`Tel: 571-272-7822
`
`
`Paper: 76
`Entered: September 19, 2017
`
`
`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) 1,2
`_______________
`
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`1 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case.
`2 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).
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`In an email correspondence sent to the Board September 8, 2017,
`Alfonso G. Chan, counsel for the Saint Regis Mohawk Tribe (“Tribe”),
`requested a conference call to notify the Board of Tribe’s acquisition of all
`the patents at issue in these proceedings and to discuss the application of
`Tribe’s alleged tribal sovereign immunity from inter partes review
`proceedings. The relevant portion of the email reads as follows:
`The Saint Regis Mohawk Tribe (“Tribe”), whom my firm
`independently represents in this matter, now owns all the patents
`at issue in the above proceedings. A few moments ago, the Tribe
`filed Updated Mandatory Notices under 37 C.F.R. § 42.8(a)(3)
`to inform the Board of this change and my addition to the case as
`counsel for the Tribe. Paper No. 63 in IPR2016-01127; EX. 2085
`(Assignment).
`Because of these changes, the Tribe respectfully requests
`a telephone conference to discuss two topics: (1) permission to
`file a motion to dismiss based on the Tribe’s sovereign immunity
`and (2) a continuance of the hearing scheduled for September 15,
`2017 to allow for briefing and the Board’s consideration of the
`motion to dismiss.
`A conference call was held on September 11, 2017 between respective
`counsel for Petitioners, Allergan, Tribe, and Judges Snedden, Hulse, and
`Paulraj. On the call, Tribe requested authorization to file a motion to
`dismiss on the basis of Tribe’s alleged tribal sovereign immunity. Tribe also
`requested that the hearing for these cases, scheduled for September 15, 2017,
`be postponed, because tribal sovereign immunity is a jurisdictional issue and
`must be decided before these cases may proceed. Petitioners opposed both
`
` 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).
`
`requests. A full transcript of the conference call was entered by Tribe and
`Petitioners. Ex. 2090 (Tribe); Ex. 1137 (Petitioners).3
`After hearing the respective positions of the parties, the panel
`conferred and concluded that briefing on the issue of Tribe’s alleged tribal
`sovereign immunity from these proceedings is warranted. Accordingly, the
`panel authorized Tribe to file a motion to terminate on the basis of tribal
`sovereign immunity of no more than 25 pages due by September 22, 2017.
`37 C.F.R. § 42.72. The panel authorized Petitioners to file an opposition to
`the motion, also of no more than 25 pages due by October 13, 2017. Tribe is
`authorized to file a reply to the opposition of no more than 15 pages due by
`October 20, 2017. Evidence relevant to the tribal sovereign immunity issue
`may be filed as exhibits accompanying the papers.
`In order to permit the parties time to brief this issue, Tribe’s request to
`postpone the hearing in these cases is granted. If any party has concerns or
`questions regarding the schedule, the parties may contact the Board to
`request a conference call.
`Accordingly, it is:
` ORDERED, that Tribe is authorized to file a motion to terminate
`these proceedings. The motion shall be no more than 25 pages, and is due
`no later than September 22, 2017;
` FURTHER ORDERED, that Petitioners may file an opposition to the
`motion to terminate. The opposition shall be no more than 25 pages, and is
`due no later than October 13, 2017;
`
`3 Paper numbers and exhibits refer to those filed in IPR2016-01127. Similar
`papers and exhibits were filed in each of the other cases.
`
` 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 ORDERED, that Tribe is authorized to file a reply to the
`opposition. The reply shall be no more than 15 pages, and is due no later
`than October 20, 2017; and
`FURTHER ORDERED, that Tribe’s request to postpone the oral
`hearing scheduled for September 15, 2017 is granted.
`
`
`PETITIONER MYLAN:
`Steven W. Parmelee
`Michael T. Rosato
`Jad A. Mills
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`
`PATENT OWNER:
`Dorothy P. Whelan
`Michael Kane
`FISH & RICHARDSON P.C.
`whelan@fr.com
`PTABInbound@fr.com
`
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`
` 4
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`
`
`
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`