throbber

`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`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)
`___________
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`BRIEF OF ASKELADDEN LLC AS AMICUS CURIAE IN OPPOSITION
`TO ST. REGIS MOHAWK TRIBE’S MOTION TO DISMISS
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`667499.1
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`I. 
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`II. 
`
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1 
`
`INTERESTS OF AMICUS CURIAE ............................................................... 3 
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`III.  ARGUMENT ................................................................................................... 4 
`
`A.  Notions of Tribal Sovereign Immunity Do Not Apply to
`Administrative Proceedings Like This One .......................................... 4 
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`B. 
`
`C. 
`
`The PTAB May Proceed Without a Patent Owner ............................... 9 
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`Post-Institution Acts of the Patent Owner Should Not Divest the
`Office of Jurisdiction to Complete These Proceedings ....................... 12 
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`D. 
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`The Transaction Should Be Disregarded As a Sham .......................... 14 
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`IV.  CONCLUSION .............................................................................................. 15 
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Allergan, Inc. v. Teva Pharms. USA, Inc.,
`No. 2:15-cv-1455-WCB (E.D. Tex. Oct. 16, 2017) (ECF No. 522)
`(Ex. 1163) ...................................................................................................... 2, 14
`
`In re Ayers,
`123 U.S. 443 (1887) ............................................................................................. 7
`
`In re Business Council of the N. Arapaho Tribe,
`29 FCC Rcd. 2650 (F.C.C. Mar. 10, 2014), available at
`https://apps.fcc.gov/edocs_public/attachmatch/DA-14-331A1.pdf ................ 6, 7
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`Cty. of Yakima v. Confederated Tribes and Brands of Yakima Nation,
`502 U.S. 251 (1992) .............................................................................................. 9
`
`In re Confederated Tribes and Bands of the Yakama Nation,
`31 FCC Rcd. 8857 (F.C.C. Aug. 10, 2016), available at
`https://apps.fcc.gov/edocs_public/attachmatch/DA-16-904A1.pdf ..................... 6
`
`Covidien LP v. University of Florida Research Foundation Inc.,
`IPR2016-01274 (PTAB Jan. 25, 2017) (Paper 21)
`(Ex. 2095) ........................................................................................................... 10
`
`Cuozzo Speed Techs. v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................passim
`
`Federal Power Commission v. Tuscarora Indian Nation,
`362 U.S. 99 (1960) .............................................................................................. 11
`
`Federal Maritime Commission v. S.C. State Ports Authority,
`535 U.S. 743 (2002) .......................................................................................... 7, 8
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`Freeport-McMoRan Inc. v. K N Energy, Inc.,
`498 U.S. 426 (1991) ...................................................................................... 12–13
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`Kiowa Tribe of Oklahoma v. Manufacturing Techs., Inc.,
`523 U.S. 751 (1998) .....................................................................................passim
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`Kramer v. Caribbean Mills, Inc.,
`394 U.S. 823 (1969) ............................................................................................ 14
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`Lundgren v. Upper Skagit Indian Tribe,
`187 Wn.2d 857 (Wash. 2017),
`petition for cert. filed, No. 17-387 (S. Ct. Sept. 11, 2017) ................................. 13
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`Michigan v. Bay Mills Indian Community,
`134 S. Ct. 2024 (2014) .................................................................................passim
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`Nevada v. Hall,
`440 U.S. 410 (1979) ........................................................................................ 5, 13
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`Oklahoma Tax Comm’n v. Citizen Band Potawatomi Indian Tribe,
`498 U.S. 505 (1991) .......................................................................................... 6, 7
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`Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co.,
`324 U.S. 806 (1945) ........................................................................................ 3, 13
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`Reactive Surfaces Ltd. v. Toyota Motor Corp.,
`IPR2016-01914 (PTAB July 13, 2017) (Paper 36)
`(Ex. 2097) ........................................................................................................... 10
`
`Tennessee Student Assistance Corp. v. Hood,
`541 U.S. 440 (2004) ............................................................................................ 10
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`Vas-Cath, Inc. v. Curators of the Univ. of Mo.,
`473 F.3d 1376 (Fed. Cir. 2007) ......................................................................... 15
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`Statutes
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`35 U.S.C. § 143 .......................................................................................................... 9
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`35 U.S.C. §§ 311–319 .......................................................................................... 2, 11
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`35 U.S.C. § 311 ........................................................................................................ 11
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`35 U.S.C. § 312 ........................................................................................................ 10
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`35 U.S.C. § 313 .................................................................................................. 10, 11
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`35 U.S.C. § 314 .......................................................................................................... 9
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`35 U.S.C. § 315 ........................................................................................................ 10
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`35 U.S.C. § 317 .................................................................................................. 10, 12
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`Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) .....................................passim
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`Other Authorities
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`37 C.F.R. § 42.107(a) ............................................................................................... 11
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`U.S. Const. Amend. XI .......................................................................................... 7, 9
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`H.R. Rep. No. 112-98 (2011) ................................................................................. 3, 8
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`I.
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`INTRODUCTION
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`Pursuant to the Board’s Order of November 3, 2017 (Paper 96),1 Amicus
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`Curiae Askeladden LLC (“Amicus” or “Askeladden”) submits this amicus brief in
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`support of Petitioner’s Opposition (Paper 87) to Corrected Patent Owner’s Motion
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`to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign Immunity (Paper
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`81) filed by St. Regis Mohawk Tribe (“the Tribe”).
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`First, the Tribe’s motion is based on the misplaced theory that Tribal
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`Sovereign Immunity is applicable to administrative proceedings before the
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`PTAB. While the Supreme Court has repeatedly confirmed that, as a matter of
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`judicial construct, Native American Tribes (like the Tribe) can be immune from
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`“suits” in a court absent abrogation or waiver (see Paper 81, at 8), such immunity
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`does not extend to all government action. See, e.g., Kiowa Tribe of Okla. v. Mfg.
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`Techs., Inc., 523 U.S. 751, 755 (1998). In this regard, a PTAB proceeding is not a
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`“suit” in court, but instead an administrative proceeding in which the Office
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`(through the PTAB) takes “a second look at an earlier administrative grant of a
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`patent.” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (“Cuozzo”).
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`As such, like other administrative actions in which States or Federal Agencies (like
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`the Federal Power Commission) may regulate rights or responsibilities of Tribes
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`with respect to off-reservation activities, a PTAB proceeding is one of the “other
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`1 All paper numbers and exhibits cited herein refer to filings in IPR2016-01127.
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`mechanisms” available to the Government to resolve questions of patent validity as
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`the administrative authority granting the patent in the first instance. Cf. Michigan
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`v. Bay Mills Indian Cmty., 134 S. Ct. 2024, 2028 (2014).
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`Second, even if the Tribe cannot be compelled to participate in this
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`proceeding, the PTAB retains authority to adjudicate the validity of patents under
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`review. Indeed, there is no requirement under the AIA that a patent owner
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`participate in a proceeding in order for it to proceed. See 35 U.S.C. §§ 311–319.
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`Third, there is no dispute that the PTAB has had jurisdiction over the
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`patents-at-issue in, and the parties to, these proceedings from the moment that the
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`Petitions were filed and at the time that the Decisions on Institution issued. Thus,
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`irrespective of whether notions of Tribal Sovereign Immunity are applicable, the
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`subsequent transaction by the Patent Owner and the Tribe cannot and should
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`not be entitled to divest the PTAB of its rights and duty to complete these
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`proceedings. Cf. Cuozzo, 136 S. Ct. at 2144.
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`Finally, to the extent that the PTAB concludes, like Judge Bryson postulated
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`in the co-pending district court proceeding, that the transaction assigning
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`Allergan’s patents to the Tribe with a license back to the original patent owner is
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`nothing more than a sham (Ex. 1163, at 4), the motion should be denied. This
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`Office has a duty to “protect the public’s ‘paramount interest in seeing that patent
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`monopolies . . . are kept within their legitimate scope.’” Cuozzo, 136 S. Ct. at
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`2144–45 (quoting Precision Instr. Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S.
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`806 (1945)), and this inter partes review (“IPR”) is an “efficient system for
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`challenging patents that should not have issued.” Cuozzo, 136 S. Ct. at 2144–45
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`(quoting H.R. Rep. No. 112-98, at 39–40 (2011)). Consistent with the Court’s
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`guidance that collusive agreements cannot (and should not) divest a court of
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`jurisdiction, the agreements here should not divest the PTAB of its jurisdiction to
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`complete the task it has rightfully begun.
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`II.
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`INTERESTS OF AMICUS CURIAE
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`Amicus Curiae Askeladden is a wholly owned subsidiary of The Clearing
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`Housing Payments Company L.L.C. Askeladden founded the Patent Quality
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`Initiative (“PQI”) as an education, information, and advocacy effort to improve the
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`understanding, use, and reliability of patents in financial services and elsewhere.
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`Askeladden strives to support the patent system by, among other activities,
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`regularly filing amicus briefs in cases presenting important issues of patent law.
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`The sovereign immunity issue raised by the Tribe in its Motion to Dismiss is
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`one such important issue. Congress established the IPR, as well as the post-grant
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`review, and covered business method patent review, as a way for the Patent Office
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`to review issued patent claims. Cuozzo, 136 S. Ct. at 2149 (citing Leahy-Smith
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`America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011)). Under an
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`IPR, “anyone may file a petition challenging the patentability of an issued patent
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`claim at almost any time,” regardless of the case-or-controversy requirement for
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`standing in court. Cuozzo, 136 S. Ct. at 2149. Askeladden has a strong interest in
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`the proper functioning of such IPR proceedings, as it regularly files IPR petitions
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`at the PTAB to take a second look at patents that it believes are invalid and may be
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`used to inhibit innovation in the financial services industry.
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`The misplaced notions of Tribal Sovereign Immunity advanced by the Tribe,
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`and the type of late-in-the-game sham transaction that appears to have occurred
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`with respect to the patents-at-issue here, threaten the proper functioning of IPRs.
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`Thus, Askeladden believes that the Tribe’s Motion to Dismiss should be denied.
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`III. ARGUMENT
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`A. Notions of Tribal Sovereign Immunity Do Not Apply to
`Administrative Proceedings Like This One
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`The Tribe’s motion is premised on the proposition that “The Tribe Possesses
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`Immunity from Suit.” (Paper 81, at 8). However, the Tribe fails to acknowledge
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`that sovereign immunity granted to Native American tribes is limited, and does not
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`always extend to administrative proceedings, like IPRs before the PTAB.
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`Native American tribes are “‘domestic dependent nations’” that exercise
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`“inherent sovereign authority.” Bay Mills, 134 S. Ct. at 2030. Among the core
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`aspects of sovereignty that tribes possess—subject to congressional action—is the
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`“common-law immunity from suit traditionally enjoyed by sovereign powers.” Id.
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`Such immunity is found “in an agreement, express or implied between the two
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`sovereigns, or in the voluntary decision of the second [sovereign] to respect the
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`dignity of the first [sovereign] as a matter of comity.” Nevada v. Hall, 440 U.S.
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`410, 416 (1979). The doctrine of Tribal Sovereign Immunity developed on a
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`“slender reed” from a “passing reference to immunity” to become “an explicit
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`holding that tribes had immunity from suit.” Kiowa, 523 U.S. at 757. “As
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`sovereigns or quasi sovereigns, the Indian Nations enjoyed immunity ‘from
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`judicial attack’ absent consent to be sued.” Id.
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`As recognized in Cuozzo, an IPR is an administrative process held before the
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`U.S. Patent and Trademark Office, an administrative agency, and not a law suit
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`held in a Court. 136 S. Ct. at 2137–38. As such, traditional concerns regarding
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`sovereign immunity, which focus on immunity from suit in a court, do not come
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`into play. Bay Mills, 134 S. Ct. at 2030–31 (tribal sovereign immunity applies to
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`“any suit against a tribe absent congressional authorization (or a waiver)”).
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`In Kiowa, the Court explained:
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`We have recognized that a State may have authority to tax or regulate
`tribal activities occurring within the State but outside Indian country.
`. . . however, [that] is not to say that a tribe no longer enjoys immunity
`from suit. In Potawatomi, for example, we reaffirmed that while
`Oklahoma may tax cigarette sales by a Tribe’s store to nonmembers,
`the Tribe enjoys immunity from a suit to collect unpaid state taxes.
`[Okla. Tax Comm’n v. Citizen Band Potawatomi Indian Tribe, 498
`U.S. 505, 510 (1991)]. There is a difference between the right to
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`demand compliance with state laws and the means available to
`enforce them. See id., at 514.
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`523 U.S. at 755. Thus, Kiowa recognizes a distinction between passing a law
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`which may govern off-reservation activities of a tribe (e.g., a tax on the sale of
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`cigarettes or granting or revoking a license or a patent) and the ability to enforce in
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`courts those laws. Indeed, this distinction was further recognized in Michigan v.
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`Bay Mills, where the Court recognized that even if sovereign immunity barred a
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`lawsuit by the state of Michigan against a tribe, “Michigan must therefore resort to
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`other mechanisms, . . . to resolve this dispute.” 134 S. Ct. at 2028 (emphasis
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`added). One such mechanism authorized by the Court was that “Michigan could,
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`in the first instance, deny a license to [the identified tribe] for an off-reservation
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`casino.” Id. at 2035.2
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`2 For example, other Federal Agencies, such as the Federal Communications
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`Committee (“FCC”), have exercised their power to regulate the continuation of
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`previously issued licenses, even when the licensee is a tribe. See, e.g., In re
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`Confederated Tribes and Bands of the Yakama Nation, 31 FCC Rcd. 8857, 8857
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`(F.C.C. Aug. 10, 2016), available at
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`https://apps.fcc.gov/edocs_public/attachmatch/DA-16-904A1.pdf; In re Business
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`Council of the N. Arapaho Tribe, 29 FCC Rcd. 2650, 2650 (F.C.C. Mar. 10, 2014),
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`available at https://apps.fcc.gov/edocs_public/attachmatch/DA-14-331A1.pdf.
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`An IPR—a PTAB proceeding to take a second look at its earlier grant of a
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`patent—is one these “other mechanisms” authorized by Bay Mills to be used
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`against Native American Tribes. Specifically, an IPR is more akin to a state
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`imposing a tax or granting or revoking a license, than it is to a lawsuit seeking to
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`enforce those tax laws or impose penalties for unlicensed activities. Cf.
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`Potawatomi, 498 U.S. at 512 (“Although the doctrine of tribal sovereign immunity
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`applies to the Potawatomis, that doctrine does not excuse a tribe from all
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`obligations to assist in the collection of validly imposed state sales taxes.”).
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`Amicus notes that while Federal Maritime Commission v. S.C. State Ports
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`Authority, 535 U.S. 743 (2002) (“FMC”) is instructive, it is distinguishable. In
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`FMC, a State run entity asserted sovereign immunity as a defense against litigation
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`before an independent agency, the Federal Maritime Commission. In finding that
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`Eleventh Amendment State Sovereign Immunity principles were applicable to that
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`proceeding, FMC relied upon, inter alia, the bargain reached between the States in
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`the constitutional convention to arrive at the Eleventh Amendment (a factor not at
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`play in the case of Tribal Sovereign Immunity, which is merely grounded in
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`comity). Compare FMC, 535 U.S. at 751–52, with Bay Mills, 134 S. Ct. at 2031.
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`A factor behind the FMC Court’s decision was the “interest in protecting
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`States’ dignity,” explaining that “[p]rivate suits against nonconsenting States . . .
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`present ‘the indignity of subjecting a State to the coercive process of judicial
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`tribunals at the instance of private parties,’ regardless of the forum.” FMC, 535
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`U.S. at 751 (quoting In re Ayers, 123 U.S. 443, 505 (1887)) (emphasis in original).
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`The Court noted that—rather than subjecting sovereign states to this indignity of
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`being sued by private parties—private parties could obtain the same relief sought
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`in the FMC proceedings by bringing their complaints to the FMC directly, and
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`urging the FMC to bring a suit in district court. 535 U.S. at 768 & n.19. No
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`similar procedure exists here for patents.
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`As the Court recognized in Cuozzo, an IPR is an administrative proceeding
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`that simply entails “a second look at an earlier administrative grant of a patent.”
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`Cuozzo, 136 S. Ct. at 2144. Also unlike FMC, a PTAB proceeding does not result
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`in a litigation-like remedy. Rather, it is intended to be an “efficient system for
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`challenging patents that should not have issued.” H.R. Rep. No. 112-98, at 39–40
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`(2011) (quoted by Cuozzo, 136 S. Ct. at 2144 (“the purpose of the proceeding is
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`not quite the same as the purpose of district court litigation”)). As discussed
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`further below, the Cuozzo Court explained how, in many ways, “inter partes review
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`is less like a judicial proceeding and more like a specialized agency proceeding.”
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`Cuozzo, 136 S. Ct. at 2143. For example, the private parties that initiate IPRs need
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`not stay in the proceedings, and the Patent Office (i.e., the U.S. Government)
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`exercises discretion over institution and is permitted to intervene in any appeal of
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`an IPR proceeding. Cuozzo, 136 S. Ct. at 2140 (citing 35 U.S.C. § 314(a)); 35
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`U.S.C. § 143.
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`Furthermore, prior panel decisions holding that a state may assert Eleventh
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`Amendment sovereign immunity are inapplicable here. See, e.g., Reactive Surfaces
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`Ltd., LLP v. Toyota Motor Corp. No. IPR2016-1914, Paper 36 (P.T.A.B. July 13,
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`2017). Those decisions turned on the notion that IPRs are the type of proceeding
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`from which the Framers of the Constitution would have thought the states
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`possessed immunity. However, “the immunity possessed by Indian tribes is not
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`coextensive with that of the States,” Kiowa, 523 U.S. at 755–56, since it evolved
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`out of judicial doctrine rather than the Eleventh Amendment. Thus, the Board
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`should not extend these prior decisions to include Tribal Sovereign Immunity.
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`B.
`The PTAB May Proceed Without a Patent Owner
`An IPR proceeding is focused on the patent, not the patent owner. Indeed,
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`the patent owner is not required to participate in the proceeding. As such,
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`principles of immunity from suit are simply inapplicable. Cf. Cty. of Yakima v.
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`Confederated Tribes and Brands of Yakima Nation, 502 U.S. 251, 264–65 (1992)
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`(recognizing that taxation of fee-patented land under in rem jurisdiction could be
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`exercised against land owned by a sovereign Native American tribe).
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`While the AIA sets forth certain limits on what must be in a Petition (see,
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`e.g., 35 U.S.C. § 312), who may file a Petition (see, e.g., 35 U.S.C. § 315), and
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`even provides a patent owner a right to respond to the Petition (see, e.g., 35 U.S.C.
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`§ 313), it does not require participation by a Patent Owner (or even the
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`Petitioner) for the PTAB to complete its task (see, e.g., 35 U.S.C. § 317(a)). See,
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`e.g., Cuozzo, 136 S. Ct. at 2144 (“challengers need not remain in the proceeding;
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`rather that Patent Office may continue to conduct an inter partes review even after
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`the adverse party has settled. § 317(a).”); Ex. 2097, Reactive Surfaces Ltd. v.
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`Toyota Motor Corp., IPR2016-01914, slip op. at 17 (PTAB July 13, 2017) (Paper
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`36) (“We conclude that Patent Owner has not shown sufficiently that dismissal of
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`the Regents from this proceeding requires termination of the proceeding as to the
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`remaining patent owner, Toyota.”).3
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`3 In Covidien LP v. University of Florida Research Foundation Inc., IPR2016-
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`01274 (PTAB Jan. 25, 2017) (Paper 21) (Ex. 2095), another panel rejected the fact
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`that an IPR is an in rem proceeding because the patent owner could be subject to
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`an estoppel from an adverse judgment. However, the Supreme Court rejected that
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`kind of analysis in Tennessee Student Assistance Corp v. Hood, 541 U.S. 440
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`(2004). Specifically, the Court found that sovereign immunity did not apply to a
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`bankruptcy court’s in rem jurisdiction because “a nonparticipating creditor cannot
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`be subjected to personal liability.” Id. at 447–48. This was true even though a
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`discharge order would apply to a nonparticipating sovereign creditor. Thus, even
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`though estoppel may apply to the patent holder, such estoppel is still not personal
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`Where, like the AIA, Congress adopts “a general statute in terms applying to
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`all persons [it] includes Indians and their property interests.” Fed. Power Comm’n
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`v. Tuscarora Indian Nation, 362 U.S. 99, 116 (1960) (“FPC”). FPC held “that
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`Congress, by the broad general terms of § 21 of the Federal Power Act, has
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`authorized the Federal Power Commission’s licensees to take lands owned by
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`Indians, as well as those of all other citizens, when needed for a licensed project,
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`upon the payment of just compensation . . . .” Id. at 123. Similarly, the AIA
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`allows any “person who is not a patent owner” to be a Petitioner (35 U.S.C.
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`§ 311(a); Cuozzo, 136 S. Ct. at 2150), subject to meeting the other requirements of
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`Sections 311–319, and offers no restriction on which Patent Owners are authorized
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`to respond (35 U.S.C. § 313) or waive a right to respond (e.g., 37 C.F.R.
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`§ 42.107(a)). The Petitioner need not even have constitutional standing. Cuozzo,
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`136 S. Ct.. at 2143–44; see also 35 U.S.C. § 311(a) (“a person who is not the
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`owner of a patent may file with the Office a petition to institute an inter partes
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`review of a patent.”).
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`liability, and thus does not undermine this Board’s in rem jurisdiction over a
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`patent.
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`C.
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`Post-Institution Acts of the Patent Owner Should Not Divest the
`Office of Jurisdiction to Complete These Proceedings
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`When these proceedings began there was no concern about participation by
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`any sovereign; Allergan was the patent owner, not the Tribe. Thus, at the time the
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`Petitions were filed, and the time of the Decisions on institution, it was Allergan
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`who owned and continued to own the patents here, and, in fact, participated as the
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`Patent Owner in these proceedings. While a change of a party’s ownership mid-
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`proceeding may justify the addition or substitution of a party to a proceeding, it
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`should not entitle a party to usurp the Office’s ability to complete a process that
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`was properly commenced. Consistent with the fact that “the Patent Office may
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`continue to conduct an inter partes review even after the adverse party has settled,”
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`Cuozzo, 136 S. Ct. at 2144 (citing 35 U.S.C. § 317(a)), the Patent Office may
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`continue to conduct an IPR even after the adverse party has attempted to assign the
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`patent in order to assert sovereign immunity.
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`Allowing the Office to finish a proceeding it properly commenced comports
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`with the way that courts have treated other attempts to retroactively escape
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`jurisdiction. For example, a party cannot defeat diversity jurisdiction by moving,
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`incorporating in another state, or otherwise changing its citizenship after the filing
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`of a complaint. In Freeport-McMoRan Inc. v. K N Energy, Inc., the Supreme
`
`Court explained that it has “consistently held that if jurisdiction exists at the time
`
`an action is commenced, such jurisdiction may not be divested by subsequent
`
`667499.1
`
`12
`
`

`

`
`
`events.” 498 U.S. 426, 428 (1991). The Supreme Court explained that allowing
`
`such subsequent events to defeat diversity jurisdiction “is not in any way required
`
`to accomplish the purposes of diversity jurisdiction.” Id. at 429.
`
`Likewise, allowing the PTAB to complete a properly instituted IPR does not
`
`undermine the purposes of Tribal Sovereign Immunity. The U.S. would not be
`
`disrespecting the “dignity” of the Tribe as a sovereign nor subjecting the Tribe to
`
`“judicial attack” by continuing an IPR that the Tribe had full notice of prior to
`
`acquiring the patents at issue here. See Hall, 440 U.S. at 416; Kiowa, 523 U.S. at
`
`757; cf. Lundgren v. Upper Skagit Indian Tribe, 187 Wn.2d 857, 873 (Wash. 2017)
`
`(refusing to allow a tribe to assert Tribal Sovereign Immunity in an in rem property
`
`dispute where the tribe could have discovered the dispute prior to purchasing the
`
`property), petition for cert. filed, No. 17-387 (S. Ct. Sept. 11, 2017).
`
`Rather, allowing the Office to finish a proceeding it properly commenced
`
`furthers the purpose of IPRs. As Cuozzo recently clarified, Congress intended that
`
`IPRs would “help[] protect the public’s ‘paramount interest in seeing that patent
`
`monopolies . . . are kept within their legitimate scope.’” Cuozzo, 136 S. Ct. at
`
`2144–45 (quoting Precision Instr., 324 U.S. at 816). If Allergan is allowed to pull
`
`its patents from this review at the eleventh hour by purchasing immunity from the
`
`Tribe, then every patent owner could safeguard its patents in a similar way,
`
`undermining the entire post-grant patent review system.
`
`667499.1
`
`13
`
`

`

`
`
`D. The Transaction Should Be Disregarded As a Sham
`Particularly disturbing in these proceedings is the sham-like or collusive
`
`nature of the transaction. As Judge Bryson explained in the related litigation,
`
`which invalidated the patent claims at issue there, “[t]he Court has serious
`
`concerns about the legitimacy of the tactic that Allergan and the Tribe have
`
`employed.” Ex. 1163, Memorandum Opinion and Order, Allergan, Inc. v. Teva
`
`Pharms. USA, Inc., No. 2:15-cv-1455-WCB, slip op. at 4 (E.D. Tex. Oct. 16, 2017)
`
`(ECF No. 522) (Bryson, U.S. Cir. J., sitting by designation). Indeed, Judge Bryson
`
`likened the structure of the current transaction to “sham transactions, such as
`
`abusive tax shelters.” Id. at 5–6.
`
`Assuming the PTAB agrees with Judge Bryson that the transaction is a sham
`
`or otherwise collusive, the Supreme Court has recognized collusive activity cannot
`
`(and should not) divest a court of jurisdiction. See, e.g., Kramer v. Caribbean
`
`Mills, Inc., 394 U.S. 823, 826–30 (1969) (“If federal jurisdiction could be created
`
`by assignments of this kind, which are easy to arrange and involve few
`
`disadvantages for the assignor, then a vast quantity of ordinary contract and tort
`
`litigation could be channeled into the federal courts at the will of one of the
`
`parties.”). Likewise, here, a sham or collusive transaction should not derail this
`
`Board from arriving at its Final Written Decisions in these administrative
`
`proceedings. Cf. Vas-Cath, Inc. v. Curators of the Univ. of Mo., 473 F.3d 1376,
`
`667499.1
`
`14
`
`

`

`
`
`1383 (Fed. Cir. 2007) (“The principles of federalism are not designed for tactical
`
`advantage[.]”).
`
`IV. CONCLUSION
`
`Amicus respectfully submit that at least for these reasons, the Tribe’s motion
`
`to dismiss should be denied and this administrative agency should complete the
`
`second look at the patents it previously granted, with or without the Tribe’s
`
`participation.
`
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`Counsel for Amicus Curiae
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`By:
`
`
`
`
`
`
`
`
`
`
`
`/Charles R. Macedo/
` Charles R. Macedo
` Registration No.: 32,781
`
` Mark Berkowitz
` Registration No.: 64,558
`
`Dated: December 1, 2017
`
`New York, New York
`
` Sandra A. Hudak
` Registration No.: 69,110
`
`667499.1
`
`15
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 1st day of
`
`December, 2017, a true copy of the foregoing BRIEF OF ASKELADDEN LLC
`
`AS AMICUS CURIAE IN OPPOSITION TO ST. REGIS MOHAWK
`
`TRIBE’S MOTION TO DISMISS was served via electronic mail on the
`
`following counsel of record for Petitioners and Patent Owner in these proceedings:
`
`PETITIONER MYLAN:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`rtorczon@wsgr.com
`
`
`PETITIONER TEVA:
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURH,
`LINDQUIST & SCHUMAN, P.A.
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`
`
`PETITIONER AKORN:
`
`Michael Dzwonczyk
`Azadeh Kokabi
`
`
`667499.1
`
`
`
`

`

`
`
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`Jonathan Singer
`FISH & RICHARDSON P.C.
`IPR13351-0008IP1@fr.com
`IPR13351-0008IP2@fr.com
`IPR13351-0008IP3@fr.com
`IPR13351-0008IP4@fr.com
`IPR13351-0008IP5@fr.com
`IPR13351-0008IP6@fr.com
`PTABInbound@fr.com
`whelan@fr.com
`coletti@fr.com
`oakes@fr.com
`singer@fr.com
`
`Alfonso Chan
`Joseph DePumpo
`Michael Shore
`Christopher Evans
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`marsha@mkschmidtlaw.com
`
`
`
`
`667499.1
`
`
`
`

`

`
`
`Dated: December 1, 2017
`
`New York, New York
`
`
`
`
`By:
`
`
`
`/Charles R. Macedo/
` Charles R. Macedo
` Registration No.: 32,781
`AMSTER, ROTHSTEIN &
`EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`
`667499.1
`
`
`
`

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