Saturday, February 24, 2018

St. Regis Mohawk/Allergan lose at PTAB

in DECISION, Denying the Tribe’s Motion to Terminate, 37 C.F.R. §§ 42.5, 42.72 (23 Feb 2018), PTAB stated:

Upon consideration of the record, and for the reasons discussed
below, we determine the Tribe has not established that the doctrine of tribal
sovereign immunity should be applied to these proceedings. Furthermore,
we determine that these proceedings can continue even without the Tribe’s
participation in view of Allergan’s retained ownership interests in the
challenged patents. The Tribe’s Motion is therefore denied.

PTAB found no legal support addressing the tribal immunity issue:

The Tribe and its supporting amici, however, have not pointed to any
federal court or Board precedent suggesting that FMC’s holding with respect
to state sovereign immunity can or should be extended to an assertion of
tribal immunity in similar federal administrative proceedings. Rather, the
Tribe cites certain administrative decisions of other federal agencies to assert
that “[t]he principal [sic] that sovereign immunity shields against
adjudicatory proceedings has been extended to tribes.” Mot. 15–16. We are
not bound by those agency decisions, but even those decisions do not
squarely address the issue.


In this regard, the Supreme Court has stated that “the immunity
possessed by Indian Tribes is not co-extensive with that of the States.”
Kiowa, 523 U.S. at 756; see also Three Affiliated Tribes of Fort Berthold
Reservation v. Wold Eng'g, 476 U.S. 877, 890 (1986) (“Of course, because
of the peculiar ‘quasi-sovereign’ status of the Indian tribes, the Tribe’s
immunity is not congruent with that which the Federal Government, or the
States, enjoy.”).


The Tribe also contends that “while the federal government has the
authority to enforce a law of general applicability against a tribe, private
citizens do not have the authority to enforce such laws absent abrogation of
immunity.” Paper 119, 8–9 (citing Fla. Paraplegic Assoc. v. Miccosukee
Tribe of Indians of Fla., 166 F.3d 1126 (11th Cir. 1999) (“Miccosukee”)).
Miccosukee did not involve a federal administrative proceeding, but rather a
private right of action brought in federal district court against a tribal
employer under the Americans with Disabilities Act. 166 F.3d at 1127 (“We
hold that Congress has not abrogated tribal sovereign immunity with respect
to this statute so as to allow a private suit against an Indian tribe.”). To be
clear, there was no federal agency involved in that litigation. As such, we
find the Miccosukee decision to be of minimal relevance to the question of
whether tribal immunity may be invoked in federal administrative
proceedings such as these proceedings.

Of status to continue the proceeding:

It is well settled that “[w]hether a transfer of a particular right or
interest under a patent is an assignment or a license does not depend upon
the name by which it calls itself, but upon the legal effect of its provisions.”
Waterman v. Mackenzie, 138 U.S. 252, 256 (1891). As such, the Federal
Circuit has held that the “party that has been granted all substantial rights
under the patent is considered the owner regardless of how the parties
characterize the transaction that conveyed those rights.” Speedplay, Inc. v.
Bebop, Inc., 211 F.3d 1245, 1250 (Fed. Cir. 2000); see also Alfred E. Mann
Found. for Sci. Research v. Cochlear Corp., 604 F.3d 1354, 1358–59 (Fed.
Cir. 2010) (“Mann”) (“A patent owner may transfer all substantial rights in
the patents-in-suit, in which case the transfer is tantamount to an assignment
of those patents to the exclusive licensee.”).
“To determine whether an exclusive license is tantamount to an
assignment, we ‘must ascertain the intention of the parties [to the license
agreement] and examine the substance of what was granted.’” Mann, 604
F.3d at 1359. However, “[t]he parties’ intent alone is not dispositive” in this
inquiry. Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1342 (Fed. Cir.
2014) (vacated on other grounds).



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