UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`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)
`_____________
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
`
`
`
`
`
`
`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. The word-for-word
`
`identical paper is filed in each proceeding identified in the caption pursuant to the
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`Board’s Scheduling Order (Paper 10).
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`
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`1
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`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)
`_____________
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
`
`
`
`
`
`
`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. The word-for-word
`
`identical paper is filed in each proceeding identified in the caption pursuant to the
`
`Board’s Scheduling Order (Paper 10).
`
`
`
`1
`
`
`
`Pursuant to 37 C.F.R. § 42.70(a), the Saint Regis Mohawk Tribe (“Patent
`
`Owner”) requests an opportunity to present oral argument regarding Patent
`
`Owner’s request for discovery into the identity and impartiality of the merits panel
`
`assigned to this case. EX. 2116.
`
`Additional discovery is available under 37 C.F.R. § 42.51 if the moving party
`
`can show that it is “in the interests of justice.” Here, the discovery sought by the
`
`Patent Owner 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
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`outcome inconsistent with the binding Supreme Court and Federal Circuit
`
`precedents. Due process concerns are by definition “in the interests of justice.”
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`As the Federal Circuit has stated: “The indispensable ingredients of due process
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`are notice and an opportunity to be heard by a disinterested decision-
`
`maker.” Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir. 2013). To
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`that end, the Administrative Procedures Act, 5 U.S.C. § 554(d), prohibits members
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`of a PTAB merits panel from being “subject to the supervision or direction of an
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`employee or agent engaged in the performance of investigative or prosecuting
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`functions for an agency.” An Administrative Judge must have decisional
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`independence that is “free from pressures by the parties or other officials within the
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`agency.” Abrams v. Soc. Sec. Admin., 703 F.3d 538, 545 (Fed. Cir. 2012).
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`The Administrative Procedures Act also prohibits ex parte communications
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`2
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`
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`with any member of a PTAB merits panel that is relevant to the merits of a
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`proceeding. 5 U.S.C.A. § 557. If any such communications have occurred, they
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`must be included in the public record of the administrative proceeding. This
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`requires publication of all written communications, summaries of oral
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`communications, and any internal memorandum concerning such communications.
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`Due process violations have been found (i) when an adjudicator has either a
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`direct or indirect pecuniary interest in the outcome of the proceedings and (ii)
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`when an administrative adjudication’s outcome is influenced by political pressure.
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`Caperton v. A.T. Massey Coal Co., 556 U.S. 868, 878 (2009); ATX, Inc. v. U.S.
`
`Dep't of Transp., 41 F.3d 1522, 1527 (D.C. Cir. 1994); Pillsbury Co. v. F.T.C., 354
`
`F.2d 952, 963–64 (5th Cir. 1966).
`
`Both concerns are present here. Congress has expressed an interest in this
`
`specific case and held hearings concerning the proceedings. There is also a strong
`
`possibility that the merits panel has been expanded to include USPTO executives,
`
`including Chief Judge David Ruschke, a person who has made prior public
`
`comments on the issue of sovereign immunity and this case. EX. 2113. The
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`USPTO, and its executive leadership, has a direct pecuniary interest in the outcome
`
`of this case because the Patent Owner’s motion could have a non-trivial impact on
`
`the fees collected by PTAB for IPRs. There is also a strong possibility of interested
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`parties (both political and private) that may be seeking to influence the outcome of
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`3
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`
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`this case. If Chief Judge Ruschke has added himself to the merits panel as he did in
`
`the recent University of Minnesota decisions, any communications with Chief
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`Judge Ruschke (or any other member of the merits panel) regarding sovereign
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`immunity, the Patent Owner’s relationship with Allergan, or efforts in Congress
`
`concerning the application of sovereign immunity in this case are prohibited by the
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`Administrative Procedures Act and must be immediately disclosed. 5 U.S.C.A. §
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`557.
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`To address the Patent Owner’s concerns about the impartiality of the merits
`
`panel, the Patent Owner requests discovery into the following topics:
`
`• The makeup of the merits panel in these proceedings,
`
`• The date each APJ was added to the panel in these proceedings,
`
`• How the makeup of our merits panel was decided,
`
`• Who determined the makeup of our merits panel,
`
`• When that decision was made,
`
`• The disclosure of all ex parte communications concerning our case, the
`
`Allergan/Tribe transactions, or sovereign immunity with any member of our
`
`merits panel, both before and after they were added to our merits panel,
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`• All communications members of our merits panel have had with Congress or
`
`the Executive Branch concerning our case or sovereign immunity,
`
`
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`4
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`
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`• Communications our merits panel members have had with anyone
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`concerning sovereign immunity or this proceeding prior to their addition to
`
`the panel,
`
`• The assignment of Tina H. Hulse, Christopher Paulraj, Sheridan
`
`Snedden, David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott
`
`Weidenfeller to other IPR proceedings involving the Petitioners,
`
`• The dates David Rushcke, Scott Boalick, Jacqueline Bonilla, and Scott
`
`Wedenfeller were added to the panels of IPR2017-01068 and IPR2017-
`
`01186,
`
`• Ex parte communications with the merits panel in IPR2017-01068 and
`
`IPR2017-01186 concerning sovereign immunity or those proceedings,
`
`• Communications David Ruschke, Scott Boalick, Jacqueline Bonilla, and
`
`Scott Weidenfeller had prior to joining the merits panel in IPR2017-01068
`
`and IPR2017-01186 concerning sovereign immunity or that proceeding,
`
`• Any communications concerning the opinions filed in IPR2017-01068 and
`
`IPR2017-01186, including the concurrence,
`
`• Communications between Jacqueline Harlow and Jennifer Bisk concerning
`
`sovereign immunity or the motions to dismiss based on sovereign immunity
`
`in IPR2017-01068 and IPR2017-01186,
`
`
`
`5
`
`
`
`• Any policy determinations made by the USPTO or PTAB concerning
`
`sovereign immunity,
`
`• The methodology used to determine the annual bonuses (or other merits
`
`based compensation) for each member of our merits panel,
`
`• The annual reviews of all members of our merits panel, including the
`
`identification of the person who performs the review, the criteria used for the
`
`review, and the outcome of the review, and
`
`• Materials related to any PTAB projections or predictions for IPR fees in
`
`2018, including any potential for reductions in fee income if sovereign
`
`immunity were respected by PTAB or upheld on appeal.
`
`The Patent Owner respectfully requests that this oral hearing take place prior to
`
`any decision on the Patent Owner’s pending Motion to Dismiss. Paper 81.
`
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`6
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`Respectfully submitted,
`
` /Alfonso Chan /
`Alfonso Chan
`Reg. No. 45,964
`achan@shorechan.com
`Michael Shore*
`mshore@shorechan.com
`Christopher Evans*
`cevans@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Marsha Schmidt*
`Attorney at Law
`14928 Perrywood Drive
`Burtonsville, MD 20866
`marsha@mkschmidtlaw.com
`Tel: (301) 949-5176
`*admitted pro hac vice
`
`Attorneys for Saint Regis Mohawk Tribe
`
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`Dated: January 2, 2018
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`7
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that
`
`on January 2, 2018, a complete and entire copy of Patent Owner’s Request for Oral
`
`Argument was provided, via electronic service, to the Petitioners by serving the
`
`correspondence address of record as follows:
`
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`Wendy L. Devine
`WILSON SONSINI GOODRICH & ROSATI
`One Market Street, Spear Tower Floor 33
`San Francisco, CA 94105-1126
`wdevine@wsgr.com
`
`Douglas H. Carsten
`WILSON SONSINI GOODRICH & ROSATI
`12235 El Camino Real, Suite 200
`San Diego, CA 92130
`dcarsten@wsgr.com
`
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
`
`
`
`8
`
`
`
`
`
`Brandon M. White
`Crystal Canterbury
`Charles G. Curtis, Jr.
`Jennifer MacLean
`Benjamin S. Sharp
`Shannon M. Bloodworth
`PERKINS COIE LLP
`700 13th Street NW
`Washington DC 20005
`bmwhite@perkinscoie.com
`ccanterbury@perkinscoie.com
`ccurtis@perkinscoie.com
`jmaclean@perkinscoie.com
`bsharp@perkinscoie.com
`sbloodworth@perkinscoie.com
`
`Eric D. Miller
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`emiller@perkinscoie.com
`
`Counsel for Mylan Pharmaceuticas, Inc.
`
`Michael R. Dzwonczyk
`Azy S. Kokabi
`Travis B. Ribar
`SUGHRUE MION, PLLC
`2100 Pennsylvania Ave., NW, Suite 800
`Washington, DC 20037
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`
`Attorneys for Akorn Inc.
`
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`And upon the remaining Petitioners as follows:
`
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`9
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`
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`Gary J. Speier
`Mark D. Schuman
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`IPRCyclosporine@carlsoncaspers.com
`
`Attorneys for Teva Pharmaceuticals
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`/Alfonso G. Chan/
`Alfonso G. Chan
`
`SHORE CHAN DEPUMPO LLP
`
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
`
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`10
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