Michael A. Siem — a partner in the firm’s Intellectual Property and Hatch-Waxman ANDA Litigation and Counseling Practice Groups — commented for Managing Intellectual Property on the Federal Circuit’s July 20 Saint Regis Mohawk Tribe v Mylan opinion upholding the lower court’s decision that tribal sovereign immunity can’t apply in inter partes review proceedings.

“I don’t think it has such broad implications as one would hope,” he said. The opinion reasoned that inter partes review proceedings are too different from Article III courts, for which sovereign immunity was created. Michael called this decision “very narrow” as it only addresses the threshold issue and not whether immunity had been waived. “They didn’t get to fact-specific issues,” he said. “They didn’t get to whether this was a sham or not.”

Michael wrote about sovereign immunity and inter partes review with Goldberg Segalla partners Ronald M. Daignault and Debra L. Doby in a recent article for New York Law Journal. “Pharmaceutical companies, in an attempt to find creative and unique solutions to protect their patents, attempted to use Sovereign Immunity to shield the validity of their patents,” they wrote. “It is imperative to question the motive and facts surrounding the patent transfer, determine the amount of control the Tribe has over the patent(s), scrutinize the terms of the deal, and question whether the Tribe is a true owner of the patents or merely a ‘straw man’ serving at the pleasure of big pharma.”

Read the article:

• “No Tribal Sovereign Immunity at PTAB — What About State Immunity?” Managing Intellectual Property, July 30, 2018 (login required)