Welcome to Skilled in the Art, the IP briefing where the reader is always sovereign. I'm Law.com reporter Scott Graham, and I will do my best not to affront your dignity. As you can probably tell, I have sovereign immunity on the mind, now that the Saint Regis Mohawk Tribe has asked the U.S. Supreme Court to rule that it should be immune from America Invents Act proceedings. I have a quick take below, plus a peek at the tribe's alternate argument at the Patent Trial and Appeal Board. As always you can email me your thoughts and follow me on Twitter.

PTAB Sovereign Immunity Case at High Court

They've argued to the PTAB. They've argued to district court and the Federal Circuit. And now the Saint Regis Mohawk Tribe and Allergan are making their case to the Supreme Court that the Patent Trial and Appeal Board must recognize sovereign immunity in America Invents Act proceedings.

“This court should grant review to decide whether IPRs are the type of proceeding in which Indian tribes, state universities, or indeed any sovereign entity may assert sovereign immunity,” the tribe and Allergan argue in a December cert petition.

Jonathan Massey of Massey & Gail is counsel of record and joined by attorneys from Covington & Burling and Shore Chan DePumpo, among others. The case poses a final test of whether Allergan can shield its Restasis patents from PTAB review through a complex licensing deal with the tribe. Critics have accused Allergan of “renting” tribal immunity, though scholars including Laurence Tribe and Erwin Chemerinsky have defended the deal.

The key to the case—or at least certiorari—is going to be whether the Supreme Court considers IPRs similar enough to civil litigation for sovereign immunity to attach. As Judge Kimberly Moore pointed out in her opinion for the Federal Circuit last year, there's tension between the Supreme Court's 2018 opinions in SAS Institute v. Iancu, which stressed that the IPR procedure “mimics civil litigation,” and Oil States v. Greene's Energy, which said that IPR is merely “a second look at an earlier administrative grant of a patent.” Moore concluded that IPRs are a hybrid of the two.

Massey argues that's wrong. “There is no such 'tension' and no conflict in this court's decisions,” he writes. “Neither SAS nor Oil States referred to IPRs as a 'hybrid proceeding.'”

That's true as far as it goes, but the Supreme Court did use the phrase “hybrid proceeding” to describe IPRs just two years ago in Cuozzo v. Lee.

For Moore, the PTO director's broad discretion over IPR proceedings tipped the balance toward administrative review. Massey calls that “an exaggerated view of the director's role in IPRs” that was rejected in SAS.

“The petition is formulated, drafted, and filed by a private party, not the PTAB,” he writes.

Making Lemonade From Sovereign Immunity Lemons

Regardless of whether it gets Supreme Court review, the Saint Regis Mohawk Tribe is getting some mileage from Judge Moore's opinion.

The tribe this week asked PTO Director Andrei Iancu and the PTAB to exercise their discretion to reject a series of IPRs that Microsoft filed against the tribe, in part based on sovereign immunity. Though it considers Moore's opinion wrongly decided, the tribe cites the rationale that the PTO director bears political responsibility for determining which cases should proceed, and can take into account a patent owner's sovereign status.

“Accordingly, the tribe respectfully requests that the director exercise his discretion to deny this petition based on the tribe's status as a sovereign,” Shore Chan partner Alfonso Chan wrote in a preliminary response to Microsoft's petitions filed Tuesday.

The tribe is teaming up with SRC Labs, a provider of supercomputing technology to defense contractor Lockheed Martin, to sue Microsoft. They allege that Microsoft “shamelessly copied and claimed credit” for SRC's advances in field programmable gate arrays.

Microsoft, represented by Sidley Austin, has filed 10 IPRs challenging six different patents. It argues in one that the Institute of Electrical and Electronics Engineers described the technology before it was patented. If that prior art had been before the patent examiner, the PTO never would have issued the patent, it says.

As with the Allergan arrangement, SRC has assigned the patents to the Saint Regis tribe while getting a license back. The tribe says the money it earns from such deals strengthens the tribal economy while supporting housing, employment and education.

Feds: We'd Be Challenging FRAND Theory If We Weren't Shut Down

A Swiss developer of cellular modules used in automobile navigation systems sued InterDigital on New Year's Day, accusing it of reneging on its commitment to license standard-essential patents on fair, reasonable and non-discriminatory terms.

The DOJ's antitrust division let it be known last week that it takes issue with the antitrust portion of u-blox's San Diego federal court suit—or that it would, if the government weren't partly shut down.

“Due to a lapse in funding that took effect at the Antitrust Division at midnight on January 4, 2019,” the government states in a notice of intent to file a statement of interest, “the division is prohibited by the Anti-deficiency Act, 31 U.S.C. Section 1341, from working at this time on such a Statement of Interest.”

It's not too surprising that the government would seek to weigh in. Antitrust chief Makan Delrahim has very publicly criticized the notion that SEP holders violate antitrust law by seeking injunctions against the sale of infringing goods.

The government's three-page filing states that u-blox's antitrust cause of action “does not properly sound in antitrust law.” It asks U.S. District Judge Cathy Ann Bencivengo to delay a hearing on u-blox's motion for a TRO until funding is restored—or that she order the DOJ to file a statement, which would then free it from the Anti-deficiency Act restrictions.

Antitrust is not the centerpiece of u-blox's case. The company's attorneys at Sheppard Mullin Richter & Hampton on Monday moved to withdraw the antitrust cause of action for purposes of the TRO hearing, which is scheduled for Jan. 31. “As such, the issue raised in the notice of intent is moot,” u-blox argues.

InterDigital is represented by Wilson Sonsini Goodrich & Rosati.