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Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions, PTAB Litigation Blog

February 2018

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In a case of first impression, the PTAB recently decided that the doctrine of tribal sovereign immunity does not apply to inter partes review proceedings. See Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127; IPR2016-01128; IPR2016-01129; IPR2016-01130; IPR2016-01131; IPR2016-01132, Paper 130 ("Mylan"). Prior to the Mylan decision, the PTAB had never addressed a claim of tribal sovereign immunity by a patent owner. Just over a year ago, the PTAB decided in Covidien LP v. University of Florida Research Foundation Incorporated ("Covidien") that Eleventh Amendment sovereign immunity applied to PTAB proceedings and, therefore, insulated arms of a state, such as state universities, from PTAB actions absent consent. see, PTABLitigationBlog post regarding Covidien; see also PTABLitigationBlog post regarding Neochord. In Mylan, however, the PTAB declined to expand its Covidien holding to provide immunity to Indian tribes.

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