Apple IPR Will Test Native American Sovereign Immunity

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Patrick Anderson by: Patrick Anderson | December 14, 2017

Last week, Apple filed an IPR seeking cancellation of a patent owned by a North Dakota Native American tribe. The legal dispute began at least this past March when Texas-based Prowire, LLC sued Apple for infringement, citing extensive tear down and reverse engineering analysis. Prowire then assigned the patent to MEC Resources, LLC, which substituted as the plaintiff. MEC is registered in North Dakota as a foreign limited liability company, with “Affiliated Tribes” listed as the place of origin.

In the face of extensive preparation and evidence of infringement, Apple’s only realistic defense may be to have the patent office revoke the MEC-owned property. On December 8, Apple filed a petition seeking cancellation of most of MEC’s claims. Notably, the petition makes no mention of MEC’s status as a tribal entity and the sovereign immunity arguments that are almost certainly going to follow.

Both parties will undoubtedly monitor the dispute between Mylan and Allergan (IPR2016-01127), in which the St. Regis Mohawk Tribe asserted an ownership interest and moved to dismiss based on sovereign immunity. That motion is now fully briefed and awaiting a decision by the a panel of executive officials at the Patent Trial and Appeal Board (“PTAB”).

Apple’s petition, Case no. IPR2018-00286, challenges U.S. Patent 6,137,390. The district court litigation is currently pending before Judge Orrick of the Northern District of California.



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