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Patents Tribal Governments

WilmerHale

United States Patent and Trademark Office Calls for Tribal Comments on the World Intellectual Property Organization Treaty on...

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On January 17, 2025, the United States Patent and Trademark Office (“USPTO”) published a request for written comments on a recently adopted treaty....more

Womble Bond Dickinson

USPTO Takes First Steps Following New WIPO Treaty

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Last May, the World Intellectual Property Organization (WIPO) adopted a new treaty related genetic resources and traditional knowledge thereof (the “Treaty”). The Treaty will impose new disclosure requirements on patent...more

WilmerHale

PTAB/USPTO Update - November 2023

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USPTO News - On October 23, 2023, the USPTO Office of the Chief Economist released a report detailing patenting activity related to COVID-19 diagnostic technology....more

McDonnell Boehnen Hulbert & Berghoff LLP

LSI Corp. v. Regents of the University of Minnesota (Fed. Cir. 2022)

A little more than three years ago, the Federal Circuit rejected the University of Minnesota's contention that LSI was barred from bringing (and the Patent Trial and Appeal Board barred from hearing) an inter partes review of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Regents of the Univ. of Minn. v. LSI Corp., 926 F.3d 1327...

LSI and Ericsson petitioned for inter partes review (IPR) of several patents owned by the University of Minnesota (UMN). UMN moved to dismiss each IPR based on state sovereign immunity. The Patent Trial and Appeal Board...more

Knobbe Martens

Federal Circuit Review - June 2019

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One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Ladas & Parry LLP

U.S. Court Of Appeals For The Federal Circuit Has Held That Neither State Agencies Nor Indian Tribes Enjoy Sovereign Immunity,...

Ladas & Parry LLP on

On July 20, 2018 in Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore and Reyna JJ) held that Native American (“Indian”) Tribes do...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Closes Another AIA Loophole

The Federal Circuit recently ruled that state sovereign immunity does not apply in Inter Partes Review (IPR) proceedings, closing another America Invents Act (AIA) loophole. The case, Regents of the University of Minnesota v....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2019: States Must Face IPR Challenges Similar to Tribes

In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more

Womble Bond Dickinson

State Sovereignty 101: State Universities Not Immune to IPR Proceedings

Womble Bond Dickinson on

School may be out for the summer, but public colleges and universities would do well to spend their break shoring up strategies and defenses against potential inter partes review (“IPR”) proceedings. Last week the Federal...more

Knobbe Martens

State Sovereign Immunity Does Not Bar an IPR

Knobbe Martens on

REGENTS OF THE UNIV. OF MINN. v. LSI CORPORATION - Before Dyk, Wallach, and Hughes. Appeal from the Patent Trial and Appeal Board. Summary: State sovereign immunity does not apply to IPR proceedings asserted against...more

Nutter McClennen & Fish LLP

Privity and Immunity: The Federal Circuit Issues Two Precedential Decisions Addressing Who Can Petition for and Who Can Be Subject...

Late last week, the Federal Circuit issued Power Integrations, Inc. v. Semiconductor Components Indus., LLC and Regents of the Univ. of Minnesota v. LSI Corp. These two precedential decisions bring further clarity to who is...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Saint Regis Mohawk Tribe v. Mylan Pharm....

Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akron, Inc. petitioned for inter partes review (IPR) of various patents owned by Allergan, Inc., which the Board instituted. One week before the scheduled IPR...more

Jones Day

PTAB Denies Stay Pending Sovereign Immunity Cert Petition

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In Microsoft Corp. v. Saint Regis Mohawk Tribe, the PTAB refused to stay ten IPRs filed by Microsoft while Patent Owner St. Regis appeals a Federal Circuit decision that tribal sovereign immunity cannot be asserted in an IPR...more

Hogan Lovells

U.S. + Germany Patent Update - September 2018

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The U.S. and Germany are two of the most important fora in the world for patent litigation. The U.S. has long been one of the largest markets for patent litigation, and Germany has constantly attracted more than 50% of all...more

Goodwin

BREAKING NEWS: Federal Circuit denies petition for rehearing in St. Regis Mohawk Tribe v. Mylan

Goodwin on

As we previously reported, following the Federal Circuit’s ruling in St. Regis Mohawk Tribe v. Mylan that “tribal immunity cannot be asserted in IPRs,” Allergan and the Tribe petitioned for rehearing en banc. The petition was...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Affirms that Tribal Immunity Is Not Available for Inter Partes Review

On July 20, 2018, the Federal Circuit affirmed in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc. that tribal immunity cannot be asserted in IPRs. The appeal stemmed from a dispute between Allergan and various generic...more

Ladas & Parry LLP

Native American Tribes’ Patents Not Immune from Challenge in the Patent Trial and Appeal Board

Ladas & Parry LLP on

On July 20 in Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore and Reyna JJ) held that Native American (“Indian”) Tribes do not...more

Knobbe Martens

The Federal Circuit Finds Tribal Sovereign Immunity does not Apply in IPR

Knobbe Martens on

On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR. Allergan Pharmaceuticals owned patents that it had asserted in litigation against various generic...more

Dickinson Wright

Sovereign Shield Does Not Extend to Inter Partes Reviews

Dickinson Wright on

On Friday, July 20, 2018, the Court of Appeals for the Federal Circuit addressed the controversial application of sovereign immunity for inter partes review (“IPR”) in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. In...more

Jones Day

Patent Transfer to Native American Tribe Does Not Immunize Patents from Inter Partes Review

Jones Day on

This ruling may have eliminated the practice of transferring patents to Native American tribes for immunization from IPR proceedings. The Federal Circuit, in a matter of first impression, has ruled that tribal sovereign...more

Foley Hoag LLP

Federal Circuit Nixes PTAB Sovereign Immunity for Saint Regis Mohawk Tribe

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Does it Open the Door to Challenge Patents Held by State Entities? - In Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., the Federal Circuit affirmed the PTAB’s decision denying Saint Regis from using sovereign...more

Weintraub Tobin

Federal Circuit Affirms Tribal Immunity Does Not Apply In Inter Partes Review Proceedings Before The USPTO

Weintraub Tobin on

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the U.S. Court of Appeals for the Federal Circuit held that Native American tribal sovereign immunity does not apply in Inter Partes Review (“IPR”)...more

Snell & Wilmer

Federal Circuit Holds Tribal Immunity Does Not Bar IPR of Tribe-Owned Patents

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Last week, the Federal Circuit held that tribal sovereign immunity does not apply to inter partes review (IPR) actions instituted at the Patent Trial and Appeal Board. The decision, in Saint Regis Mohawk Tribe et al. v. Mylan...more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Holds That Tribal Sovereign Immunity Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit has decided whether tribal sovereign immunity required termination of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). At the PTAB, Mylan...more

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