Board Rules That Tribal Immunity Is Unavailable To Avoid Inter Partes Review Challenge

On Feb. 23, 2018, the Patent Trial and Appeal Board ("Board") ruled an assertion of Tribal sovereign immunity would not avoid challenges to certain patents that had been assigned to the Saint Regis Mohawk Tribe ("the Tribe"). See Mylan Pharm., Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper No. 130 (February 23, 2018). In our earlier post entitled "Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review" we reported that certain Orange Book-listed patents had been assigned to the Tribe, which licensed the patents back to the original assignee, in an effort to obtain dismissal of the pending inter partes reviews ("IPRs") against those patents.

As background, Mylan and others had joined in IPR challenges, with a consolidated hearing scheduled for September 2017. IPR2016-01127, Paper No. 130 at 2. Less than a week before that hearing, counsel for the Tribe contacted the Board to notify them that the Tribe had acquired rights to the challenged