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.
`
`ALLERGAN, INC.,
`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)
`_____________
`
`BRIEF OF AMICUS CURIAE LUIS ORTIZ AND KERMIT LOPEZ IN
`SUPPORT OF PATENT OWNER’S MOTION TO DISMISS FOR LACK
`OF JURISDICTION BASED ON TRIBAL SOVEREIGN IMMUNITY
`
`
`
`
`
`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
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`

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`Proceeding No.: IPR2016-01127
`
`TABLE OF CONTENTS
`
`INTEREST OF AMICI ................................................................................................ 1
`
`SUMMARY OF ARGUMENT .................................................................................... 2
`
`ARGUMENT ................................................................................................................. 3
`
`
`
`I. The Board Must Adhere to Existing Precedent ............................................. 3
`
`A. Congressional Policy Supports The Tribe's Sovereign Immunity .......... 4
`
`B. Indian Nations Rely Upon Tribal Sovereign Immunity .......................... 7
` C. Courts Avoid Finding Constructive Waivers of Sovereign
`Immunity ................................................................................................... 8
`
`
`
`II. The Board Should Not Analyze The Scope of Tribal Sovereign
`Immunity ............................................................................................................ 9
`A. Congress Circumscribed The Board's Powers ...................................... 10
`
` B. Executive Branch Policy Supports The Tribe's Sovereign
`Immunity ................................................................................................. 12
`
`
`CONCLUSION ........................................................................................................... 13
`
`
`
`
`
`
`i
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`

`

`TABLE OF AUTHORITIES
`
`
`CASES:
`
`Bassett v. Mashantucket Pequot Tribe,
`204 F.3d 343 (2d Cir. 2000) ...................................................................................... 8
`
`
`Caring Hearts Personal Home Servs., Inc. v. Burwell,
`824 F.3d 968 (10th Cir. 2016) ................................................................................. 10
`
`
`Chevron, U.S.A., Inc. v. NRDC,
`467 U.S. 837 (1984) ................................................................................................. 11
`
`
`FDA v. Brown & Williamson Tobacco Corp.,
`529 U.S. 120 (2000) ................................................................................................. 10
`
`
`Kiowa Tribe of Okla. v. Manuf’g Techs., Inc.,
`523 U.S. 751 (1998) .............................................................................................. 5, 6
`
`
`Marbury v. Madison,
`5 U.S. (1 Cranch) 137 (1803) .................................................................................. 13
`
`
`Mexichem Fluor, Inc. v. EPA,
`866 F.3d 451 (D.C. Cir. 2017) ................................................................................... 9
`
`
`Michigan v. Bay Mills Indian Community,
`134 S.Ct. 2024 (2014) ...................................................................................... 7, 8, 11
`
`
`Miles v. Apex Marine Corp.,
`498 U.S. 19 (1990) ................................................................................................. 4, 6
`
`
`Oklahoma Tax Comm’n v. Citizen Band Potawatomi Indian Tribe of Okla.,
` 498 U.S. 505 (1991) ................................................................................................... 5
`
`Plaut v. Spendthrift Farm, Inc.,
`514 U.S. 211 (1995) ................................................................................................. 13
`
`
`
`
`
`
`
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`Proceeding No.: IPR2016-01127
`
`Santa Clara Pueblo v. Martinez,
`436 U.S. 49 (1978) ................................................................................................. 5, 6
`
`
`Stark v. Wickard,
`321 U.S. 288 (1944) ................................................................................................... 9
`
`
`State of New York v. Shalala,
`119 F.3d 175 (2d Cir. 1997) .................................................................................... 10
`
`
`Three Aff’d Tribes of Fort Berthold Res. v. Wold Eng’g, P.C.,
`498 U.S. 505 (1991) ................................................................................................... 8
`
`
`United States v. USF&G Co.,
`306 U.S. 506 (1940) ................................................................................................... 7
`
`
`Utility Air Regulatory Grp. v. EPA,
`134 S.Ct. 2427 (2014) ................................................................................................ 4
`
`
`Western Minn. Mun. Power Agency v. FERC,
`806 F.3d 588 (D.C. Cir. 2015) ................................................................................... 4
`
`
`Xechem Int'l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr.,
`382 F.3d 1324 (Fed. Cir. 2004) ................................................................................. 8
`
`STATUTES:
`
` 5
`
` U.S.C. § 553 ................................................................................................................ 2
`
`
`25 U.S.C. § 1451 ............................................................................................................ 8
`
`25 U.S.C. § 5301 ............................................................................................................ 8
`
`28 U.S.C. § 1604 ............................................................................................................ 5
`
`35 U.S.C. § 6 ............................................................................................................ 3, 11
`
`35 U.S.C. § 102 .............................................................................................................. 9
`
`35 U.S.C. § 103 .............................................................................................................. 9
`
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`Proceeding No.: IPR2016-01127
`
`35 U.S.C. § 134 .............................................................................................................. 3
`
`35 U.S.C. § 135 .............................................................................................................. 3
`
`35 U.S.C. § 311 ...................................................................................................... 3, 4, 9
`
`35 U.S.C. § 321 .............................................................................................................. 3
`
`REGULATIONS:
`
`Tribal Government-to-Government Consultation Policy,
`81 Fed. Reg. 40,893 (2016) ..................................................................................... 12
`
`Executive Order 13175, 65 Fed. Reg. 67,249 (Nov. 6, 2000) .................................... 12
`
`
`
`
`
`
`iv
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`

`

`INTEREST OF AMICI
`
`Luis Ortiz and Kermit Lopez are the name partners of Ortiz & Lopez, PLLC, a
`
`professional limited liability company formed under the laws of Texas. We are both
`
`registered patent attorneys who have represented
`
`independent
`
`inventors,
`
`entrepreneurs, small companies, large corporations, and non-profit entities in matters
`
`before the Patent and Trademark Office (“PTO”). We have obtained nearly 900
`
`patents for our clients and have about 100 additional applications in prosecution. We
`
`have also personally obtained no fewer than 78 patents for our own inventions.
`
`As frequent practitioners before the PTO who represent various sovereign
`
`entities, and as independent inventors ourselves, we have an uncontestable interest
`
`in ensuring predictable and fair proceedings, consistent with law, by the PTO, its
`
`Director, and the Patent Trial and Appeal Board (“PTAB”). Mr. Ortiz also has family
`
`who are registered members of the Navajo Nation in Northwestern New Mexico.
`
`PTAB proceedings must ensure that the Board does not seek to make new law or
`
`policy, and instead applies extant legal doctrines consistent with the judicial
`
`framework of the United States and the separation of powers between the three
`
`branches of the federal government. To that end, we submit this amicus brief in
`
`support of the Saint Regis Mohawk Tribe (“Tribe”), a federally recognized,
`
`sovereign American Indian Tribe in these proceedings.
`
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`Proceeding No.: IPR2016-01127
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`SUMMARY OF ARGUMENT
`
`The Tribe is a sovereign government. The history of tribal sovereign immunity
`
`and the exclusive power of Congress to determine the parameters of tribal sovereign
`
`immunity date back decades. PTAB is the designee of an executive agency, the PTO.
`
`The PTO itself is an agency within the Department of Commerce. Administrative
`
`agencies are charged with administering the Congressional directives that are within
`
`their peculiar expertise and, outside of that, with applying the law that Congress and
`
`the judicial branch have developed. The PTO has no expertise in determining the
`
`scope of sovereign immunity in any context.
`
`The Administrative Procedure Act (“APA”) enables a court to reverse or nullify
`
`an agency action that is “contrary to law.” That means an agency, including any
`
`hearing tribunal or hearing officer within the agency, has no discretion to issue legal
`
`decisions contrary to controlling precedent. Similarly, the APA only allows an
`
`agency to engage in rulemaking through the notice and comment procedure set forth
`
`in 5 U.S.C. § 553, unless the agency is creating rules that “are required by statute to
`
`be made on the record after opportunity for an agency hearing” – an exception that
`
`does not apply here.
`
`Because PTAB has no authority to make law, nor to reach a legal conclusion
`
`contrary to established precedent, it can only rule in the Tribe’s favor because
`
`Supreme Court precedent is clear: the Tribe is immune from this proceeding.
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`Proceeding No.: IPR2016-01127
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`Allowing amici briefs in this IPR by parties aligned with the petitioners does nothing
`
`more than allow various commercial interests to complain in the wrong forum. Only
`
`Congress, whose elected members have the authority and duty to make the political
`
`decision whether to abrogate sovereign immunity, and who must face voters after
`
`such decisions, can choose to eliminate sovereign immunity for Indian tribes in IPRs.
`
`The Board cannot.
`
`I. The Board Must Adhere to Existing Precedent.
`
`ARGUMENT
`
`The Board includes the Director, Deputy Director, Commissioner for Patents,
`
`Commissioner for Trademarks and the administrative patent judges (“APJs”). 35
`
`U.S.C. § 6(a). The APJs must have competent legal knowledge and scientific ability.
`
`Id. Under 35 U.S.C. § 6(b), the Board’s duties include only reviewing appeals under
`
`35 U.S.C. § 134, conducting derivation proceedings under 35 U.S.C. § 135 and
`
`conducting the inter partes reviews (“IPR”) and post grant reviews under 35 U.S.C.
`
`§§ 311, et seq., and 35 U.S.C. §§ 321, et seq., respectively, that Congress created in
`
`the America Invents Act (“AIA”).
`
`The Board has no authority or duty to review exercises of Congressional authority
`
`outside of Title 35, and no authority to deviate from Supreme Court, Federal Circuit,
`
`or other Circuit Court decisions. This is because an agency has authority to make
`
`policy only insofar as Congress expressly or impliedly delegates such power.
`
`3
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`Proceeding No.: IPR2016-01127
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`Western Minn. Mun. Power Agency v. FERC, 806 F.3d 588, 593 (D.C. Cir. 2015).
`
`The Board cannot interpret the statutes it administers to meet a policy goal contrary
`
`to clearly stated Congressional will, nor can the Board manipulate the statutes it
`
`interprets in a way not commensurate with Congressional intent. Utility Air
`
`Regulatory Grp. v. EPA, 134 S.Ct. 2427, 2445 (2014). Ultimately, the only issue is
`
`before the Board is whether Congress, in passing the AIA, unequivocally and
`
`expressly waived tribal sovereign immunity as to IPR proceedings. It clearly did not.
`
`A. Congressional Policy Supports The Tribe’s Sovereign Immunity.
`
`Congress’s will to preserve the sovereign immunity of native American tribes in
`
`IPRs is clear. The Board cannot legitimately find any intent to foreclose or abrogate
`
`tribal sovereign immunity in the AIA, which created this proceeding. See 35 U.S.C.
`
`§ 311, et seq. The AIA is silent on tribal immunity—it has no provision that even
`
`mentions any type of sovereign immunity. Neither the root word “tribe” nor its
`
`derivatives like “tribal” appear in the AIA. The absence of any such discussion
`
`speaks volumes.
`
`Congress does not legislate in a vacuum. Longstanding Supreme Court precedent
`
`holds that, at the time it makes new legislation, Congress has actual knowledge of
`
`all current jurisprudence. More simply, the Supreme Court assumes that “Congress
`
`is aware of existing law when it passes legislation.” Miles v. Apex Marine Corp.,
`
`498 U.S. 19, 32 (1990). When Congress enacted the AIA in 2011, three main
`
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`Proceeding No.: IPR2016-01127
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`Supreme Court precedents that established the “law” on abrogating tribal sovereign
`
`immunity existed, and two of those precedents were at least 20 years old: Kiowa
`
`Tribe of Okla. v. Manuf’g Techs., Inc., 523 U.S. 751 (1998), Okla. Tax Comm’n v.
`
`Citizen Band Potawatomi Indian Tribe of Okla., 498 U.S. 505 (1991) (“Potawatomi
`
`I”), and Santa Clara Pueblo v. Martinez, 436 U.S. 49 (1978).
`
`In Kiowa Tribe, the Supreme Court noted that “tribal sovereign immunity is a
`
`matter of federal law” and noted that when Congress has desired to curtail tribal
`
`sovereign immunity, it had done so explicitly. 523 U.S. at 758 (discussing statutes).
`
`Seven years before Kiowa Tribe, the Supreme Court refused to read a commercial
`
`activities exception into the doctrine of tribal sovereign immunity akin to the
`
`commercial activities exception to foreign sovereign immunity in the Foreign
`
`Sovereign Immunities Act (28 U.S.C. § 1604, et seq.). Potawatomi I, 498 U.S. at
`
`509-510. Instead, the Supreme Court specifically found that Congressional policy
`
`favored sovereign immunity for a tribe’s commercial activities due to the need to
`
`promote tribal self-government. Id. at 510. The Petitioners and their amici
`
`effectively argue that the Board should negate tribal sovereign immunity due to the
`
`Tribe’s commercial activities—a result the Supreme Court rejected 26 years ago. Id.
`
`Potawatomi itself merely followed the clear path that the Supreme Court made
`
`in Santa Clara Pueblo, 13 years earlier. In Santa Clara Pueblo, the Court noted both
`
`that “Indian tribes have long been recognized as possessing the common-law
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`Proceeding No.: IPR2016-01127
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`immunity from suit traditionally enjoyed by sovereign powers” and that “[i]t is
`
`settled that a waiver of sovereign immunity cannot be implied but must be
`
`unequivocally expressed.” Santa Clara Pueblo, 436 U.S. at 58 (internal citations and
`
`quotations omitted).
`
`The Santa Clara Pueblo Court also noted that it had “repeatedly” emphasized
`
`that “Congress’ authority over Indian matters is extraordinarily broad, and the role
`
`of courts in adjusting relations between and among tribes and their members
`
`correspondingly restrained.” Id. at 71. Indeed, the Supreme Court noted that those
`
`doctrines had been long-standing even before issued its Santa Clara Pueblo
`
`decision, which occurred 33 years before Congress enacted the AIA. The AIA
`
`contains no unequivocal expression, or any expression of intent by Congress’ to
`
`abrogate tribal sovereign immunity.
`
`Put simply, when it enacted the AIA, as a matter of Supreme Court doctrine
`
`Congress knew that tribal sovereign immunity existed. Miles, 498 U.S. at 32.
`
`Congress also knew, due to the state of the law in 2011, that tribal sovereign
`
`immunity protected tribes from all litigation unless Congress had specifically
`
`abrogated tribal sovereign immunity or the tribe had explicitly waived such
`
`immunity. Id. Congress therefore had to expressly abrogate tribal sovereign
`
`immunity to render tribes subject to PTAB’s jurisdiction. Kiowa Tribe, 523 U.S. at
`
`758. The AIA’s silence on tribal sovereign immunity therefore demonstrates that
`
`6
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`Proceeding No.: IPR2016-01127
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`Congress had no intent to revoke that immunity and force tribes to defend their
`
`patents in IPRs.
`
`The Board does not have a close call. The Supreme Court has noted that “it is
`
`fundamentally Congress’s job, not ours, to determine whether or how to limit tribal
`
`immunity.” Michigan v. Bay Mills Indian Community, 134 S.Ct. 2024, 2037 (2014)
`
`(emphasis added). In other words, the highest and most important judicial authority
`
`in the United States has completely avoided placing limits upon tribal sovereign
`
`immunity that had not been specifically enacted by Congress. The AIA is silent on
`
`tribal sovereignty. The Board should not rush in where the Supreme Court fears to
`
`tread.
`
`B. Indian Nations Rely Upon Tribal Sovereign Immunity.
`
`Tribal sovereign immunity is a core legal protection for tribes. Considering the
`
`historical background of tribal relations with the United States, and the depredations
`
`upon Native American communities that the United States government has
`
`effectuated during this Nation’s history, the federally recognized Indian tribes have
`
`a special relationship with the federal government. In this context, Congress
`
`essentially is the trustee of tribal sovereign immunity and holds plenary authority to
`
`protect it for the benefit of Indian tribes, or to abrogate it when necessary to serve a
`
`separate policy goal. United States v. USF&G Co., 306 U.S. 506, 512 (1940) (noting
`
`that the sovereign immunity tribes held at the time they were conquered by the U.S.
`
`7
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`Proceeding No.: IPR2016-01127
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`“passed to the U.S. for their benefit”).
`
`Congress understands that tribal sovereign immunity is “a necessary corollary to
`
`Indian sovereignty and self-governance.” Three Aff’d Tribes of Fort Berthold Res.
`
`v. Wold Eng’g, P.C., 476 U.S. 877, 890 (1986). Thus, it has enacted laws designed
`
`to further Indian sovereignty such as the Indian Financing Act, 25 U.S.C. § 1451, et
`
`seq., and the Indian Self-Determination and Education Assistance Act, 25 U.S.C. §
`
`5301, et seq. Because Congressional policy has been to promote Indian sovereignty
`
`and self-governance, “courts will not lightly assume that Congress in fact intends to
`
`undermine Indian self-government”; instead they adhere to the “baseline position”
`
`that tribal sovereign immunity remains intact if Congress has not unequivocally
`
`expressed its intent to abrogate. Bay Mills, 134 S.Ct. at 2031-32.
`
`C. Courts Avoid Finding Constructive Waivers Of Sovereign Immunity.
`
`Participation in the patent system alone cannot mean the Tribe waived sovereign
`
`immunity. Courts abhor the notion that “constructive waiver” can nullify sovereign
`
`immunity. Xechem Int'l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr., 382 F.3d
`
`1324, 1331 (Fed. Cir. 2004) (“[T]he argument must be rejected that a state's entry
`
`into the patent system is a constructive waiver of immunity for actions in federal
`
`court against the state under the patent law.”); Bassett v. Mashantucket Pequot Tribe,
`
`204 F.3d 343, 357-358 (2d Cir. 2000) (“[T]he fact that a statute applies to Indian
`
`tribes does not mean that Congress abrogated tribal immunity in adopting it.”). By
`
`8
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`Proceeding No.: IPR2016-01127
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`owning a set of patents, the rights and obligations of which are governed by the
`
`Patent Act, a tribe has not waived immunity to suit against those patents no matter
`
`how it acquired them.
`
`For the Board to claim it can find an abrogation of sovereign immunity in the
`
`AIA or even in the patent system itself would be an immense error of law and a
`
`radical departure made for purely political reasons. Such a decision would
`
`significantly undermine the idea that the United States is a nation of laws and add to
`
`the current political belief that the administrative state has run amok.
`
`II. The Board Should Not Analyze The Scope of Tribal Sovereign Immunity.
`
`The power of an administrative agency “is circumscribed by the authority
`
`granted” by Congress. Stark v. Wickard, 321 U.S. 288, 309 (1944). The Board’s
`
`authority in IPRs comes from 35 U.S.C. §§ 311-319. The AIA allows the Board to
`
`grant a petitioner’s request to cancel 1 or more claims of a patent, but only upon
`
`grounds that the patent does not meet the novelty and nonobviousness requirements
`
`of 35 U.S.C. §§ 102 and 103. 35 U.S.C. § 311(b). The AIA does not provide the
`
`Board, or the PTO, with the authority to determine the metes and bounds of tribal
`
`sovereign immunity.
`
`An agency’s “well-intentioned policy objectives” do not allow an agency to
`
`impose regulation or determine matters of law outside the agency’s expertise that
`
`may tangentially touch upon the agency’s mission. Mexichem Fluor, Inc. v. EPA,
`
`9
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`Proceeding No.: IPR2016-01127
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`866 F.3d 451, 460 (D.C. Cir. 2017). Similarly, Congress’ silence on an issue that the
`
`agency confronts does not enable the agency to “take matters into its own hands,”
`
`either by notice and comment or by adjudicatory process, even if the agency would
`
`act only to preserve the role it believes Congress enabled it to play in post-grant
`
`patent matters. See id.
`
`An agency also cannot “apply the wrong law to citizens who come before it.”
`
`Caring Hearts Personal Home Servs., Inc. v. Burwell, 824 F.3d 968, 970 (10th Cir.
`
`2016) (Gorsuch, J.). That maxim especially applies “when the right law would
`
`appear to support the citizen and not the agency.” Id.
`
`Similarly, an agency “has no special competence or role in interpreting a judicial
`
`decision.” State of New York v. Shalala, 119 F.3d 175, 180 (2d Cir. 1997). Instead,
`
`the Supreme Court has stated that no matter “how serious the problem an
`
`administrative agency seeks to address” the agency cannot exercise its authority “in
`
`a manner that is inconsistent with the administrative structure that Congress has
`
`enacted into law.” FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 125
`
`(2000).
`
`A. Congress Circumscribed The Board’s Powers.
`
`The administrative structure Congress enacted in the AIA allows the Board to
`
`determine questions of law inherent to reviewing adverse decisions of examiners,
`
`reviewing appeals of reexaminations, determining inventorship in derivation
`
`10
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`Proceeding No.: IPR2016-01127
`
`proceedings, and determining novelty and obviousness issues in IPRs and post-grant
`
`reviews. 35 U.S.C. § 6(b)(1)-(4). The Board has no Congressional imprimatur to
`
`determine whether tribal sovereign immunity applies in an IPR.
`
`Instead, the Board must “give effect to the unambiguously expressed intent of
`
`Congress.” Chevron, U.S.A., Inc. v. NRDC, 467 U.S. 837, 842-43 (1984). Absent
`
`Congressional abrogation of tribal sovereign immunity, the “unambiguously
`
`expressed intent of Congress” is that tribal sovereign immunity applies, regardless
`
`of how “unfair” such invocation of immunity is to the petitioners. Bay Mills, 134
`
`S.Ct. at 2031-32. Only Congress can abrogate sovereign immunity, and its decision
`
`to do so must be explicit. Id.
`
`In similar circumstances, the Board has correctly ruled, repeatedly, that it cannot
`
`force an arm of one of the 50 states to defend its patents in IPR. E.g., Covidien LP
`
`v. Univ. of Fla. Res. Found. Inc., Case IPR 2016-01274, Paper 21 (Jan. 25, 2017);
`
`see Neochord, Inc. v. Univ. of Md., Case IPR2016-00208, Paper 28 (May 23, 2017).
`
`Under that same logic, the Board must now find that tribal sovereign immunity,
`
`which protects tribes from being haled into court without their express permission
`
`or Congressional waiver of immunity just like state sovereign immunity protects the
`
`states, prevents the Board from determining the Petitioners’ challenges to the Tribe’s
`
`patents.
`
`
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`11
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`Proceeding No.: IPR2016-01127
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`B. Executive Branch Policy Supports The Tribe’s Sovereign Immunity.
`
`In addition, Executive Branch policy supports upholding tribal sovereign
`
`immunity. In his Executive Order 13175, President Clinton reiterated that the United
`
`States “supports tribal sovereignty and self-determination.” Executive Order 13175,
`
`65 Fed. Reg. 67,249 (Nov. 6, 2000), § 2(c). President Clinton recognized that “the
`
`United States has a unique legal relationship with Indian tribal governments” such
`
`that “the United States has recognized Indian tribes as domestic dependent nations
`
`under its protection” and that “Indian tribes exercise inherent sovereign powers over
`
`their members and territory.” Executive Order 13175, 65 Fed. Reg. 67,249 (Nov. 6,
`
`2000), §§ 2(a), 2(b). For those reasons, President Clinton stated that “[a]gencies
`
`shall respect Indian tribal self-government and sovereignty” and must employ “an
`
`accountable process to ensure meaningful and timely input by tribal officials in the
`
`development of regulatory policies that have tribal implications.” Id. §§ 3(a), 5(a).
`
`Both President Bush and President Obama followed the Clinton Executive Order.
`
`See, e.g., Tribal Government-to-Government Consultation Policy, 81 Fed. Reg.
`
`40,893, 40,894 (2016).
`
`Executive Order 13175 remains in effect; therefore, it has been accepted by all
`
`three presidents to succeed President Clinton. As an agency within the Department
`
`of Commerce, the PTO is within the executive branch and President Trump has not
`
`withdrawn the directive that agencies must “respect Indian tribal self-government
`
`12
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`Proceeding No.: IPR2016-01127
`
`and sovereignty.” 65 Fed. Reg. 67,249 at § 3(a). The Board should not doubt that
`
`holding the Tribe lacks sovereign immunity to this proceeding would constitute a
`
`“regulatory policy” containing “tribal implications.”
`
`Ultimately, Article III of the Constitution established a judicial department whose
`
`“province and duty” is “to say what the law is.” Marbury v. Madison, 5 U.S. (1
`
`Cranch) 137, 177 (1803). This aspect of the Constitution’s design arose in direct
`
`response to “the abuses of legislative interference with the courts at the behest of
`
`private interests and factions,” which instilled a “sense of a sharp necessity to
`
`separate the legislative from the judicial power” in the minds of the Framers. Plaut
`
`v. Spendthrift Farm, Inc., 514 U.S. 211, 220-21 (1995). To that end, the legislative
`
`branch could enact the rules that define the rights and duties of citizens, but only the
`
`judicial branch could interpret those laws. Id.
`
`Here, the Board is an arm of the executive branch and a creation of Congress. Its
`
`purview does not include policy decisions regarding what entities can claim
`
`sovereign rights over their intellectual property in this forum. Nor does it have
`
`discretion to effectively overrule the Supreme Court and strip an Indian tribe of
`
`sovereign immunity in the absence of waiver by the Tribe or abrogation by Congress.
`
`For these reasons, the Board should grant the Tribe’s motion to dismiss.
`
`CONCLUSION
`
`There is only one issue presented by the Tribe’s motion to dismiss, whether the
`
`13
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`Proceeding No.: IPR2016-01127
`
`St. Regis Mohawk Tribe has sovereign immunity. That it does is undisputed. Once
`
`that undisputed fact is accepted, the only possible result the Board can reach is
`
`dismissing this proceeding. The complaints of the petitioners, its amici, or other
`
`commentators are irrelevant to the Board. If Congress wants to take the
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`discriminatory action to strip the St. Regis Mohawk Tribe of the same rights enjoyed
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`by state universities, it can vote to do so and face both the voters and future legal
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`challenges. The Board has one conclusion it can reach if it follows the law. Dismissal
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`is required.
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`Respectfully submitted,
`
`
`/s/Luis M. Ortiz
`Luis M. Ortiz
`Registration No. 36,230
`Kermit D. Lopez
`Registration No. 41,953
`ORTIZ & LOPEZ, PLLC
`P.O. Box 4484
`Albuquerque, NM 87196-4484
`Tel. 505-314-1310
`Fax: 505-314-1307
`Email: lortiz@olpatentlaw.com
`klopez@olpatentlaw.com
`
`
`
`
`
`
`
`
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`14
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`Proceeding No.: IPR2016-01127
`
`CERTIFICATE OF SERVICE
`
` Pursuant to 37 CFR 42.6(3)(4) and 42.205(b), the undersigned certifies that on
`
`November 30, 2017, a complete entire copy of the Amicus Curiae Brief of Luis Ortiz
`
`and Kermit Lopez In Support of Patent Owner’s Motion to Dismiss Based on Tribal
`
`Sovereign Immunity was provided, via electronic service, to the persons named
`
`below at their address of record, viz:
`
`Attorneys for Mylan Pharmaceuticals, Inc.
`
`
`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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`15
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`

`Proceeding No.: IPR2016-01127
`
`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 Akorn 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
`
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`16
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`

`Proceeding No.: IPR2016-01127
`
`Attorneys for Teva Pharmaceuticals
`
`
`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 Saint Regis Mohawk Tribe
`
`
`Alfonso G. Chan
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
`cchan@shorechan.com
`
`Attorneys for Allergan, Inc.
`
`
`Dorothy P. Whelan
`Michael Kane
`Susan Morrison Colletti
`Robert M. Oakes
`Jonathan Singer
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`
`
`
`
`
`
`/s/Kermit D. Lopez
`Kermit D. Lopez
`
`17
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`