187 F.3d 1174, 1179 (10th Cir. 1999); In re Board of Regents of Univ. of Texas Sys., 435 F. App'x 945, 947-48 (Fed. Cir. 2011); and Baum Research & Dev. Co. v. Univ. of Massachusetts at Lowell, 503 F.3d 1367, 1369 (Fed. Cir. 2007).

The Notice also recites a litany of grounds for the appeal; for the Tribe these include:

• Whether the Board erred in denying the Tribe's Motion to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign Immunity.

• Whether the Board erred in finding that inter partes review is not the type of "suit" to which an Indian tribe would traditionally enjoy immunity under common law, declining to find the holding in Federal Maritime Commission v. South Carolina State Ports Authority, 535 U.S. 743, 754-56 (2002), applies to Tribal sovereigns as it does State university sovereigns.

• Whether the Tribe is entitled to a dismissal of the Proceedings under tribal sovereign immunity because an IPR is adjudicative in nature, Tribes have inherent immunity from suit, and absent express abrogation, there is no indication that Congress intended the Tribe be subject to actions in this forum.

• Whether the Board's conclusion that it is not adjudicating claims and that it has no authority to provide a remedy against the Tribe in the Proceedings means the Board also lacked statutory authority to proclaim the Tribe lacks immunity from participation in the Proceedings.

• Whether the Board erred in concluding that tribal sovereign immunity is a defense that may only be raised by statutory authority, rather than a jurisdictional threshold issue that can be raised at any time in the Proceedings.

• Whether the Board erred in holding that the Tribe may not assert immunity from participation in the Proceedings based on the Board's conclusion that the Proceedings are "federal administrative proceedings" despite the fact that the Proceedings were instituted and prosecuted by private parties and as such, were private actions brought by Petitioners.

• Whether the Board erred in holding that it does not exercise personal jurisdiction over the Tribe as a patent owner.

• Whether the Board erred in finding that the Tribe's assertion of its sovereign immunity does not serve as a basis to terminate these inter partes review Proceedings.

• Whether the Board erred in finding that the Tribe is not an indispensible party to the Proceedings.

• Whether the Board erred in finding that Allergan obtained all substantial rights in the patents at issue in these Proceedings.

• Whether the Board's Decision should be found unlawful due to any of the statutory reasons set forth in 5 U.S.C. § 706(2).

• Whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum.

• Whether the rules applied or misapplied and decisions rendered during the Proceedings violated the Tribe's due process rights to a fair hearing.

And for Allergan:

• Whether the Board erred in finding that Allergan obtained all substantial rights in the patents at issue in these Proceedings.

• Whether the Board erred in finding that Allergan "remains an effective 'patent owner' of the challenged patents in these proceedings" and erred in denying Allergan's requests and motion to withdraw from the Proceedings.

The Tribe and Allergan (and the PTAB) remain under the specter of the rule for completing an IPR within twelve months of institution, which in this case is March 31, 2018.  This date is already delayed due to the Board's decision to consolidate IPRs from different parties and use the consolidation decision date as the date from which the deadline was calculated.  The Board has the discretion to extend this date by an addition six months under appropriate circumstances, however.  And in many ways it would be appropriate in this case (inter alia, being as the PTAB asserted in its denial decision a question of first impression regarding whether tribal sovereign immunity applies to IPR proceedings).  Should the PTAB deign to abide by the March 31st deadline, this Notice could be moot.  On the other hand, the Federal Circuit could order the Board to stay proceedings on the merits while it considers this appeal.  The Office has not responded to this motion, but in view of how quickly the PTAB denied the Tribe's earlier motion for discovery (see "Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances" and "The PTAB Strikes Back -- Issues Order Prohibiting St. Regis Mohawk Tribe from Filing Any Additional Papers in IPR"), it is likely that the Office's response will not be long in coming.