Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 122
`Entered: January 4, 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.
`
`ORDER
`Denying Request for Oral Hearing and Denying Renewed Request for
`Authorization to File Motion for Additional Discovery
`37 C.F.R §§ 42.5, 42.70(a), 42.51
`
`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.
`
`
`Tel: 571-272-7822
`
`
`Paper 122
`Entered: January 4, 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.
`
`ORDER
`Denying Request for Oral Hearing and Denying Renewed Request for
`Authorization to File Motion for Additional Discovery
`37 C.F.R §§ 42.5, 42.70(a), 42.51
`
`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.
`
`
`
`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)
`
`
`On January 2, 2018—without authorization—the Saint Regis Mohawk
`Tribe (“the Tribe”) filed a Request for Oral Hearing purportedly pursuant to
`37 C.F.R. § 42.70(a) in each of the above-identified proceedings “regarding
`[the Tribe’s] request for discovery into the identity and impartiality of the
`merits panel assigned to this case.” Paper 122 (“Request”). 2 Because the
`Tribe’s request is improper for a number of reasons, the Tribe’s request is
`denied.
`37 C.F.R. § 42.70(a) states “[a] party may request oral argument on an
`issue raised in a paper at a time set by the Board.” The Tribe’s request for
`discovery has not been raised in any paper filed with the Board. It is,
`therefore, not an issue that can be addressed at oral argument under this rule.
`Moreover, the Scheduling Order in these proceedings states: “Each
`party must file any request for oral argument (37 C.F.R. § 42.70(a)) by DUE
`DATE 4.” Paper 10, 3. Due Date 4 occurred on July 20, 2017, at which
`time both parties filed a request for oral argument. Paper 47 (Patent Owner);
`Paper 48 (Petitioners). The panel granted the parties’ requests on August 1,
`2017. Paper 56. Thus, even if the Tribe’s request were proper, the time for
`requesting an oral argument pursuant to the Scheduling Order has passed.
`Given its request is not contemplated by our rules or our Scheduling
`Order, the Tribe was required to seek prior authorization to file its paper.
`See 37 C.F.R. § 42.20(a), (b). Although the Tribe had an outstanding
`request for a telephone conference this week to discuss the issues raised in
`
`
`2 Paper numbers and exhibits cited in this order refer to those documents
`filed in IPR2016-01127. Similar papers and exhibits were filed in the other
`proceedings.
`
` 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)
`
`its Request (Ex. 2116), counsel for the Tribe ignored our rules (once again3)
`and preemptively filed its paper. To assist the Tribe in complying with our
`rules, the Tribe shall not file any further papers in these proceedings without
`prior authorization from the Board.
`Although we may expunge the Tribe’s Request as unauthorized (see
`37 C.F.R. § 42.7(a)), we decline to do so to ensure the record is clear
`regarding why we deny not only the Request for Oral Hearing, but the
`Tribe’s request for authorization to file a motion for additional discovery, as
`well. We deny the Tribe’s latter request, because it far exceeds the scope of
`permissible discovery in these proceedings.
`The Tribe relies on 37 C.F.R. § 42.51 to seek additional discovery.
`But that rule is limited to additional discovery between the parties. 37 C.F.R.
`§ 42.51 (“Where the parties fail to agree, a party may move for additional
`discovery.”) (emphasis added). As is evident from its list of proposed
`discovery topics (Request 4–6), the Tribe seeks discovery from the Board,
`not from Petitioners. The Board, however, is not a “party” to these
`proceedings. See 37 C.F.R. § 42.2 (defining “party” to include petitioner
`and patent owner). Discovery from the Board is, therefore, not
`contemplated by our rules for inter partes review proceedings, and the Tribe
`has not pointed us to any legal authority that suggests otherwise.
`Accordingly, the Tribe’s request for authorization to file a motion for
`additional discovery can be denied for this reason alone.
`
`
`3 As counsel for the Tribe admits, the Board “has previously admonished the
`Tribe’s counsel for including legal arguments in its communications with the
`Board.” Ex. 2116.
`
` 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)
`
`
`Nevertheless, the Tribe asserts that such discovery is in the “interests
`of justice” because it “concerns due process, the impartiality of the merits
`panel in this case, and whether political or third-party pressure has been
`asserted to reach an outcome inconsistent with the binding Supreme Court
`and Federal Circuit precedents.” Id. at 2. But nowhere has the Tribe offered
`anything other than gross speculation as to any of its assertions of alleged
`impartiality.4 See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, Case
`IPR2012-00001, Paper No. 26, slip op. at 6 (PTAB Mar. 5, 2013)
`(precedential) (“The mere possibility of finding something useful, and mere
`allegation that something useful will be found, are insufficient to
`demonstrate that the requested discovery is necessary in the interest of
`justice.”). Seeking, for example, “[t]he methodology used to determine the
`annual bonuses (or other merits based compensation) for each member of
`our merits panel” and “[t]he annual reviews of all members of our merits
`panel” (id. at 6) serves no purpose in these proceedings and amounts to a
`fishing expedition that is a waste of our time and resources.
`In light of the foregoing, the panel—whose identities have always
`been listed on the cover page of our decisions—denies the Tribe’s renewed
`request for authorization to file a motion for additional discovery. Having
`
`
`4 We note the USPTO Rules of Professional Conduct state that “[a]
`practitioner shall not make a statement that a practitioner knows to be false
`or with reckless disregard as to its truth or falsity concerning the
`qualifications or integrity of a judge.” 37 C.F.R. § 11.802(a). Failure to
`abide by those rules amounts to professional misconduct and may justify
`disciplinary proceedings. 37 C.F.R. §§ 11.804, 11.901.
`
` 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)
`
`considered this issue twice now, the Tribe shall not make any further
`requests for additional discovery directed to the Board in these proceedings.
`As a final note, we caution counsel for the Tribe that failure to comply
`with an applicable rule or order, abuse of discovery, and abuse of process are
`all grounds for sanctions. 37 C.F.R. § 42.12(a)(1), (5), (6). We strongly
`advise counsel for the Tribe to review our rules and caution that any further
`actions that demonstrate a disregard for our process will not be tolerated.
`See 37 C.F.R. § 42.12(b).
`
`
`ORDER
`Accordingly, based on the foregoing, it is:
`ORDERED that the Tribe’s request for oral hearing is denied;
`FURTHER ORDERED that the Tribe’s renewed request for
`authorization to file a motion for additional discovery is denied;
`FURTHER ORDERED that the Tribe shall not make any further
`requests for additional discovery directed to the Board in these proceedings;
`FURTHER ORDERED that the Tribe shall not file any further papers
`in these proceedings without prior authorization from the Board.
`
`
`
` 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)
`
`
`PETITIONER MYLAN:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@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
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`
`
`
`
`
`
` 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)
`
`
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`FISH & RICHARDSON P.C.
`whelan@fr.com
`PTABInbound@fr.com
`coletti@fr.com
`oakes@fr.com
`
`
`Alfonso Chan
`Michael Shore
`Christopher Evans
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`marsha@mkschmidtlaw.com
`
`
`
`
` 7
`
`
`
`
`
`
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