Tribal Immunity Considered by PTAB

Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. This premise has been criticized by the Supreme Court in In re Cuozzo Speed Technologies, and, more recently by the Federal Circuit in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017). For this reason, sovereign immunity (including tribal immunity) is likely to fall with the Oil States challenge.

Until such time, however, the PTAB must address the issue in the ongoing IPRs of Allergan’s Restasis® patents. In doing so, the PTAB has now issued an Order inviting amicus briefing, setting a submission deadline of December 1, 2017.

The Order (here) explains:

"Given that the Tribe’s motion presents an issue of first impression for the Board and that the parties’ briefing on the motion is complete, we are persuaded that briefing from interested amici curiae is now warranted in these proceedings. Accordingly, we grant [originally requesting party] request to file an amicus brief of no more than 15 pages by December 1, 2017. Furthermore, we authorize briefing from any other amici curiae, which shall also be no more than 15 pages by December 1, 2017. To the extent possible, to avoid redundancy and in the interests of efficiency, we direct any interested amici who wish to present similar arguments to the Board to coordinate in their filing of a joint amicus brief. Arguments redundant to those already presented by the parties or other amici may not be considered.

(emphasis added)

As the dispute was joined by several additional petitioners, the Order adjusts the deadline for the Final Written Decision (FWD) to April 6, 2018. (Note that joinder is an exception to the 12 month trial deadline, previously December 8, 2017). It may be that the decision in Oil States will issue before such time (oral argument 11/27/17)

Scott A. McKeown is an author of the Patents Post Grant.