Partner María Amelia Calaf filed an amicus brief in the Federal Circuit Court of Appeals on behalf of the Software and Information Industry (SIIA) and five other entities in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. The issue before the Federal Circuit is whether a corporate entity can assign a patent to a Native American tribe for the sole purpose of allowing the tribe to invoke its sovereign immunity to avoid inter partes review (IPR). An IPR is a post-grant proceeding before the USPTO’s Patent Trial and Appeal Board (PTAB) where the PTAB reviews the patentability of one or more claims of a previously granted patent.
In the case below, Allergan assigned its patent to a Native American tribe in exchange for the tribe promising to assert sovereign immunity during IPR. During IPR proceedings, the PTAB rejected the tribe’s claims of sovereign immunity; Allergan and the tribe appealed the decision to the Federal Circuit. The amicus brief argues that sovereign immunity does not attach to IPR because it is not the type of proceeding that presents an affront to the sovereign dignity of the states or tribes. Amici also argue that Supreme Court precedents granting sovereign immunity for off-reservation activity are inapplicable to the sort of “sham transactions” between Allergan and the tribe.