Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA882288
`
`Filing date:
`
`03/09/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91235367
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`Caesars Interactive Entertainment LLC
`
`JEFFREY P DUNNING
`GREENBERG TRAURIG LLP
`77 W WACKER DRIVE, SUITE 3100
`CHICAGO, IL 60601
`UNITED STATES
`Email: chiipmail@gtlaw.com, galism@gtlaw.com, dunningj@gtlaw.com,
`brousseauj@gtlaw.com
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Jeffrey P. Dunning
`
`chiipmail@gtlaw.com, galism@gtlaw.com, dunningj@gtlaw.com,
`brousseauj@gtlaw.com
`
`/Jeffrey P. Dunning/
`
`03/09/2018
`
`Notice of Supplemental Legal Authority Opposition to SN 87208750 for ROCK-
`ET XTREME MAINEVENT.pdf(107658 bytes )
`Mylan v. St. Regis PTAB Ruling 2.23.18.pdf(193942 bytes )
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Application Serial No. 87/208,750
`Published January 3, 2017
`
`CAESARS INTERACTIVE
`ENTERTAINMENT, LLC,
`
`
`Opposer,
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`
`
`v.
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`
`
`
`
`
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`
`
`
`
`
`
`MIAMI TRIBE OF OKLAHOMA
`
`BUSINESS DEVELOPMENT
`
`AUTHORITY,
`
`
`A TRIBAL ENTERPRISE OF THE
`MIAMI TRIBE OF OKLAHOMA,
`
`
`Applicant.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`OPPOSITION NO. 91/235,367
`
`NOTICE OF SUPPLEMENTAL LEGAL AUTHORITY
`
`Opposer hereby provides the Board with notice of supplemental legal authority that is
`
`germane to the Board’s decision in the pending motion to dismiss. See Mylan Pharmaceuticals
`
`Inc. v. Saint Regis Mohawk Tribe, Case IPR2016-011271, Decision Denying the Tribe’s Motion
`
`to Terminate, Paper No. 130 (Feb. 23, 2018) (“Mylan Decision”). A copy of the Mylan Decision
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`is attached as Exhibit A.
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`TBMP § 528.05 provides that “[t]he parties further may bring to the attention of the
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`Board supplemental legal authority issuing after briefing . . . that is relevant to the issues under
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`consideration, along with a brief description of its significance.” Although that section of the
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`TBMP specifically contemplates filing a notice of supplemental legal authority in connection
`
`
`1 Cases IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131, IPR2016-01132,
`IPR2017-00576, IPR2017-00594, IPR2017-00578, IPR2017-00596, IPR2017-00579, IPR2017-
`00598, IPR2017-00583, IPR2017-00599, IPR2017-00585, IPR2017-00600, IPR2017-00586, and
`IPR2017-00601 were joined with IPR2016-01127.
`
`
`

`

`with a motion for summary judgment, the purpose of such a notice is equally applicable to the
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`motion to dismiss currently before the Board.
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`In the Mylan Decision, the Patent Trial and Appeal Board considered a claim of tribal
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`sovereign immunity made by a patent owner, and made the following determinations that are
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`relevant to Applicant’s pending motion to dismiss in this proceeding:
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` “[T]he Tribe has not established that the doctrine of tribal sovereign immunity
`
`should be applied to these proceedings.” (Decision at 4)
`
` “In these proceedings, we are not adjudicating any claims in which Petitioners
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`may seek relief from the Tribe, and we can neither restrain the Tribe from acting
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`nor compel it to act in any manner based on our final decisions. Indeed, there is
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`no possibility of monetary damages or an injunction as a ‘remedy’ against the
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`Tribe. Rather, as discussed above, the scope of the authority granted by Congress
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`to the Patent Office with respect to inter partes review proceedings is limited to
`
`assessing the patentability of the challenged claims.” (Decision at 16)
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` “Furthermore, the Board does not exercise personal jurisdiction over the patent
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`owner. At most, the Board exercises jurisdiction over the challenged patent in an
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`inter partes review proceeding.” (Decision at 16)
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` “[W]e conclude that reconsideration of the patentability of issued claims via inter
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`partes review is appropriate without regard to the identity of the patent owner.
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`We, therefore, determine that the Tribe’s assertion of its tribal immunity does not
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`serve as a basis to terminate these proceedings.” (Decision at 18)
`
`Applicant’s motion to dismiss presently before the Board is analogous to the patent
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`owner’s motion to terminate addressed in the Mylan Decision, in that Applicant seeks a finding
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`2
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`

`

`that the Board does not possess jurisdiction to determine the registrability of its trademark
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`application. However, just as in an Inter Partes Review before the PTAB, the Board here can
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`neither restrain Applicant from acting in any way nor compel it to act in any manner, and there is
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`no possibility of monetary damages or an injunction as a “remedy” against Applicant. Likewise,
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`the Board does not exercise personal jurisdiction over Applicant, but over the trademark
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`application itself. Indeed, the Board has the authority to determine (and regularly does
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`determine) the registrability of trademark applications filed by foreign entities that would not
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`otherwise be subject to personal jurisdiction in U.S. courts, but who by filing a trademark
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`application with the USPTO have consented to the Board’s authority to determine whether or not
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`they are entitled to issuance of a federal trademark registration.
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`Accordingly, for the reasons set forth in Opposer’s December 5, 2017 Response to
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`Applicant’s motion to dismiss and above, Applicant respectfully requests that the Board deny the
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`motion to dismiss.
`
`Dated: March 9, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/s/ Jeffrey P. Dunning
`Jeffrey P. Dunning
`Mark R. Galis
`GREENBERG TRAURIG, LLP
`77 West Wacker Drive, Suite 3100
`Chicago, IL 60601
`(312) 456-8400
`
`Attorneys for Opposer Caesars
`Interactive Entertainment, LLC
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a true and correct copy of the foregoing NOTICE
`OF SUPPLEMENTAL LEGAL AUTHORITY was served upon Applicant’s correspondent of
`record on the date set forth below, by email to:
`
`
`Charlotte Parmley
`Miami Tribe of Oklahoma Business Development Authority
`66201 E 290 Road
`Grove, OK 74344
`Charlotte.parmley@rocketgaming.com
`
`
`
`Dated: March 9, 2018
`
`
`
`
`
`
`
`
`
`/s/ Jeffrey P. Dunning
`Jeffrey P. Dunning
`
`
`
`
`
`4
`
`

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`EXHIBIT A
`EXHIBIT A
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`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper No. 130
`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
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`in New York. Ex. 2091, 4. According to the Tribe, the current reservation
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`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
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`provide basic governmental services must come from economic
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`development and investment rather than taxes or financing.” Id. at 3.
`
`Accordingly, on June 21, 2017, the Tribe adopted a Tribal Council
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`Resolution endorsing the creation of a “technology and innovation center for
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`the commercialization of existing and emerging technologies,” called the
`
`Office of Technology, Research, and Patents. Ex. 2094, 1. The Tribal
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`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.
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`§§ 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
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`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
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`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,
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`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.
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`South Carolina State Ports Authority, 535 U.S. 743 (2002) (“FMC”), the
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`Tribe seeks to terminate these proceedings on the basis of its tribal sovereign
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`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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`
`
`

`

`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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`
`
`
`
`

`

`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
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`such as this,” but ultimately rested its decision on the basis that Congress
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`abrogated tribal immunity from Clean Water Act whistleblower complaints.
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`2007 WL 1266963, at *2–3 (DOL Adm. Rev. Bd. Apr. 27, 2007). The Tribe
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`also cites a single state court decision to support its argument for the
`
`application of FMC in these proceedings. Mot. 15 (citing Great Plains
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`Lending, LLC v. Conn. Dep’t of Banking, No. HHBCV156028096S, 2015
`
`WL 9310700, at *4 (Conn. Super. Ct. Nov. 23, 2015). However, insofar as
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`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
`
`
`
`
`
`

`

`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
`
`
`
`

`

`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
`
`
`
`

`

`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
`
`
`
`

`

`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
`
`
`
`

`

`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 R