This Essay concerns a new frontier of crafty strategy to keep patents from review by the Patent Trial and Appeal Board (PTAB)—the invocation of tribal sovereign immunity to prevent the PTAB from obtaining (subject-matter) jurisdiction over the patent invalidity dispute.
Part I of this Essay provides background information about a current case in which the litigant has attempted to use tribal sovereign immunity in order to avoid an inter partes review (IPR) proceeding before the PTAB. Part II provides a brief summary of the current relevant law (tribal, patent, administrative, etc.) pertaining to tribal sovereign immunity in the context of patent invalidity disputes before the PTAB and applies that law to the general issue of using tribal sovereign immunity in order to avoid IPR proceedings. Part III takes the pertinent law outlined in the previous section and addresses its specific application to the PTAB’s decision in Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe. The Essay ends with a brief conclusion.
Michael E. Benson,
Patent Litigators Playing Cowboys and Indians at the PTAB,
Notre Dame L. Rev. Online
Available at: https://scholarship.law.nd.edu/ndlr_online/vol94/iss3/5