CAFC backs PTAB in Mohawk case; tribe and Allergan lose; superior sovereign

The outcome:



Mylan Pharmaceuticals, Inc., petitioned for inter
partes review (“IPR”) of various patents owned by Allergan,
Inc., relating to its dry eye treatment Restasis. Teva
Pharmaceuticals USA, Inc., and Akorn, Inc. (together
with Mylan, “Appellees”) joined. While IPR was pending,
Allergan transferred title of the patents to the Saint Regis
Mohawk Tribe, which asserted sovereign immunity. The
Board denied the Tribe’s motion to terminate on the basis
of sovereign immunity and Allergan’s motion to withdraw
from the proceedings. Allergan and the Tribe appeal,
arguing the Board improperly denied these motions. We
affirm.

(,,,)

Ultimately, several factors convince us that IPR is
more like an agency enforcement action than a civil suit
brought by a private party, and we conclude that tribal
immunity is not implicated. First, although the Director’s
discretion in how he conducts IPR is significantly constrained,
he possesses broad discretion in deciding whether
to institute review. Oil States, 138 S. Ct. at 1371.
Although this is only one decision, it embraces the entirety
of the proceeding. If the Director decides to institute,
review occurs. If the Director decides not to institute, for
whatever reason, there is no review. In making this
decision, the Director has complete discretion to decide
not to institute review. Oil States, 138 S. Ct. at 1371
(“The decision whether to institute inter partes review is
committed to the Director’s discretion.”). The Director
bears the political responsibility of determining which
cases should proceed. While he has the authority not to
institute review on the merits of the petition, he could
deny review for other reasons such as administrative
efficiency or based on a party’s status as a sovereign.


(...)

The Director’s important role as a gatekeeper and the
Board’s authority to proceed in the absence of the parties
convinces us that the USPTO is acting as the United
States in its role as a superior sovereign to reconsider a
prior administrative grant and protect the public interest
in keeping patent monopolies “within their legitimate
scope.” See Cuozzo, 136 S. Ct. at 2144. The United
States, through the Director, does “exercise . . . political
responsibility” over the decision to proceed with IPR.
FMC, 535 U.S. at 764 (quoting Alden, 527 U.S. at 756).
The Tribe may not rely on its immunity to bar such an
action. See Miccosukee Tribe of Indians of Fla. v. United
States, 698 F.3d 1326, 1331 (11th Cir. 2012) (“Indian
tribes may not rely on tribal sovereign immunity to bar a
suit by a superior sovereign.”). Because we conclude that
tribal sovereign immunity cannot be asserted in IPR, we
need not reach the parties’ other arguments.