On Wednesday March 28, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) granted the St. Regis Mohawk Tribe a stay. The motion for the stay pertains to the inter partes review proceedings before the Patent Trial and Appeal Board (PTAB) and the St. Regis Mohawk Tribe’s partnership with pharmaceutical giant Allergan (St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.).

The clash between the two companies began when Allergan partnered with the Saint Regis Mohawk Tribe, a sovereign Indian nation. This partnership involved the transfer of six patents that cover the company’s top-selling drug Restasis. This unprecedented move by Allergan could potentially allow them to avoid IPR proceedings in the PTAB due to the Tribe’s sovereign immunity status.

The Tribe asserted its sovereign immunity status by filing a motion to dismiss the multiple IPR proceedings only to have the motion denied. The PTAB stated “we determine the Tribe has not established that the doctrine of tribal sovereign immunity should be applied to these proceedings.”

Following the denial of the motion the Tribe filed an appeal with the CAFC, in addition to seeking a stay from the PTAB. The PTAB denied the stay and moved for a final hearing. This hearing will no longer happen as the CAFC “sua sponte expedited briefing on the merits and scheduled oral arguments for June 2018.”

The CAFC ordered:

Appellants’ motion for a stay is granted until the day after oral argument in June 2018. At this juncture, it appears that the appeals divested the Board of jurisdiction over the aspects of the case on appeal, see Griggs v. Provident Consumer Discount Co., 459 U.S. 56, 58 (1982); Princz v. Fed. Republic of Ger., 998 F.2d 1 (D.C. Cir. 1993) (appeal from denial of motion to dismiss on grounds of sovereign immunity divests district court of jurisdiction over entire case); Apostol v. Gallion, 870 F.2d 1335 (7th Cir. 1989); accord In re Graves, 69 F.3d 1147, 1149 (Fed. Cir. 1995), and that exclusive jurisdiction to resolve the threshold issue of whether these proceedings must be terminated vests in this court, and that the Board may not proceed until granted leave by this court. The stay shall remain in effect until the day after oral argument in the appeals in June 2018. The court will address whether the stay shall remain in effect or whether it will be lifted at that time based on further consideration of the merits of the appeals.

This controversial case has garnered attention from all directions including Senator Claire McCaskill (D-MO) who introduced a bill that was centered around closing the “brazen loophole” this deal may have caused.  

It is worth noting that a Native American Tribe is not the first group to use sovereign immunity to bypass IPR proceedings. The University of Florida Research Foundation (UFRF) had three IPR proceedings ended after they asserted their sovereign status over Covidien LP. The PTAB stated public research universities have some protection from IPR proceedings afforded to them under the 11th Amendment.

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