As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution (“Sovereign Immunity of State Universities: Can It Shield Them From AIA Patent Challenges?” and “Are State-Owned Patents Immune From IPRs Under The 11th Amendment?“). Now, a pharmaceutical company announced that it has assigned certain Orange Book listed patents to a native American Indian tribe, which licensed the patents back to the pharmaceutical company, in an effort to obtain dismissal of the pending IPRs against those patents. The Indian tribe will receive a significant up-front fee and annual royalties during the life of the patents. See “A Native American Tribe, A Drugmaker, and an Unusual Patent Plan.” Motions to dismiss in the IPRs have not yet been filed based on the transfer of ownership, but the article reports that the new assignee intends to file such motions in the IPRs. We will report again after the PTAB rules in these cases.
