`
`
`
`
`
`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.,
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE, Patent Owner,
`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
`––––––––––––––––––
`
`BRIEF OF BSA | THE SOFTWARE ALLIANCE AS AMICUS2
`REGARDING APPLICABILITY OF TRIBAL SOVEREIGN IMMUNITY
`IN IPR PROCEEDINGS
`
`
`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 been joined with the captioned proceedings.
`2 See IPR2016-01127, Paper No. 96, at 3, 5 (Nov. 3, 2017) (authorizing amicus
`briefs “related to the Tribe’s motion to terminate” of no more than 15 pages by
`December 1, 2017 because “we are persuaded that briefing from interested amici is
`now warranted in these proceedings”).
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`INTEREST OF THE AMICUS ......................................................................... 1
`I.
`INTRODUCTION AND SUMMARY ............................................................ 2
`II.
`III. TRIBES ARE SUBJECT TO THE AMERICA INVENTS ACT. .................. 3
`A. Other Federal Agencies Operating Under Similar Statutory Schemes
`Have Jurisdiction over Tribes. .................................................................... 5
`B. PTAB Agency Action in IPRs Implicates None of the Exceptions to the
`Tuscarora Rule. .......................................................................................... 7
`IV. THE PTO CAN REVIEW TRIBE-OWNED PATENTS IN IPR
`PROCEEDINGS. ............................................................................................. 9
`PTAB STATE IMMUNITY RULINGS ARE NOT CONTROLLING. ....... 13
`V.
`VI. BY PARTICIPATING IN DISTRICT COURT LITIGATION, A TRIBE
`WAIVES ANY CONCEIVABLE IMMUNITY. .......................................... 14
`VII. CONCLUSION .............................................................................................. 15
`
`
`
`
`
`
`
`
`
`i
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`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allergan, Inc. v. Teva Pharm. USA, Inc.,
`2017 WL 4619790 (E.D. Tex. Oct. 16, 2017) (Bryson, J., by
`designation) ................................................................................................... 14, 15
`Cardinal Chem. Co. v. Morton Int’l, Inc.,
`508 U.S. 83 (1993) .............................................................................................. 10
`Cherokee Nation v. State of Georgia,
`30 U.S. 1 (1831) (Marshall, C.J.) ..................................................................... 3, 4
`Commil USA, LLC v. Cisco Sys., Inc.,
`135 S. Ct. 1920 (2015) ........................................................................................ 10
`Covidien LP v. Univ. of Fla. Res. Foundation Inc.,
`IPR2016-01274, Paper No. 21 (PTAB Jan. 25, 2017) ....................................... 13
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) .................................................................................. 10, 12
`Donovan v. Coeur d’Alene Tribal Farm,
`751 F.2d 1113 (9th Cir. 1985) .......................................................................... 7, 8
`Duro v. Reina,
`495 U.S. 676 (1990) .............................................................................................. 6
`eBay Inc. v. MercExchange, LLC,
`547 U.S. 388 (2006) (Kennedy, J., concurring) ................................................. 10
`EEOC v. Fond du Lac Heavy Equip. & Constr. Co.,
`986 F.2d 246 (8th Cir. 1993) ................................................................................ 6
`Fed. Maritime Comm’n v. S.C. State Ports Auth.,
`535 U.S. 743 (2002) ............................................................................................ 11
`Fed. Power Comm’n v. Tuscarora Indian Nation,
`362 U.S. 99 (1960) ...................................................................................... 4, 7, 14
`
`
`
`
`ii
`
`

`

`
`
`Fla. Paraplegic Ass’n v. Miccosukee Tribe of Indians,
`166 F.3d 1126 (11th Cir. 1999) ............................................................................ 9
`Menominee Tribal Enters. v. Solis,
`601 F.3d 669 (7th Cir. 2010) ................................................................................ 5
`Mescalero Apache Tribe v. Jones,
`411 U.S. 145 (1973) .............................................................................................. 4
`Navajo Tribe v. NLRB,
`288 F.2d 162 (D.C. Cir. 1961) .............................................................................. 6
`NeoChord Inc. v. Univ. of Md.,
`IPR2016-00208, Paper No. 28 (PTAB May 23, 2017) ...................................... 13
`NLRB v. Fainblatt,
`306 U.S. 601 (1939) .............................................................................................. 6
`NLRB v. Little River Band of Ottawa Indians Tribal Gov’t,
`788 F.3d 537 (6th Cir. 2015) ............................................................................ 5, 6
`Plains Commerce Bank v. Long Family Land,
`554 U.S. 316 (2008) ............................................................................................ 14
`Reactive Surfaces Ltd., LLP v. Toyota Motor Corp.,
`IPR2016-01914, Paper No. 36 (PTAB July 13, 2017) ....................................... 13
`Reich v. Mashantucket Sand & Gravel,
`95 F.3d 174 (2d Cir. 1996) ................................................................................... 5
`San Manuel Indian Bingo & Casino v. NLRB,
`475 F.3d 1306 (D.C. Cir. 2007) ........................................................................ 4, 8
`Santa Clara Pueblo v. Martinez,
`436 U.S. 134 (1980) .............................................................................................. 3
`Smart v. State Farm Ins. Co.,
`868 F.2d 929 (7th Cir. 1989) ................................................................................ 5
`Ultratec, Inc. v. Captioncall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) .......................................................................... 11
`
`
`
`
`iii
`
`

`

`
`
`United States v. Am. Bell Tel. Co.,
`128 U.S. 315 (1888) ............................................................................................ 10
`United States v. Farris,
`624 F.2d 890 (9th Cir. 1980) ................................................................................ 7
`Vas-Cath, Inc. v. Curators of Univ. of Mo.,
`473 F.3d 1376 (Fed. Cir. 2007) .................................................................... 14, 15
`Washington v. Confederated Tribes,
`447 U.S. 134 (1980) .............................................................................................. 4
`Statutes
`5 U.S.C. § 8470 ........................................................................................................ 12
`35 U.S.C. § 102 ........................................................................................................ 11
`35 U.S.C. § 103 ........................................................................................................ 11
`35 U.S.C. §§ 311–17 .......................................................................................... 10, 11
`35 U.S.C. § 311(b) ................................................................................................... 10
`35 U.S.C. § 314(a) ................................................................................................... 11
`35 U.S.C. § 317(a) ................................................................................................... 11
`38 U.S.C. § 5302 ...................................................................................................... 12
`42 U.S.C. § 404 ........................................................................................................ 12
`47 U.S.C. § 312 ........................................................................................................ 12
`49 U.S.C. § 4709 ...................................................................................................... 12
`49 U.S.C. § 13905(d)(2) .......................................................................................... 12
`49 U.S.C. § 41110 .................................................................................................... 12
`LEAHY-SMITH AMERICA INVENTS ACT, 125 Stat. 284-341 (2012) ...................passim
`
`
`
`
`iv
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`

`

`
`
`Other Authorities
`H.R. Rep. No. 98, 112th Cong., 1st Sess. Pt. 1 (2011) ...................................... 10, 12
`U.S. CONST. art. I, § 8, cl. 8 ................................................................................... 3, 8
`
`
`
`
`
`v
`
`

`

`
`
`I.
`
`INTEREST OF THE AMICUS
`BSA | The Software Alliance is an association of the world’s leading
`
`software and hardware technology companies. On behalf of its members, BSA
`
`promotes policies that foster innovation, growth, and a competitive marketplace for
`
`commercial software and related technologies. Because patent policy is vitally
`
`important to promoting the innovation that has kept the United States at the
`
`forefront of software and hardware development, BSA members have a strong
`
`stake in the proper functioning of the U.S. patent system.
`
`BSA members are among the nation’s leading technology companies,
`
`producing much of the hardware and software that power computer and tele-
`
`communication networks. The complexity and commercial success of their
`
`products make these companies frequent targets of patent infringement claims.3
`
`At the same time, by virtue of their inventions, BSA members hold tens of
`
`thousands of patents. Because they are both innovators as well as substantial
`
`patent holders, BSA members have a particularly acute interest in properly
`
`calibrated mechanisms for ensuring patent quality.
`
`
`3 BSA members have been sued for infringement on patents transferred to tribes,
`including patents transferred to the Saint Regis Mohawk Tribe, and therefore are
`adverse to the Tribe in pending litigation.
`
`
`
`
`

`

`
`
`II.
`
`
`INTRODUCTION AND SUMMARY
`That tribes have a form of sovereign status and a form of sovereign
`
`immunity is well settled. Equally well settled is the principle that tribal
`
`sovereignty and immunity is not without bounds and, in particular, that they are
`
`necessarily subordinate to national interests. Such interests are present where
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`Congress determines that an activity or area of commerce should be governed by a
`
`statute of general applicability—where Congress makes that choice, tribal
`
`sovereignty and immunity, creatures of judge-made rather than constitutional law,
`
`must give way.
`
`
`
`The Patent Act and the America Invents Act (“AIA”) reflect just such a
`
`Congressional choice. The statute applies on its face to all patent owners, and
`
`includes no exception for tribes. Nor do any of the recognized exceptions to the
`
`principle that such statutes presumptively govern tribes to the same extent as all
`
`others apply here. Nothing about patents or patent law has any connection to the
`
`core concerns of tribal immunity—preserving tribal sovereignty in matters of self-
`
`governance and internal tribal affairs—and no legitimate tribal interests are
`
`implicated or impaired by applying the generally-applicable provisions of the AIA
`
`to a situation in which, by mere happenstance (or, in this case, calculated tactical
`
`ploy) patent ownership is assigned to a tribe.
`
`2
`
`
`

`

`
`
`
`
`That is particularly true here because the inter partes review (“IPR”)
`
`process is just that—a process designed to allow the federal agency charged with
`
`responsibility for patent issuance to fulfill its statutory mandate by correcting its
`
`own prior mistakes. Although this particular part of the U.S. Patent and
`
`Trademark Office’s (“PTO”) process of reviewing patents and applications for
`
`patents is initiated by a third party, it is nonetheless agency review and wholly
`
`unlike the kinds of proceedings to which sovereign immunity, even when not
`
`overridden by paramount federal interests, applies. The IPR process subjects
`
`patent owners, tribes and non-tribes alike, to no claims for damages, no
`
`injunctions, and no other form of liability to another party. Rather, the IPR process
`
`serves to advance the important public policy—rooted in the Constitution’s Patent
`
`and Copyright Clause—of ensuring that the American public and economy are not
`
`burdened by unwarranted monopolies.
`
`III. TRIBES ARE SUBJECT TO THE AMERICA INVENTS ACT.
`It has long been recognized that tribes, while “under the sovereignty and
`
`dominion of the United States,” Cherokee Nation v. State of Ga., 30 U.S. 1, 17
`
`(1831) (Marshall, C.J.), nevertheless possess sovereign authority in specific
`
`spheres, in particular, with respect to matters of tribal self-government and other
`
`matters internal to the tribe, Santa Clara Pueblo v. Martinez, 436 U.S. 134, 153
`
`(1980). This sovereign authority, and the immunity associated with it, however,
`
`3
`
`
`

`

`
`
`must yield to the overriding “interests of the National government.” Washington v.
`
`Confederated Tribes, 447 U.S. 134, 153 (1980). Those federal interests can be
`
`manifested in a variety of ways, and one such way is by the enactment of statutes
`
`of general applicability that apply to all persons subject to the “sovereignty and
`
`dominion of the United States.” Cherokee Nation, 30 U.S. at 17. Where such a
`
`statute is at issue, and the conduct relates to commercial activity that is not purely
`
`intramural, tribal sovereignty and immunity are at their narrowest. San Manuel
`
`Indian Bingo & Casino v. NLRB, 475 F.3d 1306, 1312–13 (D.C. Cir. 2007) (citing
`
`Mescalero Apache Tribe v. Jones, 411 U.S. 145, 148–49 (1973)).
`
`The Patent Act, including the AIA, is such a statute of general applicability
`
`affecting general commercial activity non-tribe members. It is a statute that
`
`applies on its face to all patent owners, including tribes. See Fed. Power Comm’n
`
`v. Tuscarora Indian Nation, 362 U.S. 99, 116 (1960). The Supreme Court in
`
`Tuscarora articulated the governing principle “now well settled by many decisions
`
`of this Court that a general statute in terms applying to all persons includes Indians
`
`and their property interests.” Id. This governing principle applies here and
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`dictates that the Patent Trial and Appeal Board (“PTAB” or the “Board”) should
`
`conclude that patents owned by tribes, including the Saint Regis Mohawk Tribe in
`
`this proceeding, are subject to the AIA and its inter partes review (“IPR”) process
`
`to the same extent and on the same terms as patents owned by others.
`
`4
`
`
`

`

`
`
`A. Other Federal Agencies Operating Under Similar Statutory Schemes
`Have Jurisdiction over Tribes.
`Courts have consistently held that federal agencies have jurisdiction to apply
`
`statutes of general applicability to tribes in cases involving statutory regimes and
`
`factual circumstances comparable to those presented here. For example, the
`
`National Labor Relations Board has applied the National Labor Relations Act
`
`(“NLRA”) to a tribe’s operation of a casino. That exercise of agency authority was
`
`upheld, because application of the NLRA, a statute of general applicability, “does
`
`not undermine the [tribe’s] right of self-governance in purely intramural matters.”
`
`NLRB v. Little River Band of Ottawa Indians Tribal Gov’t, 788 F.3d 537, 555–56
`
`(6th Cir. 2015).
`
`This recent decision reflects the settled principle that aspects of tribal
`
`sovereignty can be superseded by comprehensive federal regulatory schemes even
`
`when the statutes are silent as to tribes. See, e.g., Menominee Tribal Enters. v.
`
`Solis, 601 F.3d 669, 674 (7th Cir. 2010) (Occupational Safety and Health Act
`
`(“OSHA”) applied to tribe’s operation of a sawmill and related commercial
`
`activities); Reich v. Mashantucket Sand & Gravel, 95 F.3d 174, 177–82 (2d Cir.
`
`1996) (OSHA applied to tribe’s construction business operated only within
`
`confines of reservation); Smart v. State Farm Ins. Co., 868 F.2d 929, 932–36 (7th
`
`Cir. 1989) (Employee Retirement Income Security Act applied to tribal employee
`
`benefits plan because statute did not affect tribe’s ability to govern itself in
`5
`
`
`

`

`
`
`intramural matters); Navajo Tribe v. NLRB, 288 F.2d 162, 165 (D.C. Cir. 1961)
`
`(NLRA applied to employers located on reservation lands). Courts also have held
`
`that when a tribal activity affects commerce within the scope of Congress’s
`
`authority under the Commerce Clause, it falls within agencies’ statutory
`
`jurisdiction. See NLRB v. Fainblatt, 306 U.S. 601, 607–08 (1939) (NLRA applied
`
`to tribe’s manufacturing business because it regularly affected interstate
`
`commerce).
`
`These cases recognize that although federal statutes of general applicability
`
`may not apply where a tribe acts purely in its sovereign capacity, “[t]he tribes’
`
`retained sovereignty reaches only that power ‘needed to control . . . internal
`
`relations[,] . . . preserve their own unique customs and social order[, and] . . .
`
`prescribe and enforce rules of conduct for [their] own members.’” Little River
`
`Band, 788 F.3d at 550 (quoting Duro v. Reina, 495 U.S. 676, 685–86 (1990)).
`
`Tribal immunity extends no farther than to such “purely intramural matters.” Id. at
`
`555; cf. EEOC v. Fond du Lac Heavy Equip. & Constr. Co., 986 F.2d 246, 249
`
`(8th Cir. 1993) (although Age Discrimination in Employment Act is generally
`
`applicable to tribes, it does not apply to a member of a tribe, the tribe as employer,
`
`and reservation employment because such a “dispute involves a strictly internal
`
`matter” and application would affect “tribeʼs specific right of self-government”).
`
`6
`
`
`

`

`
`
`B. PTAB Agency Action in IPRs Implicates None of the Exceptions to
`the Tuscarora Rule.
`Like other statutes of general applicability, the Patent Act and the AIA
`
`implement a broad federal regulatory regime. There is no basis for exempting
`
`tribes from compliance with this regulatory scheme. The Patent Act does not
`
`expressly exempt tribes.4 Nor does Board action pursuant to the AIA fall within
`
`the ambit of any Tuscarora exception that would call for immunity. There has
`
`been no showing that “(1) the law touches ‘exclusive rights of self-governance in
`
`purely intramural matters’; (2) the application of the law to the tribe would
`
`‘abrogate rights guaranteed by Indian treaties’; or (3) there is proof ‘by legislative
`
`history or some other means that Congress intended [the law] not to apply to
`
`Indians on their reservations . . . .’” Donovan v. Coeur d’Alene Tribal Farm, 751
`
`F.2d 1113, 1116 (9th Cir. 1985) (quoting U.S. v. Farris, 624 F.2d 890, 893–94 (9th
`
`Cir. 1980).
`
`To the contrary, application of such a general regulatory regime to patents
`
`that happen to be owned by a tribe has nothing to do with tribal self-governance—
`
`the existence and enforcement of patent rights are matters completely independent
`
`of the internal affairs of a tribe and the relationship between a tribe and its
`
`
`4 Contrast other statutes in which tribes are expressly excluded, e.g., from
`definitions of “employer,” in Title VII of the Civil Rights Act of 1964, 42 U.S.C.
`2000e(b)(1), and Title I of the Americans with Disabilities Act of 1990, 42 U.S.C.
`12111(5)(B)(i).
`
`7
`
`
`

`

`
`
`members. Patent rights, and the law that governs them, are manifestly not an area
`
`that intrudes upon or implicates a tribe’s internal affairs or right of self-
`
`government. There is no tribal analog to patent rights, nor could there be
`
`consistent with the Constitution’s Patent and Copyright Clause, U.S. CONST. art. I,
`
`§ 8, cl. 8, which vests exclusive authority for such matters in the national
`
`government. Nor does application of the AIA regime abrogate or impair any rights
`
`granted under treaties. And nothing in the legislative history of the Patent Act or
`
`the AIA in any way suggests that Congress intended these laws not to apply to
`
`tribes like the Saint Regis Mohawk Tribe.
`
`The Patent Act and the IPR process established in the AIA affect a tribe’s
`
`ability to enforce government-granted rights—rights held by tribes on the same
`
`terms as all others who hold them. Nothing about the AIA and its IPR process
`
`even arguably implicates a tribe’s “exclusive rights of self-governance in purely
`
`intramural matters.” Coeur D’Alene, 751 F.2d at 1116. Even if a tribe’s effort to
`
`enforce patent rights could somehow be characterized as acting in a sovereign
`
`capacity—and it cannot—“when a tribal government goes beyond matters of
`
`internal self-governance and enters into an off-reservation business transaction
`
`with non-Indians, its claim of sovereignty is at its weakest.” San Manuel, 475 F.3d
`
`at 1312–13. Patent rights simply have nothing to do with “matters of internal self-
`
`governance” and manifestly affect off-reservation activities of non-Indians. See id.
`
`8
`
`
`

`

`
`
`IV. THE PTO CAN REVIEW TRIBE-OWNED PATENTS IN IPR
`PROCEEDINGS.
`IPRs under the AIA are fundamentally federal government action directed to
`
`government-issued rights. The Patent and Trademark Office is authorized to
`
`investigate and re-assess the validity of the patent rights it is charged to administer,
`
`either upon its own initiative or based upon information supplied by a third party.
`
`Action by the PTO, including through the PTAB in an IPR, implicates none
`
`of the concerns driving the proper application of tribal sovereign immunity. The
`
`IPR process exists to allow a federal agency to reconsider a prior decision. It
`
`subjects tribes to no private claims for relief, exposes them to no potential
`
`monetary liability, and will not result in any injunction or other order constraining
`
`their sovereign activities. The AIA created no private right of action that the PTO
`
`adjudicates. Cf. Fla. Paraplegic Ass’n v. Miccosukee Tribe of Indians, 166 F.3d
`
`1126, 1128–30 (11th Cir. 1999) (holding Title III of the Americans with
`
`Disabilities Act applied to tribe’s restaurant and gaming facility, but tribe was not
`
`amenable to private suit). The AIA, solely and in its entirety, established a new
`
`chapter in PTO procedures directed to review of earlier patent grants. No aspect of
`
`a tribe’s status or ability to act as a sovereign is affected in any way by subjecting
`
`patents it may own to the same PTO proceedings to which other patents are
`
`subject, proceedings directed solely to whether a patent was properly issued by the
`
`PTO in the first instance.
`
`9
`
`
`

`

`
`
`The PTO’s statutory mandate reflects its “obligation to protect the public”
`
`from improperly issued patents, U.S. v. Am. Bell Tel. Co., 128 U.S. 315, 367
`
`(1888), which impose high social costs, see Commil USA, LLC v. Cisco Sys., Inc.,
`
`135 S. Ct. 1920, 1930 (2015) (meritless patents “can impose a ‘harmful tax on
`
`innovation’”) (citation omitted); eBay Inc. v. MercExchange, LLC, 547 U.S. 388,
`
`396 (2006) (Kennedy, J., concurring); Cardinal Chem. Co. v. Morton Int’l, Inc.,
`
`508 U.S. 83, 100–01 (1993). Congress has chosen to authorize post-grant review
`
`of patents, no matter the owner, through the IPR process. IPRs serve the same
`
`important public purpose as initial examination, namely the protection of the
`
`public from private monopolies that exceed the bounds authorized by Congress.
`
`See H.R. Rep. No. 98, 112th Cong., 1st Sess. Pt. 1, at 39–40 (2011) (“House
`
`Report”).
`
`Congress through the AIA has given the PTAB broad authority to determine
`
`the patentability of issued patents without regard to participation of patent owners
`
`or third parties. See 35 U.S.C. §§ 311–17. Petitioners in IPRs are limited to
`
`advancing evidence and arguments regarding the patentability of the patent claim
`
`at issue. See 35 U.S.C. § 311(b). A petitioner does not need to have a concrete
`
`dispute with the patent holder and in fact “may lack constitutional standing.”
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). Consistent
`
`with its mandate, the PTAB can pursue an IPR without the petitioner, who “need
`
`10
`
`
`

`

`
`
`not remain in the proceeding; rather, [the PTO] may continue to conduct an inter
`
`partes review even after the adverse party has settled.” Id. at 2144; see 35 U.S.C.
`
`§ 317(a). A patentability determination in this posture and on this record is an
`
`extension of the initial agency examination. Indeed, party-specific issues are not
`
`relevant to Board’s determination. See 35 U.S.C. § 314(a) (authorizing institution
`
`only upon a determination “that the information presented in the petition filed
`
`under section 311 [i.e., “only on a ground that could be raised under section 102 or
`
`103 and only on the basis of prior art consisting of patents or printed publications”]
`
`. . . shows that there is a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the [challenged] claims . . . .”). “Very seldom do IPR
`
`proceedings have the hallmarks of what is typically thought of as a trial.” See
`
`Ultratec, Inc. v. Captioncall, LLC, 872 F.3d 1267, 1270 n.2 (Fed. Cir. 2017)
`
`(proceedings are limited in scope and in contrast to district court litigation).
`
`Indeed, the PTO need not institute a review in response to every, or even any,
`
`petition. Cf. Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 764
`
`(2002) (noting, in a case involving constitutionally-based state immunity, “[T]he
`
`FMC does not even have the discretion to refuse to adjudicate complaints brought
`
`by private parties.”).
`
`IPRs allow the PTO to make use of third parties’ knowledge and to correct
`
`prior mistakes by canceling claims that never should have been granted. When the
`
`11
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`
`

`

`
`
`PTO does so, no private party receives any benefit that it would not have received
`
`if the examiner had denied the patent application in the first instance, as should
`
`have been done, or if the PTO Director had reexamined and cancelled the claims
`
`sua sponte. Agencies’ use of such administrative processes to correct their own
`
`mistakes is commonplace.5
`
`By enabling the PTO to take “a second look at an earlier administrative grant
`
`of a patent” based on new information or arguments, Cuozzo, 136 S. Ct. at 2144,
`
`IPRs help to ensure that unpatentable inventions do not continue to receive
`
`unwarranted monopoly protection, thereby addressing what Congress determined
`
`was a substantial problem of erroneous grants under the preexisting system. House
`
`Report at 39–40. In enacting the AIA, Congress established a process by which
`
`any party can petition the PTO to reconsider its decision to grant a specific patent,
`
`including provisions covering how the PTO should determine whether to review a
`
`patent and how to go about that review.
`
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`5 See, e.g., 5 U.S.C. § 8470 (authorizing agency to recoup erroneously issued
`federal employee benefits); 38 U.S.C. § 5302 (authorizing agency to recoup
`erroneously issued veterans’ benefits); 42 U.S.C. § 404 (authorizing agency to
`recoup erroneously issued social security benefits); 47 U.S.C. § 312 (authorizing
`agency to revoke radio station licenses); 49 U.S.C. § 13905(d)(2) (authorizing
`agency to revoke erroneously issued federal motor carrier registrations); 49 U.S.C.
`§ 41110 (authorizing agency to revoke erroneously issued air carrier certificates);
`49 U.S.C. § 4709 (authorizing agency to revoke erroneously issued airman
`certificates).
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`12
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`Indeed, IPRs fall squarely into the continuum of the PTO’s consideration of
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`the patentability question by way of original examination and re-examination. The
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`Patent Act does not provide different patentability tests for different classes of
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`patent applicants. Likewise, the Patent Act does not define different standards for
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`assessing patentability over prior art patents and publications based on how those
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`patents or publications come to the PTO’s attention. Instead, Congress directed
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`that all patents, regardless of owner, issued by the PTO (after a specific date) are
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`potentially subject to subsequent review by the PTO. Tribes have no claim to
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`immunity from this generally-applicable process.
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`V.
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`PTAB STATE IMMUNITY RULINGS ARE NOT CONTROLLING.
`Prior cases addressing state immunity do not change the conclusion that
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`tribes are subject to the AIA and that the PTO therefore is authorized to review
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`tribe-owned patents in the AIA’s IPR process. See generally Reactive Surfaces
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`Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper No. 36 (PTAB July 13,
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`2017); NeoChord Inc. v. Univ. of Md., IPR2016-00208, Paper No. 28 (PTAB May
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`23, 2017); Covidien LP v. Univ. of Fla. Res. Foundation Inc., IPR2016-01274,
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`Paper No. 21 (PTAB Jan. 25, 2017).
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`Unlike tribes, states enjoy constitutional immunity. Whatever may be said
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`about state sovereign immunity in an IPR, tribal immunity is a judge-made
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`doctrine that Congress is free to abrogate without concern with constitutional
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`limits, and it can and does do so by enacting statutes of general applicability. See
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`Tuscarora, 362 U.S. at 556; Plains Commerce Bank v. Long Family Land, 554
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`U.S. 316, 337 (2008). As explained above, Congress did just that in the case of the
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`AIA.
`
`VI. BY PARTICIPATING IN DISTRICT COURT LITIGATION, A
`TRIBE WAIVES ANY CONCEIVABLE IMMUNITY.
`Although the Saint Regis Mohawk Tribe did not initiate the pending
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`infringement litigation concerning the patents at issue in this IPR, it has joined that
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`litigation and as such is pursuing infringement claims.6 The Tribe cannot have it
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`both ways. By enforcing patent rights in federal district court, a tribe necessarily
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`accepts the legal framework governing patents—including all defenses and related
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`procedures that might result in the cancellation of patent rights.
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`Tribal efforts to restrict non-member activities using the federal patent right
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`subjects the tribe to the same laws as any other entity attempting to impose such
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`restrictions. Although a waiver of tribal immunity—if any exists—must be clear
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`and unambiguous, purposely seeking recovery of damages or an injunction on a
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`patent under the Patent Act in federal district court manifests just such a waiver.
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`See Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1383–84 (Fed. Cir.
`
`2007) (“The University’s recourse to the PTO tribunal for adjudication of its claim
`
`
`6 Allergan, Inc. v. Teva Pharm. USA, Inc., 2017 WL 4619790 (E.D. Tex. Oct. 16,
`2017) (Bryson, J., by designation).
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`14
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`of prior inventorship and thus of patent ownership negates the assertion of
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`immunity to bar appeal of that adjudication. Principles of fairness and consistency
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`prohibit selective assertion of immunity to avoid appeal by the loser after the
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`University won the first round.”).7
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`VII. CONCLUSION
`For the foregoing reasons, BSA respectfully requests that the PTAB
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`determine that patents owned by tribes are subject to the IPR process established in
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`the AIA to the same extent as patents owned by other parties.
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`
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`Dated: December 1, 2017
`
`Respectfully submitted,
` /s/ Aaron Cooper
`Aaron Cooper
`BSA | The Software Alliance
`20 F Street, NW, Suite 800
`Washington, DC 20001
`Tel. (202) 530-5169
`aaronc@bsa.org
`
`Counsel for Amicus
`BSA | The Software Alliance
`
`
`7 Those principles of fairness apply with special force where purported tribal
`immunity is, in effect, being leased out as part of a litigation strategy. “Sovereign
`immunity should not be treated as a monetizable commodity that can be purchased
`by private entities as part of a scheme to evade their legal responsibilities.”
`Allergan, 2017 WL 4619790, at *3.
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`15
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 1st day of December, 2017, a copy of the
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`foregoing Brief Of BSA | The Software Alliance As Amicus Regarding
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`Applicability Of Tribal Sovereign Immunity In IPR Proceedings, has been
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`served by electronic mail on the following counsel of reco