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 and ALLERGAN, INC.,
`Patent Owner.2
`_____________
`
`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)
`_____________
`
`COMBINED NOTICE OF APPEAL TO THE UNITED STATES COURT
`OF APPEALS FOR THE FEDERAL CIRCUIT BY SAINT REGIS
`MOHAWK TRIBE AND ALLERGAN, INC.
`
`
`
`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 (collectively
`the “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).
`2 The caption used in this Notice of Appeal was intended only to comply with
`the Board’s order that the “caption for these proceedings shall reflect both
`Allergan’s and the Tribe’s status as ‘Patent Owners.’” Saint Regis Mohawk Tribe
`is the Patent Owner. By using this caption, neither Saint Regis Mohawk Tribe nor
`Allergan concede that Allergan is a “Patent Owner.”
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE and ALLERGAN, INC.,
`Patent Owner.2
`_____________
`
`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)
`_____________
`
`COMBINED NOTICE OF APPEAL TO THE UNITED STATES COURT
`OF APPEALS FOR THE FEDERAL CIRCUIT BY SAINT REGIS
`MOHAWK TRIBE AND ALLERGAN, INC.
`
`
`
`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 (collectively
`the “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).
`2 The caption used in this Notice of Appeal was intended only to comply with
`the Board’s order that the “caption for these proceedings shall reflect both
`Allergan’s and the Tribe’s status as ‘Patent Owners.’” Saint Regis Mohawk Tribe
`is the Patent Owner. By using this caption, neither Saint Regis Mohawk Tribe nor
`Allergan concede that Allergan is a “Patent Owner.”
`
`
`
`
`
`Notice is hereby given, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A) and
`
`37 C.F.R. § 90.2, that Patent Owner St. Regis Mohawk Tribe (the “Tribe”) hereby
`
`appeals to The United States Court of Appeals for the Federal Circuit from the
`
`Patent Trial and Appeal Board’s (the “Board”) Decision Denying the Tribe’s
`
`Motion to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign Immunity
`
`entered on February 23, 2018 as Paper No. 130 in IPR2016-01127, Paper No. 132
`
`in IPR2016-01128, Paper No. 127 in IPR2016-01129, Paper No. 127 in IPR2016-
`
`01130, Paper No. 129 in IPR2016-01131, and Paper No. 127 in IPR2016-01132,
`
`and any other orders factually intertwined with the Order denying the Tribe’s
`
`Motion to Dismiss.
`
`Notice is hereby given, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A) and
`
`37 C.F.R. § 90.2, that Allergan, Inc. (“Allergan”) hereby appeals to the United
`
`States Court of Appeals for the Federal Circuit from the Board’s Order denying
`
`Allergan’s Motion to Withdraw entered on February 23, 2018 as Paper No. 132 in
`
`IPR2016-01127, Paper No. 134 in IPR2016-01128, Paper No. 129 in IPR2016-
`
`01129, Paper No. 129 in IPR2016-01130, Paper No. 131 in IPR2016-01131, and
`
`Paper No. 129 in IPR2016-01132, and any other orders factually intertwined with
`
`the Order denying Allergan’s Motion to Withdraw, including but not limited to the
`
`Orders appealed by the Tribe. This combined notice is timely filed within 63 days
`
`of the Board’s decisions. 37 C.F.R. § 90.3(a)(1).
`
`2
`
`
`
`
`
`It is undisputed that the Tribe is a federally recognized, sovereign American
`
`Indian Tribe that did not waive its sovereign immunity from participation in the
`
`Proceedings. EX. 2091 at 4. The Board erred as a matter of law in holding that the
`
`Tribe’s assertion of its sovereign immunity does not serve as a basis to terminate
`
`the Proceedings and that Allergan can adequately represent the Tribe in the
`
`Proceedings in the Tribe’s absence.
`
`The Board’s decisions in the Proceedings are immediately appealable under 28
`
`U.S.C. § 1295(a)(4)(A) via the Collateral Order Doctrine, which applies to agency
`
`adjudications rejecting sovereign immunity claims. See, e.g.¸ Chehazeh v.
`
`Attorney Gen. of U.S., 666 F.3d 118, 136 (3d Cir. 2012) (collecting cases from nine
`
`Courts of Appeals that found the Collateral Order Doctrine applies to judicial
`
`review of agency decisions); Burlington N. & Santa Fe Ry. Co. v. Vaughn, 509
`
`F.3d 1085, 1094 (9th Cir. 2007) (holding that denial of tribal immunity is an
`
`immediately appealable collateral order); Osage Tribal Council ex rel. Osage Tribe
`
`of Indians v. U.S. Dep't of Labor, 187 F.3d 1174, 1179 (10th Cir. 1999) (holding
`
`that the denial of tribal immunity in an agency proceeding is an immediately
`
`appealable collateral order); see In re Board of Regents of Univ. of Texas Sys., 435
`
`F. App’x 945, 947-48 (Fed. Cir. 2011) (holding that denial of Eleventh
`
`Amendment sovereign immunity allows for immediate appeal under Collateral
`
`3
`
`
`
`
`
`Order Doctrine); Baum Research & Dev. Co. v. Univ. of Massachusetts at Lowell,
`
`503 F.3d 1367, 1369 (Fed. Cir. 2007) (same).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the Tribe anticipates that the
`
`issues on appeal may include, but are not limited to, one or more of the following,
`
`as well as any underlying findings, determinations, rulings, decisions, opinions, or
`
`other related issues:
`
`• Whether the Board erred in denying the Tribe’s Motion to Dismiss for
`
`Lack of Jurisdiction Based on Tribal Sovereign Immunity.
`
`• Whether the Board erred in finding that inter partes review is not the
`
`type of “suit” to which an Indian tribe would traditionally enjoy
`
`immunity under common law, declining to find the holding in Federal
`
`Maritime Commission v. South Carolina State Ports Authority, 535 U.S.
`
`743, 754-56 (2002) applies to Tribal sovereigns as it does State
`
`university sovereigns.
`
`• Whether the Tribe is entitled to a dismissal of the Proceedings under
`
`tribal sovereign immunity because an IPR is adjudicative in nature,
`
`Tribes have inherent immunity from suit, and absent express abrogation,
`
`there is no indication that Congress intended the Tribe be subject to
`
`actions in this forum.
`
`
`
`4
`
`
`
`
`
`• Whether the Board’s conclusion that it is not adjudicating claims and
`
`that it has no authority to provide a remedy against the Tribe in the
`
`Proceedings means the Board also lacked statutory authority to proclaim
`
`the Tribe lacks immunity from participation in the Proceedings.
`
`• Whether the Board erred in concluding that tribal sovereign immunity is
`
`a defense that may only be raised by statutory authority, rather than a
`
`jurisdictional threshold issue that can be raised at any time in the
`
`Proceedings.
`
`• Whether the Board erred in holding that the Tribe may not assert
`
`immunity from participation in the Proceedings based on the Board’s
`
`conclusion that the Proceedings are “federal administrative proceedings”
`
`despite the fact that the Proceedings were instituted and prosecuted by
`
`private parties and as such, were private actions brought by Petitioners.
`
`• Whether the Board erred in holding that it does not exercise personal
`
`jurisdiction over the Tribe as a patent owner.
`
`• Whether the Board erred in finding that the Tribe’s assertion of its
`
`sovereign immunity does not serve as a basis to terminate these inter
`
`parte review Proceedings.
`
`• Whether the Board erred in finding that the Tribe is not an indispensible
`
`party to the Proceedings.
`
`5
`
`
`
`
`
`• Whether the Board erred in finding that Allergan obtained all substantial
`
`rights in the patents at issue in these Proceedings.
`
`• Whether the Board’s Decision should be found unlawful due to any of
`
`the statutory reasons set forth in 5 U.S.C. § 706(2).
`
`• Whether inter partes review violates the Constitution by extinguishing
`
`private property rights through a non-Article III forum.
`
`• Whether the rules applied or misapplied and decisions rendered during
`
`the Proceedings violated the Tribe’s due process rights to a fair hearing.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Allergan anticipates that the
`
`issues on appeal may include, but are not limited to, one or more of the following,
`
`as well as any underlying findings, determinations, rulings, decisions, opinions, or
`
`other related issues:
`
`• Whether the Board erred in finding that Allergan obtained all substantial
`
`rights in the patents at issue in these Proceedings.
`
`• Whether the Board erred in finding that Allergan “remains an effective
`
`‘patent owner’ of the challenged patents in these proceedings” and erred
`
`in denying Allergan’s requests and motion to withdraw from the
`
`Proceedings.
`
`In accordance with 35 U.S.C. § 142 and 37 C.F.R. §§ 90.2 and 90.3, copies of
`
`this Notice of Appeal are being timely filed simultaneously with the Director of the
`
`6
`
`
`
`
`
`United States Patent and Trademark Office and the Patent Trial and Appeal Board.
`
`In addition, a copy of this Notice of Appeal, along with the required docketing
`
`fees, are being filed electronically with the Clerk’s Office of the United States
`
`Court of Appeals for the Federal Circuit via CM/ECF. A copy of this Notice of
`
`Appeal is also being served on Petitioners.
`
`
`
`
`
`
`Date: February 28, 2018
`
`
`Dorothy P. Whelan _
`Dorothy P. Whelan
`Reg. No. 33,814
`Michael J. Kane
`FISH & RICHARDSON P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
`whelan@fish.com
`kane@fish.com
`Attorneys for Allergan, Inc.
`
`7
`
`
`
`
`
`
`
`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 75202
`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 Patent Owner
`Saint Regis Mohawk Tribe
`
`
`
`
`
`
`CERTIFICATE OF FILING
`
`I certify that on February 28, 2018, in addition to being filed electronically
`
`through the Patent Trial and Appeal Board’s PTABE2E System, the original version
`
`of the foregoing Notice of Appeal was mailed via Certified Mail, Return Receipt
`
`Requested (No. 7196 9008 9111 2423 2300) to the Director of the United States
`
`Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`CERTIFICATE OF FILING
`
`I hereby certify that a true and correct copy of the foregoing Combined Notice
`
`of Appeal to the United States Court of Appeals for the Federal Circuit by the Saint
`
`Regis Mohawk Tribe and Allergan, Inc. was filed with the Clerk’s Office of the
`
`United States Court of Appeal for the Federal Circuit through the federal courts’
`
`Case Management and Electronic Case Files (CM/ECF) system on February 28,
`
`2018, along with the requisite fee. One copy was sent to the Clerk by Certified Mail,
`
`Return Receipt Requested (No. 9414 7266 9904 2080 2701 94) at the following
`
`address:
`
`
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Room 401
`Washington, DC 20439
`
`8
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4), 42.205(b) and 90.2, the undersigned
`
`certifies that on February 28, 2018, a complete and entire copy of Combined Notice
`
`of Appeal to the United States Court of Appeals for the Federal Circuit by the Saint
`
`Regis Mohawk Tribe and Allergan, Inc. was filed electronically through the Patent
`
`Trial and Appeal Board’s PTABE2E System and 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
`
`9
`
`
`
`
`
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
`
`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 Pharmaceuticals, Inc.
`
`
`
`
`
`
`
`10
`
`
`
`
`
`And upon the remaining Petitioners as follows:
`
`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.
`
`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
`
`
`
`
`
`
`
`
`
`/Alfonso G. Chan/
`Alfonso G. Chan
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
`
`
`
`11
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
