The US House of Representatives Courts, Intellectual Property, and the Internet Subcommittee [official website] announced [press release] Thursday they will be holding a hearing on November 7 that will examine “the issue of intellectual property rights owned by entities that claim sovereign immunity on the basis of the 11th Amendment or Native American tribal immunity.” The hearing will be titled “Sovereign Immunity and the Intellectual Property System.”
The hearing has become necessary after a drug company named Allergan [corporate website] entered into a contract with the St. Regis Mohawk Tribe [official website] in which Allergan transferred a number of patents to the tribe in exchange for an exclusive license for the patents. The tribe then claimed that due to its sovereign immunity, the US Patent & Trademark Office [official website] has no jurisdiction to hold inter partes review (IPR) hearings against the patents. The IPR hearings are used to invalidate patents. Allergan is also filing lawsuits against competitors for violating the same patents that cannot be invalidated by the IPR hearings. SRC Labs LLC has also transferred patents to the same tribe and are suing Amazon and Microsoft for violating those patents.
The committee will hear testimony from Karl Manheim, a professor of law at Loyola Law School, William Jay, a partner and co-chair of appellate litigation at Goodwin Procter LLP, Philip Johnson, principal at Johnson-IP Strategy & Policy Consulting, and Christopher Mohr, Vice President for Intellectual Property and General Counsel at Software and Information Industry Association.
Chairman Goodlatte has stated that the hearing is necessary to ensure the patent system protects and promotes American innovation. Subcommittee Chairman Issa stated the hearing is important to ensure that sovereign immunity is not being used to “game” the system to shield patents from checks and balances.