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`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 (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)1
`___________________
`
`BRIEF OF AMICUS CURIAE NATIVE AMERICAN
`INTELLECTUAL PROPERTY ENTERPRISE COUNCIL, INC.
`REGARDING PATENT OWNER’S MOTION TO DISMISS
`
`
`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.
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`I.
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`INTRODUCTION
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`Amicus curiae Native American Intellectual Property Enterprise Council,
`
`Inc. (“NAIPEC”) submits this brief to address several issues raised in Petitioners’
`
`Opposition to the Patent Owner’s Motion to Dismiss (Paper No. 87, “Petitioners’
`
`Brief”). Specifically, NAIPEC submits the information below to provide the
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`Board with more context in relation to Native American intellectual property
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`efforts and technology transfer agreements. Any suggestion that these transactions
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`are a “sham” is hyperbole, and a characterization that NAIPEC strongly disputes in
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`view of its extensive experience with both Native American intellectual property
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`agreements and the communities that they benefit.
`
`II. ARGUMENT
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`A. NAIPEC and the Importance of Native American
`Intellectual Property Agreements
`
`NAIPEC is a 501(c)(3) American Indian led non-profit organization that
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`provides assistance to Native American inventors, Tribes, and Tribally-owned
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`businesses in matters concerning intellectual property. NAIPEC was founded in
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`2009 by David Petite, a successful Chippewa inventor. NAIPEC’s focus is to grow
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`innovation and intellectual property within Native American communities and to
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`protect and develop those interests economically for the benefit of these
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`communities. A largely volunteer and pro-bono organization, NAIPEC’s activities
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`range from providing expert advice and resources regarding business planning,
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`development, and management of intellectual property assets to working with legal
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`services companies to provide legal assistance in matters related to intellectual
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`property. It also works to improve the lives of Native Americans through
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`numerous educational workshops, partnerships, and community assistance.
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`Native Americans have a proud history of entrepreneurship and
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`inventorship. Cultivating intellectual property assets is an important strategic
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`effort to foster the growth and success of Native American Tribes. Appropriation
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`and outright theft of Native American inventions and ideas without attribution has
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`occurred for hundreds of years. The curing of rubber, the game of Lacrosse,
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`tortillas, potato chips, root beer, and innumerable planting, cultivation,
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`crossbreeding, and cooking techniques and inventions were all Native American in
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`origin, yet the Tribes saw little or no benefits aside from occasional lip service.
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`Likewise, Native American Tribes wage a seemingly never-ending battle to
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`prevent appropriation and resale of their artifacts by collectors and others
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`attempting to profit from their heritage.2
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`Given the substantial gaps in Native American education, business, and
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`economic development, largely attributed to lack of funding in these key areas,
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`Native American innovators and business developers need the ability and the
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`2 These problems have been so pervasive that Congress has passed legislation to help the
`Native American Tribes, including the Native American Graves Protection and Repatriation Act,
`25 U.S.C. §§3001 et seq.
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`knowledge to protect their intellectual property and seek out beneficial agreements
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`with others who wish to do the same. In 2012, NAIPEC conducted an informal
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`study at the United States Patent and Trademark Office and found that Native
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`Americans fall far short of other minorities, and the population as a whole, in
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`availing themselves of the protections offered by this body.3 Another study
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`conducted by NAIPEC in 2011 and 2012, under a grant from the Native American
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`Business Development Institute, likewise found that the vast majority of Economic
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`Development professionals of various Tribes in the Great Plains region were
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`unaware of either the importance of intellectual property or how to use the systems
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`already established to protect intellectual property.4
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`In relation to its efforts to facilitate the growth of intellectual property efforts
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`for Native American Tribes, NAIPEC has worked with many Tribes, including the
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`Navajo, Prairie Band Potowatami, Kickapoo, Winnebago, and Tohono O'odham,
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`as well as organizations such as the U.S. Patent and Trademark Office, U.S. Dept.
`
`of the Interior, U.S. Dept. of Agriculture, NASA, and The Scotts Company LLC.
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`For nearly a decade, NAIPEC has assisted Tribes and businesses with technology
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`ranging from agricultural inventions to scalable fuel manufacturing and
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`technologies for the aerospace industry.
`
`
`3 http://nativeamericaninventors.org/wp-content/uploads/2014/06/HARMONY-White-Paper-
`04-13.pdf.
`
`4
`
`Id.
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`- 4 -
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`One core area of NAIPEC’s activities has been to assist Tribes and other
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`Native American individuals and organizations with technology transfer
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`agreements with which to generate much-needed economic growth. NAIPEC
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`believes that such agreements are valuable part of an asset portfolio and can be an
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`important driver of education and business development for Tribes. NAIPEC has
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`assisted numerous Tribes and other organizations with such agreements, some of
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`which include:
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` 2010: Providing technology transfer consulting advice for the
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`Prairie Band Potowatami in Kansas, the Kickapoo Tribe in
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`Kansas and The Winnebago Tribe in Nebraska in relation to a
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`patented agricultural invention, AgriBoard;
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` 2012: Providing technology transfer advice and counsel to the
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`Navajo Tribe on their relationship with NASA; and
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` 2013: Consulting and brokering a tech transfer arrangement
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`between The Tohono O'odham Tribe in Arizona and a multi-
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`national aerospace company.
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`B.
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`Patent-related Agreements Provide Significant Benefit to
`American Indian Tribes
`
`Technology transfer agreements — like those found in this case — are an
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`important revenue component of many Tribes’ economic plans. NAIPEC has
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`spent nearly a decade assisting Tribes and Tribally-owned businesses with these
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`types of agreements. Contrary to suggestion that Native American intellectual
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`property agreements are a “sham,” these agreements provide significant, tangible
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`benefits to the Tribes.
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`As an organization very familiar with similar agreements and their positive
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`affect on Native American Communities, the benefits to Native Americans are
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`certainly legitimate and far from “insubstantial and illusory” from the perspective
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`of Tribes. They provide vital support for one of the groups in most need of
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`economic and educational assistance in the United States.
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`Further, any suggestion that these agreements only came about in response
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`to IPR proceedings or the AIA is likewise baseless. NAIPEC has been active since
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`2009, working to provide benefits to Tribes and their partners well prior to the late-
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`2012 enactment of the AIA, which initiated IPRs. NAIPEC itself has provided
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`assistance on numerous technology transfer matters that predate the AIA and IPRs,
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`as can be seen from the examples in §II.A. Through agreements like these — with
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`or without the existence of IPRs — Tribes are able to provide legitimate benefits to
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`real companies while addressing serious funding shortfalls for Native American
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`Communities.
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`III. CONCLUSION
`
`Native Americans Tribes are not only entitled, but encouraged, to enter into
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`agreements and do business with the benefits of a sovereign nation in order to
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`overcome significant historical disadvantages. Technology transfer agreements are
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`- 6 -
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`a legitimate part of many Tribes’ necessary economic plans to better their
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`communities. These agreements are not “shams,” and, in fact, represent critical
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`potential for economic advancement from the point of view of the Tribes that enter
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`into them — an important factor that the Board should consider prior to any
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`decision.
`
`DATED this 1st day of December, 2017.
`
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`Respectfully submitted,
`
`
`
`
`
` /s/ John C. Herman
`
`
`
`
`
`
`JOHN C. HERMAN
`ROBBINS GELLER RUDMAN
` & DOWD LLP
`CARLTON R. JONES
`Monarch Tower, Suite 1650
`3424 Peachtree Road, N.E.
`Atlanta, GA 30326
`Telephone: 404/504-6500
`Facsimile: 404/504-6501
`jherman@rgrdlaw.com
`cjones@rgrdlaw.com
`
`Counsel for Amicus Curiae Native American
`Intellectual Property Enterprise Council, Inc.
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
`
`that on December 1, 2017, a complete entire copy of the Brief of Amicus Curiae
`
`Native American Intellectual Property Enterprise Council, Inc. Regarding Patent
`
`Owner’s Motion to Dismiss was provided, via electronic service, to the persons
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`named below at their address of record:
`
`Alfonso Chan
`SHORE CHAN DEPUMP LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`achan@ShoreChan.com
`Attorneys for Saint Regis Mohawk Tribe
`
`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
`
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`- 8 -
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`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
`Attorneys for Mylan Pharmaceuticals, 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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`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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`DATED this 1st day of December, 2017.
`
`
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`
`
` /s/ John C. Herman
`
`
`
`
`
`
`JOHN C. HERMAN
`ROBBINS GELLER RUDMAN
` & DOWD LLP
`Monarch Tower, Suite 1650
`3424 Peachtree Road, N.E.
`Atlanta, GA 30326
`Telephone: 404/504-6500
`Facsimile: 404/504-6501
`jherman@rgrdlaw.com
`
`
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