St. Regis Mohawk Tribe appeals loss in patent case to Supreme Court

Wednesday, January 16, 2019

The Saint Regis Mohawk Tribe is asking the U.S. Supreme Court to rule on a controversial sovereign immunity issue.

Last July, the Federal Circuit Court of Appeals ruled that the tribe cannot assert sovereign immunity in connection with drug patents that it owns. The tribe believes the decision is wrong and must be overturned by a higher power.

"The Federal Circuit applied the wrong legal test and arrived at the wrong conclusion," the tribe and its drug patent partner wrote in a petition to the Supreme Court.

The response to the tribe's petition is due February 11, according, according to Docket No. 18-899. The respondents are drug companies that have challenged the patents owned by the tribe.

The tribe acquired the patents from Allergan, the developer of RESTASIS®, a popular drug that treats dry eye conditions. The deal was aimed at derailing what is known as Inter Partes Review before the U.S. Patent Trial and Appeal Board.

In other cases, the board has held arms of state governments, such as universities, enjoy sovereign immunity in patent reviews. The same standard, however, has not been applied to tribal governments.

The Supreme Court, as recently as the 2014 decision in Bay Mills Indian Community v. Michigan, has affirmed that tribes cannot be sued without their consent or without a clear waiver from Congress. The patent case differs in that it involves a federal administrative proceeding but the Mohawks don't think the distinction matters.

"As this court has recognized, the purpose of sovereign immunity is to safeguard 'the dignity” of “sovereign entities,' which is lost regardless of the outcome of administrative adjudications brought by private parties," the petition reads.

But the outcome in Bay Mills was not close. The vote was 5-4, indicating the issue of tribal immunity remains controversial.

The case is Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc.