Paper No. __
`Filed: December 1, 2017
`
`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 (US 8,685,930 B2)
`Case IPR2016-01128 (US 8,629,111 B2)
`Case IPR2016-01129 (US 8,642,556 B2)
`Case IPR2016-01130 (US 8,633,162 B2)
`Case IPR2016-01131 (US 8,648,048 B2)
`Case IPR2016-01132 (US 9,248,191 B2)
`_________________
`
`
`BRIEF OF THE HIGH TECH INVENTORS ALLIANCE, COMPUTER &
`COMMUNICATIONS INDUSTRY ASSOCIATION, AND INTERNET
`ASSOCIATION AS AMICI CURIAE IN SUPPORT OF PETITIONERS
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`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).
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`INTEREST OF AMICI CURIAE ............................................................................... 1
`
`INTRODUCTION AND SUMMARY ...................................................................... 1
`
`ARGUMENT ............................................................................................................. 3
`
`I.
`
`Tribal Sovereign Immunity Cannot Bar Inter Partes Review ......................... 3
`
`A.
`
`B.
`
`Tribes Are Not Immune from Federal Enforcement
`Proceedings or Exempt from Generally Applicable
`Federal Laws ......................................................................................... 3
`
`Tribes Are Not Immune from the Federal Government’s
`Discretionary Review of Patent Validity .............................................. 5
`
`1.
`
`2.
`
`Inter Partes Review Is a Proceeding in the Sole
`Discretion of the Patent Office To Enforce the
`Novelty and Nonobviousness Requirements of the
`Patent Act .................................................................................... 6
`
`The Patent Act and the America Invents Act Are
`Laws of General Applicability That Apply to Tribes ............... 10
`
`II.
`
`Inter Partes Review Is Akin to an In Rem Proceeding in Which
`Sovereign Immunity Does Not Apply ........................................................... 12
`
`CONCLUSION ........................................................................................................ 15
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Ager v. Murray, 105 U.S. 126 (1881) ...................................................................... 13
`
`California v. Deep Sea Research, Inc., 523 U.S. 491 (1998) .................................. 13
`
`Central Va. Cmty. Coll. v. Katz, 546 U.S. 356 (2006) ...................................... 13, 15
`
`Cherokee Nation v. Georgia, 30 U.S. (5 Pet.) 1 (1831) ............................................ 3
`
`County of Yakima v. Confederated Tribes & Bands of Yakima
`Indian Nation, 502 U.S. 251 (1992) .............................................................. 14
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016) ................................... 6, 7
`
`Donovan v. Coeur d’Alene Tribal Farm, 751 F.2d 1113
`(9th Cir. 1985) ........................................................................................... 4, 10
`
`EEOC v. Karuk Tribe Hous. Auth., 260 F.3d 1071 (9th Cir. 2001) ........................ 10
`
`Federal Mar. Comm’n v. South Carolina State Ports Auth.,
`535 U.S. 743 (2002)............................................................................... 8, 9, 15
`
`Federal Power Comm’n v. Tuscarora Indian Nation, 362 U.S. 99
`(1960) ......................................................................................................... 4, 10
`
`Florida Dep’t of State v. Treasure Salvors, Inc., 458 U.S. 670
`(1982) ............................................................................................................. 13
`
`Florida Paraplegic Ass’n, Inc. v. Miccosukee Tribe of Indians of
`Fla., 166 F.3d 1126 (11th Cir. 1999) .............................................................. 8
`
`Gayler v. Wilder, 51 U.S. (10 How.) 477 (1850) .................................................... 11
`
`Graham v. John Deere Co., 383 U.S. 1 (1966) ....................................................... 11
`
`Kiowa Tribe of Okla. v. Manufacturing Techs., Inc., 523 U.S. 751
`(1998) ............................................................................................................... 4
`
`Magoun v. Illinois Trust & Sav. Bank, 170 U.S. 283 (1898)............................. 11, 12
`
`ii
`
`

`

`Menominee Tribal Enters. v. Solis, 601 F.3d 669 (7th Cir. 2010) ............................ 5
`
`Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024 (2014) ................................... 4
`
`NLRB v. Little River Band of Ottawa Indians Tribal Gov’t,
`788 F.3d 537 (6th Cir. 2015), cert. denied, 136 S. Ct. 2508
`(2016) ............................................................................................................... 5
`
`Precision Instrument Mfg. Co. v. Automotive Maint. Mach. Co.,
`324 U.S. 806 (1945)......................................................................................... 6
`
`Reich v. Mashantucket Sand & Gravel, 95 F.3d 174 (2d Cir. 1996) ..................... 4, 5
`
`San Manuel Indian Bingo & Casino v. NLRB, 475 F.3d 1306
`(D.C. Cir. 2007) ............................................................................................... 5
`
`Santa Clara Pueblo v. Martinez, 436 U.S. 49 (1978) ................................................ 3
`
`Tennessee Student Assistance Corp. v. Hood, 541 U.S. 440 (2004) ........... 13, 14, 15
`
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) ............................... 11
`
`United States v. American Bell Tel. Co., 128 U.S. 315 (1888) ............................... 15
`
`United States v. Kagama, 118 U.S. 375 (1886) ......................................................... 3
`
`United States v. Red Lake Band of Chippewa Indians, 827 F.2d 380
`(8th Cir. 1987) ................................................................................................. 4
`
`Washington v. Confederated Tribes, 447 U.S. 134 (1980) ........................................ 3
`
`Worcester v. Georgia, 31 U.S. (6 Pet.) 515 (1832) ................................................... 3
`
`
`
`CONSTITUTION AND STATUTES
`
`U.S. Const. art. I, § 8, cl. 8 ......................................................................................... 6
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284 (2011) ........................................................................................ 7
`
`35 U.S.C. § 41(b) ..................................................................................................... 12
`
`35 U.S.C. § 301 .......................................................................................................... 7
`
`iii
`
`

`

`35 U.S.C. § 303 .......................................................................................................... 7
`
`35 U.S.C. § 311 .......................................................................................................... 7
`
`35 U.S.C. § 311(a) ................................................................................................... 14
`
`35 U.S.C. § 314(a) ..................................................................................................... 7
`
`35 U.S.C. § 314(d) ..................................................................................................... 7
`
`35 U.S.C. § 317(a) ..................................................................................................... 7
`
`46 U.S.C. app. § 1701 et seq. ..................................................................................... 8
`
`
`
`PTAB DECISIONS
`
`Covidien LP v. University of Fla. Research Found. Inc., Case IPR
`2016-01274, Paper 21 (Jan. 25, 2017) ............................................................. 9
`
`Neochord, Inc. v. University of Md., et al., Case IPR2016-00208,
`Paper 28 (May 23, 2017) ................................................................................. 9
`
`Reactive Surfaces Ltd. v. Toyota Motor Corp., Case IPR2016-
`01914, Paper 36 (July 13, 2017) ...................................................................... 9
`
`
`
`OTHER MATERIALS
`Br. for Federal Resp’t, Oil States Energy Servs., Inc. v. Greene’s
`Energy Grp., LLC, No. 16-712 (U.S. filed Oct. 23, 2017) ........ 6, 7, 10, 11, 15
`
`Richard A. Epstein, No New Property, 56 Brook. L. Rev. 747 (1990) ................... 12
`
`16 James W. Moore et al., Moore’s Federal Practice (3d ed. 2004) ...................... 13
`
`Edward C. Walterscheid, The Early Evolution of the United States
`Patent Law: Antecedents (Part 2), 76 J. Pat. & Trademark
`Off. Soc’y 849 (1994) .............................................................................. 11-12
`
`
`
`
`
`iv
`
`

`

`
`
`INTEREST OF AMICI CURIAE
`
`The High Tech Inventors Alliance (“HTIA”) is dedicated to advancing a
`
`patent system that promotes and protects real investments in technologies and
`
`American jobs. Collectively, HTIA’s members employ nearly 500,000 U.S.
`
`employees, spent $63 billion last year alone on research and development, hold
`
`more than 115,000 U.S. patents, and have a market capitalization of more than
`
`$2 trillion. The Computer & Communications Industry Association (“CCIA”) is
`
`dedicated to innovation and enhancing society’s access to information and
`
`communications. CCIA’s 29 members engage in research, development, and sale
`
`of high-technology products and services, and are both patentees and defendants in
`
`patent litigation. The Internet Association represents the interests of leading
`
`Internet companies and their customers, seeking to protect Internet freedom,
`
`promote innovation and economic growth, and empower customers and users.2
`
`INTRODUCTION AND SUMMARY
`
`This case concerns the drugmaker Allergan’s arrangement with the St. Regis
`
`Mohawk Tribe to shield Allergan’s questionable patents on the dry-eye treatment
`
`Restasis from inter partes review by the Patent Office. A week before the patents
`
`
`2 HTIA is a nonprofit corporation whose members are Adobe Systems, Inc.;
`Amazon.com, Inc.; Cisco Systems, Inc.; Dell Inc.; Google LLC; Intel Corporation;
`Oracle Corporation; and salesforce.com, inc. Current lists of CCIA’s and the
`Internet Association’s members are available at https://www.ccianet.org/members
`and https://internetassociation.org/our-members/.
`
`

`

`were due to be reviewed, Allergan transferred them to the Tribe so that the Tribe
`
`could assert tribal sovereign immunity to frustrate this proceeding. The Panel
`
`should not allow Allergan to circumvent the review process in this way.
`
`Tribes are domestic dependent nations whose sovereignty gives them
`
`immunity from lawsuits by states or third parties, but not from the United States
`
`when it is enforcing laws of general applicability. Tribal immunity therefore does
`
`not bar inter partes review – a discretionary procedure through which the Patent
`
`Office enforces the generally applicable statutory requirements for any patent to be
`
`valid. Although private petitioners participate in inter partes review and help the
`
`Patent Office make decisions, they cannot compel the Patent Office to conduct a
`
`review and their ongoing participation is unnecessary to complete one. An
`
`agency’s review of its own actions (here, issuing patents) is fundamentally unlike a
`
`judicial case where private parties assert rights and seek remedies. And the Patent
`
`Office’s review is lawful as a congressionally imposed condition on the grant of a
`
`patent. Everyone who applies for a patent knows that the Patent Office may (and
`
`sometimes does) later reconsider its decision to grant that privilege.
`
`Inter partes review is fully compatible with tribal immunity also because – to
`
`the limited extent that review resembles any judicial proceeding – it is similar to a
`
`proceeding in rem, such as bankruptcy proceedings or certain maritime cases.
`
`Sovereign immunity does not bar in rem proceedings because they concern not the
`
`2
`
`

`

`competing rights and obligations of particular adverse parties, but the status of an
`
`item or estate (here, a patent) whose owner can assert claims against the entire
`
`world. Accordingly, this Panel’s statutory authority to review whether the Restasis
`
`patents were properly granted as a matter of federal law does not and should not
`
`depend on the identity of the patent’s owner.
`
`ARGUMENT
`
`I.
`
`Tribal Sovereign Immunity Cannot Bar Inter Partes Review.
`
`
`A. Tribes Are Not Immune from Federal Enforcement Proceedings
`or Exempt from Generally Applicable Federal Laws.
`
`Indian tribes have been recognized for nearly two centuries as “domestic
`
`dependent nations” that are “under the sovereignty and dominion of the United
`
`States.” Cherokee Nation v. Georgia, 30 U.S. (5 Pet.) 1, 17 (1831) (Marshall,
`
`C.J.). They retain “many of the attributes of sovereignty,” primarily “the rights
`
`which belong to self government.” Worcester v. Georgia, 31 U.S. (6 Pet.) 515,
`
`580 (1832) (Marshall, C.J.). Their powers include “‘regulating their internal and
`
`social relations’” and making and enforcing “their own substantive law in internal
`
`matters.” Santa Clara Pueblo v. Martinez, 436 U.S. 49, 55 (1978) (quoting United
`
`States v. Kagama, 118 U.S. 375, 381-82 (1886)). Tribes do not, however, retain
`
`aspects of sovereignty “inconsistent with the overriding interests of the National
`
`Government.’” Washington v. Confederated Tribes, 447 U.S. 134, 153 (1980).
`
`3
`
`

`

`These principles define the contours of tribal immunity and a tribe’s duty to
`
`follow federal law. Indian tribes are immune from many suits brought by states
`
`and by private parties. See Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024
`
`(2014) (immunity barred state’s suit to enjoin casino operation outside
`
`reservation); Kiowa Tribe of Okla. v. Manufacturing Techs., Inc., 523 U.S. 751
`
`(1998) (immunity barred private suit on promissory note). A tribe may not,
`
`however, “interpose its sovereign immunity against the United States.” United
`
`States v. Red Lake Band of Chippewa Indians, 827 F.2d 380, 382 (8th Cir. 1987);
`
`see also Reich v. Mashantucket Sand & Gravel, 95 F.3d 174, 182 (2d Cir. 1996)
`
`(“Tribal sovereign immunity does not bar suits by the United States.”).
`
`Further, tribes and their members must comply with federal statutes of
`
`general applicability. See Federal Power Comm’n v. Tuscarora Indian Nation,
`
`362 U.S. 99, 116 (1960) (declaring it “well settled” that “a general statute in terms
`
`applying to all persons includes Indians and their property interests”). There are
`
`narrow exceptions to this general rule, such as when a statute would encroach on a
`
`tribe’s internal affairs or implicate matters of traditional sovereign concern (for
`
`example, treaty rights). See, e.g., Donovan v. Coeur d’Alene Tribal Farm, 751
`
`F.2d 1113, 1116 (9th Cir. 1985) (federal statutes of general applicability apply to
`
`tribes unless they touch on “exclusive rights of self-governance in purely
`
`intramural matters,” abrogate treaty rights, or evince proof that Congress intended
`
`4
`
`

`

`the law not to apply on reservations). Where, however, tribes engage in
`
`commercial activity unrelated to internal tribal governance, the federal government
`
`may enforce generally applicable federal statutes and reject tribal immunity
`
`defenses. See, e.g., NLRB v. Little River Band of Ottawa Indians Tribal Gov’t, 788
`
`F.3d 537, 555 (6th Cir. 2015) (holding tribe subject to NLRB enforcement of
`
`federal labor statute), cert. denied, 136 S. Ct. 2508 (2016).3
`
`B.
`
`Tribes Are Not Immune from the Federal Government’s
`Discretionary Review of Patent Validity.
`
`An inter partes review proceeding is not barred by tribal immunity or
`
`sovereignty because inter partes review is a discretionary administrative procedure
`
`in which the federal government (through the Patent Office and this Board) is
`
`enforcing federal law, rather than adjudicating grievances of private parties; and
`
`because the laws being enforced apply generally to all patent owners (including
`
`tribes) as conditions of a statutory grant.
`
`
`3 See also San Manuel Indian Bingo & Casino v. NLRB, 475 F.3d 1306,
`1315 (D.C. Cir. 2007) (upholding application of the NLRA to tribally owned
`casino because it “does not impinge on the Tribe’s sovereignty” with respect to “a
`traditional attribute of self-government”); Reich, 95 F.3d at 180 (upholding
`application of OSHA to tribally owned construction business whose “activities are
`of a commercial and service character”); Menominee Tribal Enters. v. Solis, 601
`F.3d 669, 670-71 (7th Cir. 2010) (holding that “[s]tatutes of general applicability
`that do not mention Indians are nevertheless usually held to apply to them” if they
`do not “interfere with tribal governance” or infringe treaty rights, and applying
`OSHA to tribally owned sawmill).
`
`5
`
`

`

`1.
`
`Inter Partes Review Is a Proceeding in the Sole Discretion
`of the Patent Office To Enforce the Novelty and
`Nonobviousness Requirements of the Patent Act.
`
`Speaking for the Director of the Patent Office, the Solicitor General recently
`
`described inter partes review as a procedure the federal government uses to
`
`“protect the public interest in the integrity of existing patents” by ensuring their
`
`validity. Br. for Federal Resp’t at 25, Oil States Energy Servs., Inc. v. Greene’s
`
`Energy Grp., LLC, No. 16-712 (U.S. filed Oct. 23, 2017) (“Oil States Br.”). The
`
`public has a “paramount interest in seeing that patent monopolies . . . are kept
`
`within their legitimate scope.” Precision Instrument Mfg. Co. v. Automotive
`
`Maint. Mach. Co., 324 U.S. 806, 816 (1945). The limits on patent scope have
`
`“constitutional underpinnings,” Oil States Br. 19, because Congress’s Article I
`
`power to grant patents is tethered to “promot[ing] the Progress of Science and
`
`useful Arts, by securing for limited Times to Authors and Inventors the exclusive
`
`Right to their respective Writings and Discoveries,” U.S. Const. art. I, § 8, cl. 8.
`
`The Patent Office’s ongoing review of patents ensures they meet the statutory,
`
`constitutionally informed standards of novelty and utility. Inter partes review is
`
`thus “less like a judicial proceeding and more like a specialized agency
`
`proceeding” in which third parties that petition for review “need not have a
`
`concrete stake in the outcome; indeed, they may lack constitutional standing.”
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143-44 (2016).
`
`6
`
`

`

`The Patent Office’s ongoing review of its own decisions is not new. To the
`
`contrary, before inter partes review, the agency used other procedures for the same
`
`purpose. Since 1980, ex parte reexamination has provided one such procedure.
`
`See 35 U.S.C. §§ 301, 303. The Patent Office can undertake ex parte
`
`reexamination based either on a request for reexamination filed by a third party, or
`
`on its own initiative. Id. In recent decades, Congress added inter partes
`
`reexamination, which gave “third parties greater opportunities to participate in the
`
`Patent Office’s reexamination proceedings.” Cuozzo, 136 S. Ct. at 2137. The
`
`Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011),
`
`renamed inter partes reexamination “inter partes review.” 35 U.S.C. § 311.
`
`The participation of third parties in inter partes review amounts to a
`
`“mechanism by which the [Patent Office] can leverage knowledge possessed by
`
`persons outside the government to assist it in making a decision within its
`
`bailiwick.” Oil States Br. 11. Whatever information a petitioner may provide or
`
`arguments it may make, the Patent Office exercises unreviewable discretion to
`
`decide whether to commence inter partes review. 35 U.S.C. § 314(a), (d); Cuozzo,
`
`136 S. Ct. at 2139-40. Further, no party has a right to compel review, and the
`
`Patent Office has full authority to go forward with or without the ongoing
`
`participation of third parties. 35 U.S.C. § 317(a); Cuozzo, 136 S. Ct. at 2140
`
`7
`
`

`

`(government retains “the ability to continue proceedings even after the original
`
`petitioner settles and drops out”).
`
`The characteristics of inter partes review make it fundamentally unlike a
`
`judicial proceeding (such as a patent infringement action) in which a state or a
`
`private party might sue a tribe without its consent. Thus, the authorities cited by
`
`the Tribe (at 8-12) supporting its immunity from lawsuits by states and private
`
`parties are inapposite. Indeed, those authorities confirm that tribes lack immunity
`
`against the United States and that no “abrogation” of immunity is required for the
`
`federal government to enforce statutory requirements. See, e.g., Florida
`
`Paraplegic Ass’n, Inc. v. Miccosukee Tribe of Indians of Fla., 166 F.3d 1126 (11th
`
`Cir. 1999) (cited by Tribe at 10) (holding that Title III of the Americans with
`
`Disabilities Act applies to tribes and the U.S. Attorney General may sue to enforce
`
`compliance, but tribes’ immunity bars private parties from bringing ADA actions).
`
`Inter partes review, therefore, is properly understood as a discretionary
`
`enforcement proceeding. As such, Federal Maritime Commission v. South
`
`Carolina State Ports Authority, 535 U.S. 743 (2002) (“FMC”), on which the Tribe
`
`relies (at 14-15), supports the Patent Office’s authority to review a patent held by a
`
`tribe. FMC held that an adversarial administrative adjudication of a private party’s
`
`complaint against a state’s ports authority for violation of the federal Shipping Act,
`
`46 U.S.C. app. § 1701 et seq., was barred by state sovereign immunity. But FMC
`
`8
`
`

`

`made clear also that federal enforcement of the Shipping Act against the state
`
`would not have been barred. The key to FMC’s holding was that the federal
`
`agency had no “discretion to refuse to adjudicate complaints brought by private
`
`parties.” 535 U.S. at 764. As a result, it was not the United States that controlled
`
`prosecution of a complaint before the Commission but rather the private party. Id.
`
`FMC expressly recognized that sovereign immunity did not preclude the
`
`government from prosecuting “alleged violations of the Shipping Act, either upon
`
`its own initiative or upon information supplied by a private party, and . . .
`
`institut[ing] its own administrative proceeding against a state-run port.” Id. at 768
`
`(emphasis added; citation omitted). Based on that analysis, inter partes review is
`
`precisely the type of proceeding that does not trigger sovereign immunity. Id. at
`
`768 n.19 (so long as “the Federal Government [remains] free to take subsequent
`
`legal action,” private parties are “perfectly free to complain to the Federal
`
`Government about unlawful state activity”).4
`
`
`4 In decisions not binding on this Panel, other PTAB panels have determined
`that state sovereign immunity may bar inter partes review. See Covidien LP v.
`University of Fla. Research Found. Inc., Case IPR 2016-01274, Paper 21 (Jan. 25,
`2017); Neochord, Inc. v. University of Md., et al., Case IPR2016-00208, Paper 28
`(May 23, 2017); see also Reactive Surfaces Ltd. v. Toyota Motor Corp., Case
`IPR2016-01914, Paper 36 (July 13, 2017) (finding state owner immune but
`permitting case to continue). Those decisions did not involve common-law tribal
`immunity; nor, as Mylan points out (at 16), did they involve attempts to
`“manipulate [PTAB] jurisdiction through a post-institution assignment.” In any
`case, those decisions were incorrect. They ignored the fact that inter partes review
`is not concerned with “determining the respective rights of adverse litigants” but
`
`9
`
`

`

`2.
`
`The Patent Act and the America Invents Act Are Laws of
`General Applicability That Apply to Tribes.
`
`Inter partes review is also consistent with tribal sovereignty because laws
`
`governing the granting and revocation of patents, including the America Invents
`
`Act, are laws of general applicability. Under Tuscarora, those laws presumptively
`
`apply to tribes that become patent owners. 362 U.S. at 115-17 (“[A] general
`
`statute in terms applying to all persons includes Indians and their property
`
`interests.”). The patent statutes do not intrude on matters of internal tribal self-
`
`governance or on tribal treaty rights. Cf., e.g., EEOC v. Karuk Tribe Hous. Auth.,
`
`260 F.3d 1071 (9th Cir. 2001) (although tribe did not enjoy immunity from federal
`
`agency inquiry, the Age Discrimination in Employment Act did not apply to a
`
`tribal authority’s “intramural” dispute with a tribe member); see generally Coeur
`
`d’Alene, 751 F.2d at 1116 (exceptions include statutes that touch on “exclusive
`
`rights of self-governance in purely intramural matters,” abrogate treaty rights, or
`
`evince proof that Congress intended the law not to apply on reservations).
`
`Because patent law is governed by statutes of general applicability and
`
`because inter partes review – like its predecessors, ex parte and inter partes
`
`reexamination – does not intrude on matters traditionally entrusted to tribal
`
`
`with whether the Patent Office correctly granted “a patent monopoly as against the
`world.” Oil States Br. 36. This Panel should not follow these erroneous decisions
`and certainly should not extend them to the tribal-immunity context.
`
`10
`
`

`

`sovereignty, the default rule for general statutes applies: tribes must comply with
`
`the statutes governing ownership of patents. Those statutes give the Patent Office
`
`the prerogative to reexamine a patent on its own initiative or to initiate inter partes
`
`review in response to information it receives. When it does so, the Patent Office is
`
`a government body enforcing a federal statute of general applicability. Tribal
`
`immunity is no defense.
`
`Further, the privileges of patent owners are public grants under federal
`
`constitutional and statutory mandates, subject to conditions that have long included
`
`the possibility of governmental reexamination and revocation. See Magoun v.
`
`Illinois Trust & Sav. Bank, 170 U.S. 283, 288 (1898) (explaining that “the
`
`authority which confers [a privilege] may impose conditions upon it”); see
`
`generally Oil States Br. 16, 36-38 (describing patents as “privileges that the
`
`government may revoke without judicial involvement”; cataloguing their history as
`
`“sovereign grants” that were “issued, enforced, and revoked” first by the Crown,
`
`and later by the Crown’s Privy Council) (citing Teva Pharm. USA, Inc. v. Sandoz,
`
`Inc., 135 S. Ct. 831, 847 (2015) (Thomas, J., dissenting)).5
`
`
`5 Patents “did not exist at common law,” Gayler v. Wilder, 51 U.S. (10
`How.) 477, 494 (1850), nor did they reflect ideas about a “natural right” of
`inventors, Graham v. John Deere Co., 383 U.S. 1, 9 (1966). Instead, patents are
`“created by the act of Congress; and no rights can be acquired in [them] unless
`authorized by statute, and in the manner the statute prescribes.” Gayler, 51 U.S.
`(10 How.) at 494; see also Edward C. Walterscheid, The Early Evolution of the
`
`11
`
`

`

`The Tribe cannot reasonably complain that this situation offends its dignity.
`
`By stepping into Allergan’s shoes and taking ownership of the patent, the Tribe
`
`accepted a federal monopoly allowing it to abridge the economic liberty of the
`
`general public. See generally Richard A. Epstein, No New Property, 56 Brook. L.
`
`Rev. 747, 754 (1990) (recognizing that the “creation of . . . patents is in derogation
`
`of common law rights of property and labor”). But, in doing so, the Tribe knew
`
`that the patent grant was subject to Congress’s “authority . . . [to] impose
`
`conditions.” Magoun, 170 U.S. at 288. For example, tribes that own patents must,
`
`like all other patentees, pay the fees to maintain the patent, or else the patent will
`
`expire. See 35 U.S.C. § 41(b). The condition that the Patent Office may
`
`reexamine or review the patent is no different.
`
`II.
`
`Inter Partes Review Is Akin to an In Rem Proceeding in Which
`Sovereign Immunity Does Not Apply.
`
`For the reasons given in Part I, inter partes review is best understood as a
`
`discretionary enforcement proceeding that does not implicate tribal immunity
`
`because it is unlike any judicial proceeding. That is enough to reject the Tribe’s
`
`assertion of immunity. But there is another reason as well: if inter partes review is
`
`compared to a lawsuit, it is still unlike an in personam proceeding, where one
`
`person seeks relief against another. Instead, inter parties review is most like an in
`
`
`United States Patent Law: Antecedents (Part 2), 76 J. Pat. & Trademark Off. Soc’y
`849, 859 (1994) (describing the history of patent revocation).
`
`12
`
`

`

`rem proceeding, where a court determines the status of a thing. And in rem
`
`proceedings are not barred by state or tribal sovereign immunity.
`
`For example, a bankruptcy court’s exercise of in rem jurisdiction to
`
`discharge loans does not abridge state sovereign immunity, because bankruptcy
`
`courts “have exclusive jurisdiction over a debtor’s property, wherever located, and
`
`over the estate.” Tennessee Student Assistance Corp. v. Hood, 541 U.S. 440, 447
`
`(2004). A bankruptcy court’s jurisdiction is not premised on the status or nature of
`
`creditors, but rather on the estate itself; the proceeding is not adversarial but “‘one
`
`against the world.’” Id. at 448 (quoting 16 James W. Moore et al., Moore’s
`
`Federal Practice § 108.70[1] (3d ed. 2004)); accord Central Va. Cmty. Coll. v.
`
`Katz, 546 U.S. 356 (2006) (sovereign immunity cannot bar a bankruptcy trustee’s
`
`proceeding to set aside some preferential transfers).
`
`Similarly, sovereign immunity does not bar federal jurisdiction over an in
`
`rem admiralty action where the sovereign entity does not possess the property.
`
`California v. Deep Sea Research, Inc., 523 U.S. 491, 495 (1998). Although
`
`sovereign immunity becomes an issue when a state possesses a ship because of the
`
`“special concern in admiralty that maritime property of the sovereign is not to be
`
`seized,” Florida Dep’t of State v. Treasure Salvors, Inc., 458 U.S. 670, 709-10
`
`(1982), no similar concern is present here. A patent is an intangible privilege that
`
`cannot be physically seized. See Ager v. Murray, 105 U.S. 126, 130 (1881)
`
`13
`
`

`

`(“There is nothing in any act of Congress, or in the nature of [patent] rights
`
`themselves, to give them locality anywhere, so as to subject them to the process of
`
`courts having jurisdiction limited by the lines of States and districts.”). Nor does
`
`inter partes review resemble a seizure or transfer. The patent owner continues to
`
`own the patent and can assert it unless and until a panel determines that it does not
`
`meet statutory requirements – at which point the patent is canceled, not transferred.
`
`The principle that sovereign immunity does not defeat in rem jurisdiction
`
`has been applied to limit the applicability of common-law tribal immunity.
`
`Jurisdiction, for tax purposes, over certain fee-patented lands located on a
`
`reservation is permissible if it is in rem, as opposed to in personam. County of
`
`Yakima v. Confederated Tribes & Bands of Yakima Indian Nation, 502 U.S. 251,
`
`265 (1992) (“While the in personam jurisdiction over reservation Indians . . .
`
`would have been significantly disruptive of tribal self-government, the mere power
`
`to assess and collect a tax on certain real estate is not.”).
`
`Inter partes review is like an in rem proceeding because it is an inquiry about
`
`the patent – over which the Patent Office unquestionably has authority – rather
`
`than about the patentee. See 35 U.S.C. § 311(a) (“[A] person who is not the owner
`
`of a patent may file with the Office a petition to institute an i