October 15, 2018

Senator McCaskill Introduces Bill to Strip Native American Tribes of Sovereign Immunity

On October 5, 2017, Senator Claire McCaskill introduced legislation that would remove the right of Native American Indian Tribes to assert sovereign immunity in inter partes review (IPR) proceedings at the United States Patent and Trademark Office (USPTO) conducted by the Patent Trial and Appeal Board (PTAB). As discussed in my previous posts on this issue, the bill was introduced in response to the assignment by Allergan of the patents covering RESTASIS to the Saint Regis Mohawk Tribe, with the Tribe granting back to Allergan an exclusive license. The purpose of the transaction was to permit the Tribe to assert sovereign immunity and defeat the jurisdiction of the PTAB of the USPTO, which has been hostile to the rights of patent owners in IPR proceedings.

Senator McCaskill’s bill doesn’t appear to be particular well thought out in a number of respects. First, it would discriminate against Native American Indian Tribes while allowing state universities to continue to assert sovereign immunity pursuant to the PTAB’s earlier decision relating to a patent owned by the University of Florida Research Foundation.

Second, the bill only covers IPR proceedings, Tribes could still assert sovereign immunity in post grant proceedings and covered business method proceedings. The reasons behind Sen. McCaskill’s hastily and poorly drafted bill are open to debate, but as a Washington cynic, I would guess that it may have something to do with fundraising for her 2018 Senate reelection campaign.

The Saint Regis Mohawk Tribe issued an immediate and scathing statement after the bill was introduced, which reads:

“The Saint Regis Mohawk Tribe is outraged that U.S. Senator Claire McCaskill (D-MO), has introduced legislation that specifically targets Indian tribes, yet exempts state universities and other sovereign governments engaged in the very same IPR process.  The double standard that is being introduced by the Senator as a solution for a perceived abuse of the IPR proceedings does nothing to solve the underlying problem. The Tribes authority is inherent and has been reaffirmed through treaties and legislation from the earliest days of the country.

It is cruelly ironic that Indian Tribes, with the highest unmet health care needs in the entire country, are being attacked for exercising their sovereign obligation to fill gaps in health coverage caused by the federal government’s abject failure to uphold its trust responsibility.  The fact that the Mohawk community is home to three unmitigated EPA Superfund sites that harm the health of the community and surrounding non-Native communities is a stark example of the government’s failure.  Congress shouldn’t double down on its mistakes by denying the Tribe’s sovereign authority in the IPR process.

As the largest private employer in Northern New York, the Tribe has a responsibility to ensure the livelihood and well-being of its tribal members and its hundreds of non-Native employees. The Tribe remains committed to working with all Members of Congress to discuss how its recent economic diversification efforts benefits the Tribe, its members, and the surrounding communities without harming competition among pharmaceutical companies (both private and generic) or artificially inflating drug prices.”

Senator McCaskill’s efforts would be better and more productively spent on efforts to improve the patent system, which is stacked against patent owners especially those lacking the resources to fight effectively to protect their patents.


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