Patently Inconsistent: State & Tribal Sovereign Immunity in Inter Partes Review
62 Pages Posted: 1 Mar 2019 Last revised: 9 Oct 2019
Date Written: February 28, 2019
In 2011, the Leahy-Smith America Invents Act was signed into law with the goal of bringing America’s patent system up to date in the 21st century. As part of that effort, the Act introduced a new post-grant proceeding known as inter partes review (“IPR”) to better ensure that issued patents were not granted erroneously. A number of patent owning state entities have since evaded IPRs by invoking the doctrine of state sovereign immunity, which allows states to avoid unwanted adjudication. Emboldened by the success of states on this front, at least one pharmaceutical company has transferred ownership rights in its patents to a Native American tribe. The tribe, in turn, has attempted to avail itself of the doctrine of tribal sovereign immunity in order to avoid post-grant review of the patents. Recently, the United States Court of Appeals for the Federal Circuit has held that, unlike states, tribes cannot avoid IPRs through sovereign immunity claims. This Note argues that the Federal Circuit reached the correct result on tribal sovereign immunity claims and that, due to the similarities between the two doctrines, state sovereign immunity claims should likewise fail as a defense in IPRs.
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