Sovereign immunity is being invoked in an effort to halt inter partes reviews.

In two separate opinions earlier this year, the Patent Trial and Appeal Board (PTAB) held that an inter partes review (IPR) proceeding is a type of adjudication for which sovereign immunity may be asserted. Thus, the PTAB dismissed IPRs challenging patents owned by a state university (NeoChord, Inc. v. University of Maryland, IPR2016-00208) and a state university research foundation (Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, -01275, -01276). In particular, the PTAB found that IPR procedures are similar enough to civil litigation to render IPRs subject to the sovereign immunity reflected in the 11th Amendment.

The Saint Regis Mohawk Tribe (the Tribe) in New York viewed these decisions as a business opportunity. Assuming its tribal government sovereign immunity would bar exposure to any IPR proceeding, the Tribe approached Allergan concerning six Orange Book–listed patents for Allergan’s RESTASIS® dry eye medication. Allergan accepted, and transferred its patents to the Tribe. Allergan is now challenging the PTAB’s authority in the IPRs that challenge a family of these patents. Allergan’s position is that because the Tribe is a recognized sovereign tribal government, as such, it is immune from IPR challenges.

Allergan indicated in its press release that a motion to dismiss from the Tribe is forthcoming—presumably the Tribe will obtain the necessary authorization from the PTAB before doing so. To the extent that the PTAB authorizes the filing of such a motion, the hearing for the IPRs (IPR2016-01127, -01228, -01129, -01130, -01131, -01132), which is currently set for September 15, will undoubtedly be delayed.

We will be closely monitoring this situation and if sovereign immunity is upheld, patentees wishing to minimize patentability challenges before the PTAB may wish to explore this possibility further.