On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe.
On July 20, 2018, the Federal Circuit upheld a finding by the Patent Trial and Appeal Board (PTAB) in St. Regis Mohawk Tribe v. Mylan Pharms. Inc., 896 F.3d 1322 (Fed. Cir. 2018) that tribal immunity did not extend to the agency proceeding before the PTAB known as an inter partes review (IPR). Id. at 1329. In doing so, the Federal Circuit compared the IPR process to agency enforcement actions and district court proceedings.
The Federal Circuit noted that the director of the PTAB has discretion regarding whether or not to institute an IPR and found that “if IPR proceeds on patents owned by a tribe, it is because a politically accountable, federal official has authorized the institution of that proceeding.” Id. at 1327.
At the end of the day, the Federal Circuit found that an IPR proceeding is distinct enough from a district court proceeding such that the tribal immunity defense that is permitted in an Article III court does not apply to PTAB proceedings. By denying St. Regis’s petition, the Federal Circuit opinion stands as the final determination on this issue.