Reviewing St. Regis: Unresolved Issues at the Intersection of Tribal Sovereign Immunity and Patent Law

Lucas Paez · 21 Vand. J. Ent. & Tech. 1125

Abstract

In July 2018, the Federal Circuit ruled that sovereign immunity does not circumvent an inter partes review brought by the Patent Trial and Appeal Board. By deciding against the tribe in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals (“St. Regis”), the court determined that inter partes reviews are adjudicatory proceedings brought by the United States Patent and Trademark Office, and not an action brought by a private party. This ruling was the second significant ruling regarding inter partes reviews of the year, the first being the Supreme Court holding that inter partes reviews are constitutional. While the specific matter in the Federal Circuit is seemingly settled, questions remain about the state of sovereign entities in patent law more generally. This Note addresses some of the unanswered questions left in the wake of the St. Regis decision and raises new questions and potential solutions for future intersections of tribal sovereign immunity and patent law.