Per Lisa's request, I have returned to offer some thoughts on the PTAB's tribal sovereign immunity decision (you can find my earlier post here and some additional musings coauthored with Lisa here). I had thought I had retired my role of masquerading as an (entirely unqualified) intellectual property lawyer, but, as the PTAB judges clearly haven't relinquished their pretensions to be experts in federal Indian law, here we are.
The upshot is that I find the PTAB's decision highly unpersuasive, for the reasons that follow, and I hope to convince you that, however you feel about the result, the PTAB's purported rationales should give pause. I should stress at the outset that I have no expertise to assess the PTAB's conclusion that Allergan is the "true owner" of the patent, which may well be correct. But the fact that this conclusion could have served as entirely independent basis for the judgment makes the slipshod reasoning in the first part of the decision on tribal immunity all the more egregious. Here are some examples—I hope you'll forgive the dive into Indian law and immunity doctrine:
1. Supreme Court Precedent: The tenor of the PTAB's decision is clear from its quotation of isolated dicta from Kiowa, where, in the process of considering off-reservation tribal sovereign immunity, the Supreme Court expressed some sympathy for the viewpoint of the dissenting Justices: "There are reasons to doubt the wisdom of perpetuating the [tribal immunity] doctrine." But the PTAB omits the key language that came at the end of the Court's discussion of this issue: "[W]e defer to the role Congress may wish to exercise in this important judgment," leaving the decision as to whether to abrogate tribal sovereign immunity—which Congress may do under its "plenary power"—to the legislature. In short, although you wouldn't know it from the PTAB's cherry-picked quotations, Kiowa actually determined that the right approach in the face of uncertainty was to uphold the doctrine of tribal sovereign immunity.
Nor was the 20-year-old Kiowa case the last word on this question. Astonishingly, the PTAB's decision never discusses the facts, holding, or reasoning of Bay Mills, even though the Court decided the case, unquestionably its most important recent statement on tribal sovereign immunity, in 2014. There, the Court rejected another effort to invalidate tribal sovereign immunity, stating that "it is fundamentally Congress's job, not ours, to determine whether or how to limit tribal immunity." This rule, the Court held, applied even more forcefully after Congress had had twenty years to revisit the holding in Kiowa and declined to eliminate tribal sovereign immunity. Id.
Arguably, the PTAB should give at least equal deference to congressional determinations as the Supreme Court, especially given the existence of pending legislation abrogating tribal immunity in this context. Or, setting the bar even lower, one would hope that the PTAB would at some point grapple with recent Supreme Court decisions directly on point. But they don't—in part because, as I'll discuss now, they mischaracterize the question as one of first impression.
2. Administrative Proceedings: Having arrogated to itself the decision whether to apply tribal sovereign immunity in the inter partes review context, the PTAB proceeds to conclude that there is no precedent mandating application of tribal immunity in IPR proceedings, badly mangling the doctrine in the process.
Let's start, as the PTAB neglected to do, with first principles. As the Supreme Court said in Bay Mills, citing and quoting Kiowa, "We have time and again treated the doctrine of tribal immunity as settled law and dismissed any suit against a tribe absent congressional authorization (or a waiver) . . . . the baseline position, we have often held, is tribal immunity." (quotation marks and alterations omitted).
As this statement suggests, to void tribal sovereign immunity, one of the exceptions must apply. There might be an argument for some sort of implicit waiver here, but the PTAB doesn't make it. Nor is there a credible argument that Congress has abrogated tribal sovereign immunity. The PTAB confuses matters by delving into a line of cases that deal with whether "generally applicable" federal statutes apply to tribes. These cases are relevant insofar as they raise the question of whether the patent laws at issue even apply in the first instance, and the PTAB defensibly concludes that they do. But reading the PTAB's fuzzy decision, one might be forgiven for concluding that these cases also establish the test for whether Congress has abrogated tribal sovereign immunity. They don't. As the Supreme Court has said over and over, the test is whether Congress has explicitly abrogated tribal sovereign immunity, a hurdle that no one can credibly argue has been met here.
That leaves the question of whether the PTAB proceeding is a suit by the federal government, since neither tribes nor states enjoy sovereign immunity against such a proceeding. As the PTAB's decision notes, a number of federal courts have permitted federal administrative agencies to bring suit against tribes; as the decision doesn't note, these conclusions have been based on the black-letter principle that tribal immunity doesn't apply when the plaintiff is a federal agency. Here, the PTAB seems to conclude that inter partes review is a government enforcement action such that tribal immunity shouldn't apply—the absence of a government lawyer, the PTAB concludes, shouldn't be dispositive.
If this were indeed an issue of first impression, that reasoning might be compelling. But it isn't. The PTAB's logic would apply with equal force against state sovereign immunity, yet on three separate occasions, the PTAB has determined that inter partes review is sufficiently akin to a civil proceeding to afford the states sovereign immunity, pointing toward the existence of adverse parties, cross-examination, taking testimony, discovery, etc.
The claim that an identical proceeding is tantamount to a civil adjudication when a state is the defendant but magically transmogrifies into a federal enforcement action when the tribe is a defendant unsurprisingly has no doctrinal foundation. To the extent it addresses this objection, the PTAB engages in so much hand-waving at the truism that tribal and state sovereign immunity are different—which brings me to my third and final point.
3. Tribal and State Sovereign Immunity: The PTAB argues that it need not treat state and tribal immunity congruently, pointing toward existing caselaw that tribes are entitled to sovereign immunity even when they engage in behavior—such as removing a case to federal court—that might be deemed a waiver of state sovereign immunity.
The PTAB's reasoning on this point is a master class in conclusory assertions. If you read the cases the PTAB cites that distinguish tribal and state immunity, they provide what courts should for their decisions—rationales. By contrast, the PTAB offers no explanations, simply positing that the presumed difference between state and tribal sovereign immunity warrants the particular result.
In fact, in most litigation, state and tribal sovereign immunity get treated similarly. The most glaring difference—that tribal sovereign immunity evolved through Supreme Court decisions rather than a constitutional amendment, granting Congress the right to abrogate it—doesn't alter the position of tribal sovereign immunity before the PTAB (except, perhaps, in making congressional silence even more relevant). It's also hard for me to see how the other key differences—for instance, that tribes, unlike states, enjoy immunity against state suits (and vice versa), or that courts are more searching in finding waivers by tribes—are directly relevant to the PTAB's decision. Moreover, all of these differences flow from the direct application of Supreme Court precedent.
In fact, although you wouldn't know it from the PTAB's decision, there is Supreme Court precedent on the relationship between tribal and state immunity, from the hoary year of 2017. In Lewis v. Clarke (yes, that's the name of the case), the Court analyzed the analogy between state and tribal sovereign immunity, and, after actually considering the comparison, decided to apply the same doctrine in each instance. "There is no reason to depart from these general rules in the context of tribal sovereign immunity," the Court concluded. Reasons, though, are in short supply in the PTAB's decision.The takeaway, as you've gathered if you've read this far, is that I was disappointed in the PTAB's decision. I was nonetheless surprised at the extent of my disappointment. As I noted in my initial post, I was skeptical of the Allergan deal and its potential consequences for Indian country; at a more fundamental level, I'm also skeptical of the principle of sovereign immunity writ large, even as I believe strongly that tribes, as sovereigns, should enjoy the same rights as other sovereigns. Moreover, teaching and writing in federal Indian law rarely fill me with confidence that the judiciary, particularly the U.S. Supreme Court, will apply the doctrine it has announced in an even-handed and principled way. This doesn't take long to figure out. Once, when I asked one of my students how a particular case might be decided, she responded, "Should I base my answer on what the law says or how the Supreme Court will apply it?"
So why the disappointment? In part, it reflects my experience that, when courts manipulate the rules of federal Indian law because they dislike a particular tribal action, the resulting principles take on a life of their own, often with devastating consequences for Native communities. In this context, I fear that there are many judges and commentators, like Justice Thomas, deeply wedded to state sovereign immunity but strongly opposed to tribal immunity; this decision works toward legitimating that position. My disappointment stems in part, too, from the extreme tendentiousness and obvious ignorance of the PTAB's decision.
But it also derives from Oil States and my opposition to the petitioners' arguments challenging the PTAB, which strike me as part of a broader, wholesale challenge to the legitimacy of the administrative state. As I've written elsewhere, I think these attacks, which cloak themselves in the language of the "Founding," represent a profound misreading of U.S. constitutional history. In short, I believe in the importance and legitimacy of administrative tribunals. Yet the PTAB's decision, at least in this area, demonstrates that, as Jake Sherkow pointed out, these ALJs aren't very good at being judges, even when it comes to such simple requirements as, say, grasping the fundamental, basic contours of an unfamiliar area of law. That makes me wonder if my confidence was misplaced, and that's disappointing.
