Dale White General Counsel Saint Regis Mohawk Tribe 1
The context in which immunity was raised in that case in a patent review proceeding How the Tribe became involved in the patent case The Patent and Trial Board decision that came out Feb. 23, 2018 on Tribe s motion to dismiss based on immunity The bigger picture the importance of this case on tribal immunity in general 2
In this strange administrative process for review of patents Called inter partes a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under 102 or 103, and only on the basis of prior art consisting of patents or printed publications 3
Why is the Mohawk Tribe involved in this process? The PTAB decided in 2017 states are immune from inter partes proceedings Texas law firm conceived of idea that tribes could also claim immunity Tribe evaluated the concept and acquired patents as part of tribal business venture 4
One set of patents 6 patents for Restasis eye drops acquired from Allergan Pharmaceutical were in the middle of an inter partes review Tribe moved to dismiss in inter partes review proceeding based on its sovereign immunity Prior PTAB cases granting state immunity were relied on by Tribe 5
December 8, 2016 Mylan instituted inter partes review against Allergan owner of Restasis patents (6 patents) March 31, 2017 Teva and Akorn were joined as petitioners September 8, 2017 Tribe informed Board it was owner and would be moving for dismissal September 22, 2017 Tribe submitted Motion to Dismiss 6
October 13, 2017 Petitioners filed Opposition October 20, 2017 Tribe replied November 30, 2017 Amicus Briefs filed (at invitation of the Board) December 15, 2017 Tribe and Petitioners filed replied February 23, 2018 Board issued its decision denying the Tribe s motion to terminate 7
1) There is no controlling precedent or statutory basis for the application of tribal immunity in inter partes review proceedings 2) Tribal immunity does not apply to inter partes review proceedings 3) These proceedings may continue with Allergan s participation 8
On PTAB finding of no controlling precedent or statutory basis for the application of tribal immunity in inter partes review proceedings PTAB was forced to deal with prior cases (Covidien, Neochord, Reactive, Ericsson) that dismissed based on immunity Rather than extend holdings to tribes PTAB refused to based on lack of direct authority 9
Leading case relied upon in Covidien, Neochord, Reactive, Ericsson is Supreme Court decision, Federal Maritime Commission v. South Carolina State Ports Authority (2002) According to PTAB, the Tribe did not point 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. 10
Yet, the Tribe cited other cases involving administrative proceedings in which tribal immunity upheld In Matter of Jamul Kanj Great Plains Lending In Matter of Tammy Shroud Alhameed v. Grand Traverse Casino Matter of Private Fuel Storage 11
The PTAB also found no statutory authority The Board precedent cautions against the application of non-statutory defenses in inter partes review proceedings There is no statutory basis to assert a tribal immunity defense in inter partes review proceedings Yet, immunity is not a defense and statutory authority is not required for its assertion 12
Secondly, the PTAB held that tribal immunity cannot be applied in an inter partes review proceeding Because the Patent Act is a statute of general applicability that applies to tribes And there are really no parties to an inter partes review proceeding Its really an enforcement proceeding (or in rem) 13
On the statute of general applicability point, the Patent Act might be one; but that does not operate to abrogate tribal sovereign immunity See, Fla. Paraplegic Ass n v. Miccosukee Tribe (although the tribal facility is governed by ADA tribe not amenable to private suit) 14
With respect to being enforcement actions, inter partes are nothing like a federal enforcement action Agencies like NLRB, OSHA and EEOC enforce third party or their own investigations Enforcement cases are prosecuted by federal government attorneys, not like cases in the IPR the PTAB plays no role and relies on the parties to prosecute and defend 15
With respect to in rem actions, the PTAB has already decided twice that its proceedings are not in rem: Covidien and Reactive IPR proceedings do not fit within Restatement definition of in rem actions In any event, an express waiver is needed to subject tribes to in rem actions (Bay Mills and Cayuga) 16
Third, the PTAB said even if the Tribe has immunity, the action will not be terminated because they can proceed with Allergan, the effective patent owner Cites settled law that a party that has been granted all substantial rights is considered the owner regardless of how the parties characterize the transaction 17
However, the Tribe is the patent owner The Tribe s ownership interest is consistent with the parties in Reactive and Neochord cases in which the parties were treated as owners In this case, Allergan got less than all substantial rights Its field of use rights are limited Tribe has right to sue, to enforce, to sublicense, control litigation 18
Tribe is indispensable party under Rule 19 As a sovereign its rights have heightened protection Three factors under Rule 19 satisfied (1) Prejudice to tribe (2) Injury can be mitigated (3) Petitioners have an adequate remedy Tribe satisfies all criteria 19
Sovereign immunity cases come up occasionally get the attention of the Indian bar Kiowa, C&L, Madison County, Bay Mills I ve been on the other side of those calls please don t let the case go to the Supreme Court I ve heard those rumbling about the patent case 20
Not really because no matter what happens we are dealing with a very narrow and specific application of immunity Immunity from a patent review proceeding Not likely to result in a broad holding on immunity in general You see that in what Congress is looking at a fix in the Patent Act 21
Dale White General Counsel Saint Regis Mohawk Tribe Akwesasne NY dale.white@srmt-nsn.gov 22