3 ms·

One of the comments here[0] raises an excellent point: >I don’t understand how this strategy would work. >The PTAB decisions about state colleges/universities

One of the comments here[0] raises an excellent point: >I don’t understand how this strategy would work. >The PTAB decisions about state colleges/universities are based on Eleventh Amendment immunity. On those cases, the IPR statute is trumped and cannot impede on the states’ sovereign immunity under the 11th Amendment. >But Native American tribes do not enjoy 11th Amendment immunity; their immunity is a function of federal common law and Congress has near plenary statutory authority over the tribes. Congressional statutes can abrogate or supersede tribal immunity, without constitutional issues. >Tribal immunity is more about immunity from the states over Native American tribes, based on federal supremacy over Native American affairs. >But AIA is federal. So the argument is simple; by enacting the AIA and subjecting issued patents to AIA reviews, and not making any exception for patents owned by Native American tribes, it abrogated any sovereign immunity that may have applied. >The patents obviously weren’t invented or originally prosecuted by the tribe; given the fact that the immunity is federal common law and policy-based (and not 11th Amendment-based), I can see that policy-based arguments about how manipulative this is, will be very receptive. [0]https://patentlyo.com/patent/2017/09/allergan-creating-sovereign.html https://patentlyo.com/patent/2017/09/allergan-creating-sover...

rayiner 9y ago
It’s not a good argument. As the Supreme Court reaffirmed a couple of years ago in Bay Mills, while Congress can abrogate tribal immunity, the intention to do so must be “unequivocal.” Congress does not need to make an “exception” for Indian tribes in any specific law—tribal immunity is the “background” against which all legislation is enacted.
- nkurz 9y ago
  Here's a couple summaries of the January 2017 University of Florida Research Foundation case: http://www.ipwatchdog.com/2017/03/16/ufrf-eleventh-amendment-defense-ptab-creates-ipr-immunity-iprs-public-universities/id=79341/ http://www.ipwatchdog.com/2017/03/16/ufrf-eleventh-amendment... https://patentlyo.com/patent/2017/02/sovereign-university-challenge.html https://patentlyo.com/patent/2017/02/sovereign-university-ch... And here's a later case involving the University of Maryland Baltimore where the reasoning was reaffirmed: https://www.lexology.com/library/detail.aspx?g=e8a324fd-4be6-4515-918e-77f35efac275 https://www.lexology.com/library/detail.aspx?g=e8a324fd-4be6... I post this here as a response to 'rayiner' not because he can't find these links on his own, but because I'd be interested in his opinion one of the suggestions in that last Lexology link: Third, public universities and hospital systems may see their research sponsors begin to stop demanding full ownership of patents resulting from sponsored research and/or clinical studies, in favor of a more natural joint ownership structure. Presumably, since all owners of a patent are necessary parties to an IPR (and district court litigation), even a private, for-profit entity that is a joint owner of a patent with a public university or hospital may be able to benefit from assertions of sovereign immunity in IPRs. Does this multiple ownership theory of immunity make sense to you? Instead of transferring the entire patent to a sovereign Indian nation, would it be possible for them to make gift of some tiny percentage of ownership of the patent, and still gain all the benefits of sovereign immunity? I have to say, from the outside the whole thing seems like a farce. Regardless of the form the review takes, Covidien's argument that a patent review is directed against the patent, rather than the owner, sure makes intuitive sense. It makes some sense that a sovereign state would be immune from charges of infringement, but seems absurd to me that the US government would no longer be allowed to review the claims of a patent because the ownership changed.
  - rayiner 9y ago
    It’s a wacky theory but it has legs. At the root is the question that is currently before the Supreme Court in Oil States. Are patents private property or public rights? If they are private property, then actions against the property will generally be foreclosed by any immunity of the owner. It hasn’t been addressed by the Supreme Court, but the Second Circuit has held, for example, that states can’t get around tribal immunity by characterizing a foreclosure action as an action against the property itself rather than the tribal owner.
    - gcb0 9y ago
      Even if it works, a patent is to defend your exploitation of the product on that market. If company A defends against company B patent claims, and continue to produce the drug, what prevents company B, C, D and E from going to other tribes, moving their disputed-but-dismissed-case patents there, and start producing the drug too? At this point, shouldn't we just ignore patents?

rayiner 9y ago

It’s not a good argument. As the Supreme Court reaffirmed a couple of years ago in Bay Mills, while Congress can abrogate tribal immunity, the intention to do so must be “unequivocal.” Congress does not need to make an “exception” for Indian tribes in any specific law—tribal immunity is the “background” against which all legislation is enacted.

nkurz 9y ago
Here's a couple summaries of the January 2017 University of Florida Research Foundation case: http://www.ipwatchdog.com/2017/03/16/ufrf-eleventh-amendment-defense-ptab-creates-ipr-immunity-iprs-public-universities/id=79341/ http://www.ipwatchdog.com/2017/03/16/ufrf-eleventh-amendment... https://patentlyo.com/patent/2017/02/sovereign-university-challenge.html https://patentlyo.com/patent/2017/02/sovereign-university-ch... And here's a later case involving the University of Maryland Baltimore where the reasoning was reaffirmed: https://www.lexology.com/library/detail.aspx?g=e8a324fd-4be6-4515-918e-77f35efac275 https://www.lexology.com/library/detail.aspx?g=e8a324fd-4be6... I post this here as a response to 'rayiner' not because he can't find these links on his own, but because I'd be interested in his opinion one of the suggestions in that last Lexology link: Third, public universities and hospital systems may see their research sponsors begin to stop demanding full ownership of patents resulting from sponsored research and/or clinical studies, in favor of a more natural joint ownership structure. Presumably, since all owners of a patent are necessary parties to an IPR (and district court litigation), even a private, for-profit entity that is a joint owner of a patent with a public university or hospital may be able to benefit from assertions of sovereign immunity in IPRs. Does this multiple ownership theory of immunity make sense to you? Instead of transferring the entire patent to a sovereign Indian nation, would it be possible for them to make gift of some tiny percentage of ownership of the patent, and still gain all the benefits of sovereign immunity? I have to say, from the outside the whole thing seems like a farce. Regardless of the form the review takes, Covidien's argument that a patent review is directed against the patent, rather than the owner, sure makes intuitive sense. It makes some sense that a sovereign state would be immune from charges of infringement, but seems absurd to me that the US government would no longer be allowed to review the claims of a patent because the ownership changed.
- rayiner 9y ago
  It’s a wacky theory but it has legs. At the root is the question that is currently before the Supreme Court in Oil States. Are patents private property or public rights? If they are private property, then actions against the property will generally be foreclosed by any immunity of the owner. It hasn’t been addressed by the Supreme Court, but the Second Circuit has held, for example, that states can’t get around tribal immunity by characterizing a foreclosure action as an action against the property itself rather than the tribal owner.
  - gcb0 9y ago
    Even if it works, a patent is to defend your exploitation of the product on that market. If company A defends against company B patent claims, and continue to produce the drug, what prevents company B, C, D and E from going to other tribes, moving their disputed-but-dismissed-case patents there, and start producing the drug too? At this point, shouldn't we just ignore patents?