Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 132
`Entered: February 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2016-01127 (8,685,930 B2); Case IPR2016-01128 (8,629,111 B2);
`Case IPR2016-01129 (8,642,556 B2); Case IPR2016-01130 (8,633,162 B2);
`Case IPR2016-01131 (8,648,048 B2); Case IPR2016-01132 (9,248,191 B2)
`1
`_______________
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`DECISION
`Denying the Tribe’s Motion to Terminate
`37 C.F.R. §§ 42.5, 42.72
`
`1 Cases IPR2017-00576 and IPR2017-00594, IPR2017-00578 and IPR2017-
`00596, IPR2017-00579 and IPR2017-00598, IPR2017-00583 and IPR2017-
`00599, IPR2017-00585 and IPR2017-00600, and IPR2017-00586 and
`IPR2017-00601, have respectively been joined with the captioned
`proceedings. This Decision addresses issues that are the same in the
`identified cases. Paper numbers and exhibits cited in this Decision refer to
`those documents filed in IPR2016-01127. Similar papers and exhibits were
`filed in the other proceedings.
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`
`
`I. INTRODUCTION
`Based on petitions filed by Mylan Pharmaceuticals, Inc. (“Mylan”),
`we instituted these inter partes review proceedings on December 8, 2016.
`See, e.g., IPR2016-01127, Paper 8 (Decision on Institution). At the time of
`institution, the undisputed owner of the patents being challenged in these
`proceedings was Allergan, Inc. (“Allergan”). Id. at 1. On March 31, 2017,
`we granted motions joining Teva Pharmaceuticals USA, Inc. (“Teva”) and
`Akorn Inc. (“Akorn”) (collectively with Mylan, “Petitioners”) as parties in
`each of these proceedings. Paper 18 (Teva); Paper 19 (Akorn). In each
`proceeding, Allergan filed Patent Owner Responses and Petitioners filed
`Replies. Paper 16; Paper 34. A consolidated oral hearing for these
`proceedings was scheduled for September 15, 2017. Paper 59.
`On September 8, 2017, less than a week before the scheduled hearing,
`counsel for the Saint Regis Mohawk Tribe (“the Tribe”) contacted the Board
`to inform us that the Tribe acquired the challenged patents and to seek
`permission to file a motion to dismiss these proceedings based on the Tribe’s
`sovereign immunity. In view of the Tribe’s purported ownership and
`alleged sovereign immunity, we suspended the remainder of the Scheduling
`Order (Paper 10), authorized the Tribe to file a motion to terminate, and set a
`briefing schedule for the parties. Paper 74. Pursuant to this authorization,
`the Tribe filed “Patent Owner’s Motion to Dismiss[2] for Lack of
`
`2 We note that we authorized the Tribe to file a motion to terminate the
`proceedings, and not a motion to dismiss. Paper 74, 3. Because the Tribe
`did not own the patents at issue at the time we instituted inter partes review,
`
` 2
`
`
`
`
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`Jurisdiction Based on Tribal Sovereign Immunity” on September 22, 2017.
`Paper 81 (“Motion” or “Mot.”). On October 13, 2017, Petitioners filed an
`opposition to the Tribe’s motion to terminate (Paper 86, “Opposition” or
`“Opp’n”). On October 20, 2017, the Tribe filed a reply to Petitioners’
`opposition (Paper 14, “Reply”).
`In view of the public interest and the issue of first impression
`generated by the Tribe’s Motion, we authorized interested third parties to
`file briefs as amicus curiae. Paper 96. We received amicus briefs from the
`following third parties: The Oglala Sioux Tribe (Paper 104); Public
`Knowledge and the Electronic Frontier Foundation (Paper 105); Legal
`Scholars (Paper 106); Askeladden LLC (Paper 107); DEVA Holding A.S.
`(Paper 108); The High Tech Inventors Alliance (Paper 109); The Seneca
`Nation (Paper 110); Native American Intellectual Property Enterprise
`Council, Inc. (Paper 111); Software & Information Industry Association
`(Paper 112); U.S. Inventor, LLC (Paper 113); The National Congress of
`American Indians, National Indian Gaming Association, and the United
`South and Eastern Tribes (Paper 114); Luis Ortiz and Kermit Lopez (Paper
`115); The Association for Accessible Medicines (Paper 116); BSA | The
`Software Alliance (Paper 117); and James R. Major, D.Phil. (Paper 118).
`
`a motion for termination of these proceedings, rather than dismissal, is the
`appropriate process under our rules. See Paper 63 (Patent Owner’s Updated
`Mandatory Notice, filed September 8, 2017, informing the Board that the
`Tribe had taken assignment of the patents-in-suit); 37 C.F.R. § 42.72 (“The
`Board may terminate a trial without rendering a final written decision, where
`appropriate.”); id. § 42.2 (defining “trial” as beginning after institution).
`Thus, notwithstanding the title of the Tribe’s paper, we refer to the Tribe’s
`motion as a “motion to terminate” rather than a motion to dismiss.
`
` 3
`
`
`
`
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`Further pursuant to our authorization, the Tribe and Petitioners filed
`responses to the amicus briefs. Paper 119; Paper 121.
`Additionally, in light of the Board’s recent rulings in Ericsson Inc. v.
`Regents of the University of Minnesota, Case IPR2017-01186 (PTAB
`Dec. 19, 2017) (Paper 14) (“Ericsson”), and LSI Corp. v. Regents of the
`University of Minnesota, Case IPR2017-01068 (PTAB Dec. 19, 2017)
`(Paper 19) (“LSI”), we authorized the Tribe and Petitioners to file
`supplemental briefs on the applicability of litigation waiver to the Tribe’s
`claim of sovereign immunity. Paper 125; Paper 127.
`Upon consideration of the record, and for the reasons discussed
`below, we determine the Tribe has not established that the doctrine of tribal
`sovereign immunity should be applied to these proceedings. Furthermore,
`we determine that these proceedings can continue even without the Tribe’s
`participation in view of Allergan’s retained ownership interests in the
`challenged patents. The Tribe’s Motion is therefore denied.
`
`II. FACTUAL BACKGROUND
`
`A. The Tribe
`The Tribe is a federally recognized Indian tribe with reservation lands
`in New York. Ex. 2091, 4. According to the Tribe, the current reservation
`spans 14,000 acres in Franklin and St. Lawrence Counties. Mot. 1–2. The
`Tribe further states that there are over 15,600 enrolled tribal members, of
`which approximately 8,000 tribal members live on the reservation. Id. at 2.
`The Tribe provides services such as education, policing,
`infrastructure, housing services, social service, and health care for its
`members. Id. But the Tribe notes that its ability to raise revenue through
`
` 4
`
`
`
`
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`taxation and to access capital through banking is limited. Id. at 2–3. Thus,
`the Tribe states that “a significant portion of the revenue the Tribe uses to
`provide basic governmental services must come from economic
`development and investment rather than taxes or financing.” Id. at 3.
`Accordingly, on June 21, 2017, the Tribe adopted a Tribal Council
`Resolution endorsing the creation of a “technology and innovation center for
`the commercialization of existing and emerging technologies,” called the
`Office of Technology, Research, and Patents. Ex. 2094, 1. The Tribal
`Council Resolution states that the Tribe was approached by the law firm
`Shore Chan DePumpo LLP “to engage in new business activities related to
`existing and emerging technologies, which may include the purchase and
`enforcement of intellectual property rights, known as the ‘Intellectual
`Property Project.’” Id. The purpose of the Intellectual Property Project is
`“to promote the growth and prosperity of the Tribe, the economic
`development of the Tribe, and to promote furthering the wellbeing of the
`Tribe and its members.” Id.
`
`B. The Transactions Between Allergan and the Tribe
`Pursuant to its new business venture, the Tribe entered into a Patent
`Assignment Agreement, effective as of September 8, 2017, with Allergan.
`Ex. 2086 (“Assignment”). In the Assignment, Allergan assigned to the
`Tribe a set of U.S. patents and patent applications, including the challenged
`patents in these proceedings, related to Allergan’s “Restasis” drug.
`Ex. 2086, 13–15 (Exhibit A); Ex. 1157, 1. Aside from a limited waiver of
`its sovereign immunity for actions brought by Allergan relating to the
`Assignment, the Tribe represents that “it has not and will not waive its or
`
` 5
`
`
`
`
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`any other Tribal Party’s sovereign immunity in relation to any inter partes
`review or any other proceeding in the United States Patent & Trademark
`Office or any administrative proceeding that may be filed for the purpose of
`invalidating or rendering unenforceable any Assigned Patents.” Ex. 2086
`§ 12(i).
`On the same day, the Tribe and Allergan also entered into a Patent
`License Agreement (“License”) in which the Tribe granted back to Allergan
`“an irrevocable, perpetual, transferable and exclusive license” under the
`challenged patents “for all FDA-approved uses in the United States.”
`Ex. 2087 § 2.1. Additionally, Allergan is granted the first right to sue for
`infringement with respect to “Generic Equivalents,” while the Tribe has the
`first right to sue for infringement unrelated to such Generic Equivalents. Id.
`§§ 5.2.2, 5.2.3. In exchange for the rights granted in the License, Allergan
`paid the Tribe a nonrefundable and noncreditable upfront amount of $13.75
`million. Id. § 4.1. During the royalty term of the License, Allergan will also
`pay the Tribe a nonrefundable and noncreditable amount of $3.75 million
`each quarter ($15 million annually). Id. § 4.2. The License also specifies
`the rights and obligations as between Allergan and the Tribe concerning the
`maintenance and prosecution of the challenged patents, as well as in
`administrative proceedings before the PTO. Id. §§ 5.1.1, 5.3.3
`
`
`
`
`3 We address the relevant provisions of the License in further detail below in
`our analysis of whether Allergan has retained ownership of the challenged
`patents. See infra, § IV.C.
`
` 6
`
`
`
`
`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`III. LEGAL BACKGROUND
`Indian tribes are “domestic dependent nations” that exercise “inherent
`sovereign authority.” Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024,
`2030 (2014) (“Bay Mills”) (quoting Oklahoma Tax Comm’n v. Citizen Band
`Potawatomi Tribe of Okla., 498 U.S. 505, 509 (1991)). “As a matter of
`federal law, an Indian tribe is subject to suit only where Congress has
`authorized the suit or the tribe has waived its immunity.” Kiowa Tribe of
`Okla. v. Mfg. Techs., Inc., 523 U.S. 751, 754 (1998). A tribe’s sovereignty,
`however, “is of a unique and limited character.” United States v. Wheeler,
`435 U.S. 313, 323 (1978). “It exists only at the sufferance of Congress and
`is subject to complete defeasance.” Id.
`
`IV. ANALYSIS
`
`A. There Is No Controlling Precedent or Statutory Basis for the
`Application of Tribal Immunity in Inter Partes Review Proceedings
`The Tribe’s Motion presents an issue of first impression. Relying
`upon the Supreme Court’s decision in Federal Maritime Commission v.
`South Carolina State Ports Authority, 535 U.S. 743 (2002) (“FMC”), the
`Tribe seeks to terminate these proceedings on the basis of its tribal sovereign
`immunity (“tribal immunity”). Mot. 14. As noted by the Tribe, the Supreme
`Court in FMC “held that State sovereign immunity extends to adjudicatory
`proceedings before federal agencies that are of a ‘type . . . from which the
`Framers would have thought the States possessed immunity when they
`agreed to enter the Union.’” Id. (citing FMC, 535 U.S. at 734, 754–56)
`(emphasis added). The Tribe further relies upon certain prior Board
`decisions applying FMC’s holding with respect to state sovereign immunity
`
` 7
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`
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`
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`in the context of inter partes review proceedings. Id. (citing Covidien LP v.
`Univ. of Fla. Research Found. Inc., Case IPR2016-01274 (PTAB Jan. 25,
`2017) (Paper 21) (“Covidien”); Neochord, Inc. v. Univ. of Md., Case
`IPR2016-00208 (PTAB May 23, 2017) (Paper 28) (“Neochord”); Reactive
`Surfaces Ltd, LLP v. Toyota Motor Corp., Case IPR2016-01914, (PTAB
`July 13, 2017) (Paper 36) (“Reactive Surfaces”)).4
`The Tribe and its supporting amici, however, have not pointed to any
`federal court or Board precedent suggesting that FMC’s holding with respect
`to state sovereign immunity can or should be extended to an assertion of
`tribal immunity in similar federal administrative proceedings. Rather, the
`Tribe cites certain administrative decisions of other federal agencies to assert
`that “[t]he principal [sic] that sovereign immunity shields against
`adjudicatory proceedings has been extended to tribes.” Mot. 15–16. We are
`not bound by those agency decisions, but even those decisions do not
`squarely address the issue. For instance, in In re Kanj v. Viejas Band of
`Kumeyaay Indians, the Department of Labor Administrative Review Board
`stated that “[n]othing in existing sovereign immunity jurisprudence indicates
`
`
`4 More recently, expanded panels in the Board’s Ericsson and LSI decisions
`also addressed the applicability of the state sovereign immunity doctrine in
`the context of inter partes review proceedings. Ericsson, slip op. at 5; LSI,
`slip op. at 4–5. The parties each filed a supplemental brief addressing those
`decisions. Paper 125 (Petitioner); Paper 127 (Tribe). Although we have
`considered the reasoned opinions and analyses set forth in each of the prior
`Board decisions (and the parties’ respective arguments concerning the
`decisions), for the reasons stated herein, we find the issue raised in these
`proceedings concerning tribal immunity to be distinguishable from the prior
`cases addressing state sovereign immunity.
`
` 8
`
`
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`
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`that tribes cannot invoke sovereign immunity in administrative adjudications
`such as this,” but ultimately rested its decision on the basis that Congress
`abrogated tribal immunity from Clean Water Act whistleblower complaints.
`2007 WL 1266963, at *2–3 (DOL Adm. Rev. Bd. Apr. 27, 2007). The Tribe
`also cites a single state court decision to support its argument for the
`application of FMC in these proceedings. Mot. 15 (citing Great Plains
`Lending, LLC v. Conn. Dep’t of Banking, No. HHBCV156028096S, 2015
`WL 9310700, at *4 (Conn. Super. Ct. Nov. 23, 2015). However, insofar as
`that state court decision only addressed whether tribal immunity may be
`invoked before a state agency, we find that it is even less relevant to the
`question of whether tribal immunity may be invoked in federal
`administrative proceedings such as ours.
`In this regard, the Supreme Court has stated that “the immunity
`possessed by Indian Tribes is not co-extensive with that of the States.”
`Kiowa, 523 U.S. at 756; see also Three Affiliated Tribes of Fort Berthold
`Reservation v. Wold Eng'g, 476 U.S. 877, 890 (1986) (“Of course, because
`of the peculiar ‘quasi-sovereign’ status of the Indian tribes, the Tribe’s
`immunity is not congruent with that which the Federal Government, or the
`States, enjoy.”). Lower courts have, therefore, not always considered
`Supreme Court precedent concerning state sovereign immunity to be
`applicable in the context of tribal immunity. See Bodi v. Shingle Springs
`Band of Miwok Indians, 832 F.3d 1011, 1021 (9th Cir. 2016) (declining to
`extend Lapides v. Bd. of Regents of the Univ. Sys. of Ga., 535 U.S. 613
`(2002), concerning waiver of state’s sovereign immunity based on litigation
`conduct, to tribal immunity); Contour Spa at the Hard Rock, Inc. v.
`
` 9
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`Seminole Tribe of Fla., 692 F.3d 1200, 1201 (11th Cir. 2012) (same).
`Indeed, the Tribe itself has relied upon these latter cases to argue that the
`litigation waiver doctrine applicable to states should not apply to its
`assertion of tribal immunity in these proceedings. See Paper 127 (Patent
`Owner’s Supplemental Brief on Litigation Waiver), 2.
`Furthermore, Board precedent cautions against the application of non-
`statutory defenses in inter partes review proceedings. See Athena
`Automation Ltd. v. Husky Injection Molding Sys. Ltd., Case IPR2013-00290,
`slip op. at 12–13 (PTAB Oct. 25, 2013) (Paper 18) (precedential) (declining
`to deny petition based on equitable doctrine of assignor estoppel in view of
`statutory language of 35 U.S.C. § 311(a)). There is no statutory basis to
`assert a tribal immunity defense in inter partes review proceedings. See id.
`at 13 (contrasting § 311(a) with 19 U.S.C. § 1337(c) in which Congress
`provided explicitly that “[a]ll legal and equitable defenses may be
`presented” in International Trade Commission (ITC) investigations).
`“There are reasons to doubt the wisdom of perpetuating the [tribal
`immunity] doctrine.” Kiowa, 523 U.S. at 758. In view of the recognized
`differences between the state sovereign immunity and tribal immunity
`doctrines, and the lack of statutory authority or controlling precedent for the
`specific issue before us, we decline the Tribe’s invitation to hold for the first
`time that the doctrine of tribal immunity should be applied in inter partes
`review proceedings.
`
`
`10
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`B. Tribal Immunity Does Not Apply to Inter Partes Review
`Proceedings
`Having considered the arguments of the parties and amici, we are not
`persuaded that the tribal immunity doctrine applies to our proceedings.5 We
`start with the recognition that an Indian tribe’s sovereignty is “subject to the
`superior and plenary control of Congress.” Santa Clara Pueblo v. Martinez,
`436 U.S. 49, 58 (1978). Furthermore, as noted by the Supreme Court,
`“general Acts of Congress apply to Indians . . . in the absence of a clear
`expression to the contrary.” Fed. Power Comm’n v. Tuscarora Indian
`Nation, 362 U.S. 99, 120 (1960); see also id at. 116 (stating “it is now well
`settled . . . that a general statute in terms applying to all persons include
`Indians and their property interests”).
`Here, Congress has enacted a generally applicable statute providing
`that any patent (regardless of ownership) is “subject to the conditions and
`requirements of [the Patent Act].” 35 U.S.C. § 101; see also 35 U.S.C.
`§ 261 (“Subject to the provisions of this title, patents shall have the attributes
`of personal property.”) (emphasis added). Congress has further determined
`that those requirements include inter partes review proceedings. See 35
`U.S.C. §§ 311–319. In this regard, Congress has given the Patent Office
`
`
`5 Our analysis herein is specific to the applicability of tribal immunity in
`inter partes review proceedings, in which the Board assesses the patentable
`scope of previously granted patent claims, and does not address contested
`interference proceedings, which necessarily involve determining the
`respective rights of adverse parties concerning priority of inventorship. Cf.
`Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1382 (Fed. Cir.
`2007).
`
`
`11
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`statutory authorization both to grant a patent limited in scope to patentable
`claims and to reconsider the patentability of those claims via inter partes
`review. MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284, 1289
`(Fed. Cir. 2015) (noting that Congress granted the Patent Office “the
`authority to correct or cancel an issued patent” by creating inter partes
`review). Moreover, these proceedings do not merely serve as a forum for
`the parties to resolve private disputes that only affect themselves. Rather,
`the reconsideration of patentability of issued patent claims serves the
`“important public purpose” of “correct[ing] the agency’s own errors in
`issuing patents in the first place.” Id. at 1290. Indeed, as the Supreme Court
`has explained, a “basic purpose[]” of inter partes review is “to reexamine an
`earlier agency decision,” i.e., take “a second look at an earlier administrative
`grant of a patent,” and thereby “help[] protect the public’s ‘paramount
`interest in seeing that patent monopolies . . . are kept within their legitimate
`scope.’” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016)
`(internal citations omitted).
`Courts have recognized only limited exceptions when a generally
`applicable federal statute should not apply to tribes. For example, the Ninth
`Circuit has stated:
`A federal statute of general applicability that is silent on the issue
`of applicability to Indian tribes will not apply to them if: (1) the
`law touches ‘exclusive rights of self-governance in purely
`intramural matters’; (2) the application of the law to the tribe
`would ‘abrogate rights guaranteed by Indian treaties’; or (3) there
`is proof ‘by legislative history or some other means that Congress
`intended [the law] not to apply to Indians on their reservations.
`
`
`12
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`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`Donovan v. Coeur d’Alene Tribal Farm, 751 F.2d 1113, 1116 (9th Cir.
`1985) (quoting U.S. v. Farris, 624 F.2d 890, 893–94 (9th Cir. 1980)). We
`find that none of these exceptions apply to our statutory authority over these
`proceedings. That is, inter partes review proceedings do not interfere with
`the Tribe’s “exclusive rights of self-governance in purely intramural
`matters.” Id.; see also San Manuel Indian Bingo & Casino v. NLRB, 475
`F.3d 1306, 1312–13 (D.C. Cir. 2007) (“San Manuel”) (stating “when a tribal
`government goes beyond matters of internal self-governance and enters into
`off-reservation business transaction with non-Indians, its claim of
`sovereignty is at its weakest”) (citing Mescalero Apache Tribe v. Jones, 411
`U.S. 145, 148–49 (1973)); NLRB v. Little River Band of Ottawa Indians
`Tribal Gov’t, 788 F.3d 537, 550 (6th Cir. 2015) (“Little River Band”) (“The
`tribes’ retained sovereignty reaches only that power ‘needed to control . . .
`internal relations[,] . . . preserve their own unique customs and social order[,
`and] . . . prescribe and enforce rules of conduct for [their] own members.’”)
`(quoting Duro v. Reina, 495 U.S. 676, 685–86 (1990)). We are also
`unaware of any basis to conclude either that inter partes review proceedings
`“abrogate rights guaranteed by Indian treaties,” or that Congress did not
`intend the proceedings to apply to Indians based on the legislative history of
`the America Invents Act. See Donovan, 751 F.2d at 1116.
`Consistent with the foregoing, the Ninth Circuit has noted that “tribal
`immunity is generally not asserted in administrative proceedings because
`tribes cannot impose sovereign immunity to bar the federal government from
`exercising its trust obligations,” and that “tribal sovereignty does not extend
`to prevent the federal government from exercising its superior sovereign
`
`
`13
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`powers.” Quileute Indian Tribe v. Babbitt, 18 F.3d 1456, 1459 (9th Cir.
`1994). As such, Petitioners and some of their supporting amici have pointed
`out that Indian tribes have not enjoyed immunity in other types of federal
`administrative proceedings used to enforce generally applicable federal
`statutes. See, e.g., Paper 109, 5; Paper 117, 5–6; Paper 121, 12; Consumer
`Fin. Prot. Bureau v. Great Plains Lending, LLC, 846 F.3d 1049, 1058 (9th
`Cir. 2017) (permitting Consumer Financial Protection Bureau to bring
`enforcement proceeding against tribal lending entities); Little River Band,
`788 F.3d at 555 (permitting National Labor Relations Board (“NLRB”)
`proceeding against tribal casino); Menominee Tribal Enters. v. Solis, 601
`F.3d 669, 674 (7th Cir. 2010) (permitting Occupational Safety and Health
`Act proceeding against tribe’s sawmill operation); cf. EEOC v. Karuk Tribe
`Hous. Auth., 260 F.3d 1071, 1075, 1081 (9th Cir. 2001) (determining that
`although tribe did not enjoy immunity from federal agency inquiry, the Age
`Discrimination in Employment Act did not apply to a tribal authority’s
`“intramural” dispute with a tribe member).
`The Tribe seeks to distinguish the above cases on the basis that each
`of the prior administrative proceedings against a tribe involved “agency-
`based prosecution” in which a government attorney was “responsible for all
`aspects of proving up the case, such as discovery, developing expert
`testimony, calling witnesses and presenting arguments.” Paper 119, 9–10.
`Inter partes review proceedings do not involve a separate government party
`that “prosecutes” the case before the Board. See 37 C.F.R. § 42.2 (defining
`“party” to include petitioner and patent owner). Nonetheless, we are not
`persuaded that the lack of involvement of a government attorney at this stage
`
`
`14
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`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`creates a meaningful distinction such that tribal immunity should apply to
`these proceedings. As recognized by the Tribe, agency proceedings may be
`initiated based on third-party complaints filed against a tribal entity. Paper
`119, 9–10. But, moreover, the third party may be permitted to intervene in
`such proceedings and participate beyond just the initial role of filing the
`complaint. See San Manuel, 475 F.3d at 1312–13 (permitting NLRB
`proceeding against tribal casino based on complaint filed by labor union,
`where labor union continued to participate as intervenor). Accordingly, a
`private entity’s continued involvement as a party in a federal administrative
`proceeding does not necessarily entitle a tribal entity to assert its immunity
`in that proceeding.
`The Tribe also contends that “while the federal government has the
`authority to enforce a law of general applicability against a tribe, private
`citizens do not have the authority to enforce such laws absent abrogation of
`immunity.” Paper 119, 8–9 (citing Fla. Paraplegic Assoc. v. Miccosukee
`Tribe of Indians of Fla., 166 F.3d 1126 (11th Cir. 1999) (“Miccosukee”)).
`Miccosukee did not involve a federal administrative proceeding, but rather a
`private right of action brought in federal district court against a tribal
`employer under the Americans with Disabilities Act. 166 F.3d at 1127 (“We
`hold that Congress has not abrogated tribal sovereign immunity with respect
`to this statute so as to allow a private suit against an Indian tribe.”). To be
`clear, there was no federal agency involved in that litigation. As such, we
`find the Miccosukee decision to be of minimal relevance to the question of
`whether tribal immunity may be invoked in federal administrative
`proceedings such as these proceedings.
`
`
`15
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`
`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`The doctrine of tribal immunity has been described as “the common-
`law immunity from suit traditionally enjoyed by sovereign powers.” Santa
`Clara Pueblo, 436 U.S. at 58. We determine that an inter partes review
`proceeding is not the type of “suit” to which an Indian tribe would
`traditionally enjoy immunity under the common law. Cf. Bonnet v. Harvest
`(U.S.) Holdings, Inc., 741 F.3d 1155, 1159 (10th Cir. 2014) (determining
`that subpoenas served directly on a tribe can trigger tribal immunity based
`on a definition of “suit” that includes “legal proceedings, at law or in equity”
`or “judicial process,” which “comports with the core notion of sovereign
`immunity that in the absence of governmental consent, the courts lack
`jurisdiction to ‘restrain the government from acting, or to compel it to act’”)
`(quoting Larson v. Domestic & Foreign Commerce Corp., 337 U.S. 682,
`704 (1949); Belknap v. Schild, 161 U.S. 10, 16 (1896)). In these
`proceedings, we are not adjudicating any claims in which Petitioners may
`seek relief from the Tribe, and we can neither restrain the Tribe from acting
`nor compel it to act in any manner based on our final decisions. Indeed,
`there is no possibility of monetary damages or an injunction as a “remedy”
`against the Tribe. Rather, as discussed above, the scope of the authority
`granted by Congress to the Patent Office with respect to inter partes review
`proceedings is limited to assessing the patentability of the challenged claims.
`Furthermore, the Board does not exercise personal jurisdiction over
`the patent owner. At most, the Board exercises jurisdiction over the
`challenged patent in an inter partes review proceeding.6 The Tribe cannot
`
`
`6 Several amici supporting Petitioners have asserted that inter partes
`
`
`16
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`

`

`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`be compelled to appear as a party in these proceedings. 37 C.F.R. §§
`42.108(c) (requiring the Board to take a preliminary response into account in
`deciding whether to institute trial only “where such a response is filed”), §
`42.120(a) (“A patent owner may file a response to the petition addressing
`any ground for unpatentability not already denied.”) (emphasis added). In
`this regard, a patent owner’s participation is not required, and inter partes
`reviews have proceeded to a final written decision under 35 U.S.C. § 318(a)
`even where the patent owner has chosen not to participate. See, e.g.,
`Microsoft Corp. v. Global Techs., Inc., Case IPR2016-00663 (PTAB June 2,
`2017) (Paper 35) (entering adverse judgement and final written decision
`where no legally recognized patent owner made an appearance); Old
`Republic Gen. Ins. Group, Inc. v. Owner of U.S. Patent No. 6,519,581, Case
`IPR2015-01956 (PTAB Apr. 18, 2017) (Paper 39) (entering final written
`decision without participation by the patent owner).
`Finally, if the parties to an inter partes review settle their dispute, the
`Board may continue to “independently determine any question of
`jurisdiction, patentability, or Office practice.” 37 C.F.R. § 42.74(a); see also
`