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August 21, 2018


Hey Kevin,

I didn't see anywhere your article a post of the brief by the St. Regis Mohawk Tribe. Having the posted brief would be helpful.

Fixed. Thanks, EG

Hey Kevin,

You most welcome, but you deserve the thanks, not me, for posting the brief.

Brief, page 7:

The panel’s decision effectively abrogated all sovereign immunity in IPRs. Although the panel stated that its decision was limited to the assertion of tribal immunity (Add.12), the panel’s holding turns entirely on the inherent attributes of the IPR proceeding itself. Those attributes are the same for all IPRs, and thus the panel’s decision effectively bars States and even federal agencies, such as NASA, HHS, the U.S. Army, and the U.S. Navy, which are some of nation’s most prolific patent filers, from asserting sovereign immunity in IPRs brought against them as patent owners.

Well you know the cert petition is just a foregone conclusion, so ultimately it will be the Supreme Court who decides. Should the Federal Circuit apply the same logic to the state university case, it will just give the Court a reason to combine the two cases and decide them together.

Dr. Noonan,

But has not the CAFC ruled differently in regards to State immunity?

Is there not (already) a type of "circuit-split" WITHIN the CAFC?

Is the (current) "State" case necessary to be combined?

The PTAB has ruled differently on State sovereign immunity, and also ruled that immunity was waived when the patents were asserted in district court litigation (raising the issue of whether actions in one forum (an Article III court) can waive sovereign immunity in a different, Article I, forum). The court will have the opportunity to treat tribal and sovereign immunity the same (or differently), and then the Supreme Court will have the opportunity to speak to whether either immunity protects against IPRs.

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