Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 146
`Entered: December 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)1
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`ORDER
`Denying Request for Authorization to File Motion to Stay
`37 C.F.R § 42.5
`
`
`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.
`
`
`Tel: 571-272-7822
`
`
`Paper 146
`Entered: December 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS
`USA, INC., and AKORN INC.
`Petitioners,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2016-01127 (8,685,930 B2)
`Case IPR2016-01128 (8,629,111 B2)
`Case IPR2016-01129 (8,642,556 B2)
`Case IPR2016-01130 (8,633,162 B2)
`Case IPR2016-01131 (8,648,048 B2)
`Case IPR2016-01132 (9,248,191 B2)1
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`ORDER
`Denying Request for Authorization to File Motion to Stay
`37 C.F.R § 42.5
`
`
`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.
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`A conference call was held on December 13, 2018, among counsel for
`Petitioners, counsel for the Saint Regis Mohawk Tribe (“the Tribe”), counsel
`for Allergan, and Judges Paulraj, Snedden, and Hulse. A court reporter was
`also present.2
`The Tribe requested the conference call to seek authorization to file a
`motion to stay these proceedings pending its forthcoming petition for a writ
`of certiorari from the Federal Circuit’s decision on whether tribal immunity
`applies to these inter partes review proceedings (the “tribal immunity
`appeal”). Additionally, the Tribe requested the conference call to discuss
`whether to stay these proceedings until the mandate issues in the appeal
`from the parallel district court proceeding, Allergan, Inc. v. Teva
`Pharmaceuticals USA, Inc., No. 2018-1130 (Fed. Cir. Nov. 13, 2018) (“the
`Allergan appeal”), where the Federal Circuit affirmed the district court’s
`decision invalidating a subset of claims at issue in these proceedings.
`The Tribe made a similar request for a stay in another set of
`proceedings before the Board in Microsoft Corp. v. Saint Regis Mohawk
`Tribe, Cases IPR2018-01594, -01599, -01600, -01601, -01603, -01604, -
`01605, -01606, -01607 (collectively, “the Microsoft proceedings”). In those
`proceedings, the panel authorized briefing on the Tribe’s motion to extend
`the deadlines for the preliminary responses until the Supreme Court decides
`the Tribe’s forthcoming petition for a writ of certiorari. Briefing was
`complete at the time of the conference call in these proceedings. Counsel
`
`
`2 Petitioners indicated they would file a transcript when it becomes
`available. A brief summary of the call is provided in this order, as further
`details can be ascertained from the transcript.
`
` 2
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`for the Tribe stated that the arguments it would present in favor of a stay in
`these proceedings would largely be the same as those presented in the
`Microsoft proceedings. The only additional argument the Tribe made during
`the conference call relates to the Board’s Standard Operating Procedure 9
`(“SOP 9”), which governs procedures on remand from the Federal Circuit.
`The Tribe noted that SOP 9 states that the Board’s primary consideration in
`determining whether to stay the remand proceedings is whether the Supreme
`Court’s judgment would impact the Board’s decision on remand. Because
`the Supreme Court’s determination of whether tribal immunity applies to
`inter partes review directly impacts our decision, the Tribe argued we
`should stay these proceedings.
`In response, Petitioners stated they oppose an indefinite stay pending
`the Supreme Court’s decision on the Tribe’s petition for a writ of certiorari
`in the tribal immunity appeal. Petitioners stated it is significant that the
`Federal Circuit has already considered this issue and denied the Tribe’s
`motion to stay the mandate in that appeal. Petitioners also asserted that
`SOP 9 does not apply here, as these proceedings are not “on remand,” but
`rather the Federal Circuit affirmed the Board’s decision denying the Tribe’s
`motion to terminate based on tribal immunity. Petitioners noted that the
`Tribe may go to the Supreme Court to seek relief, as the Supreme Court is in
`a better position to decide that issue. On the other hand, Petitioners stated
`that they do not oppose a brief stay with a defined end point to allow the
`Federal Circuit time to enter the mandate in the Allergan appeal. Petitioners
`acknowledged, however, that the mandate is not necessary for the Board to
`resolve any issue in these proceedings.
`
` 3
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`After the conference call, the panel in the Microsoft proceedings
`denied the Tribe’s motion to stay the proceedings and extend the deadlines
`for filing the preliminary responses. Case IPR2018-01594, Paper 14. The
`panel stated the Tribe had not shown good cause to do so, especially given
`the Federal Circuit’s rejection of the Tribe’s motion to stay the mandate in
`the tribal immunity appeal. Id. at 5.
`Having considered the parties’ respective arguments here and taken
`under advisement the arguments and decision in the Microsoft proceedings,
`we deny the Tribe’s request for authorization to file a motion to stay given
`the circumstances of these proceedings. Petitioner Mylan Pharmaceuticals,
`Inc. filed its Petition on June 3, 2016. Paper 3.3 We instituted trial in these
`proceedings on December 8, 2016. Paper 8. Less than one week before the
`oral hearing was scheduled to take place, the Tribe entered its appearance as
`the alleged new patent owner and asserted that tribal immunity prohibits
`these inter partes review proceedings from going forward. Paper 63. We
`denied the Tribe’s motion to terminate on February 23, 2018 (Paper 130),
`and, after staying the proceedings pending resolution of the tribal immunity
`appeal, the Federal Circuit affirmed our decision and entered its mandate on
`November 20, 2018 (Ex. 3004). The Federal Circuit also found the Tribe
`had not demonstrated that the petition for a writ of certiorari would present a
`substantial question or that there was good cause to stay the mandate
`pending the filing and disposition of the Tribe’s petition. Ex. 3005; Fed. R.
`
`
`3 Paper and exhibit numbers refer to those filed in IPR2016-01127. Similar
`papers and exhibits were filed in the other proceedings.
`
` 4
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`App. P. 41(d)(1). Thus, all together, these proceedings have been pending
`for over two-and-a-half years.
`Accordingly, taking into account that the rules for our proceedings
`“shall be construed to secure the just, speedy, and inexpensive resolution of
`every proceeding,” 37 C.F.R. § 42.1(b), we are not inclined under these
`circumstances to delay these proceedings any further.4 The Federal Circuit
`has already considered and rejected the argument that good cause exists to
`stay the mandate. Our colleagues in the Microsoft proceedings have also
`considered the issue and reached the same conclusion. We see no reason to
`deviate from either of those decisions.
`Moreover, we see no reason to stay the proceedings until the Federal
`Circuit enters its mandate, particularly given Petitioners’ acknowledgement
`that there is no legal reason to do so. Thus, unless ordered otherwise by the
`Supreme Court, we will proceed with the oral hearing as scheduled and issue
`our Final Written Decisions for these proceedings in due course.
`ORDER
`Accordingly, based on the foregoing, it is:
`ORDERED that the Tribe’s request for authorization to file a motion
`to stay these proceedings pending the filing and disposition of the Tribe’s
`petition for a writ of certiorari in the tribal immunity appeal or the Federal
`Circuit’s mandate in the Allergan appeal is denied.
`
`
`
`
`4 Although we are not under any statutory deadlines given the joinder of
`these proceedings under 35 U.S.C. § 315(c) (see 37 C.F.R. § 42.100(c)), we
`are still cognizant of the goal for speedy resolution of the proceedings.
`
` 5
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`
`
`
`
`For PETITIONER MYLAN:
`
`Steven Parmelee
`Michael Rosato
`Jad Mills
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
`rtoczon@wsgr.com
`
`For PETITIONER TEVA:
`
`Gary Speier
`Mark Schuman
`CARLSON, CASPERS, VANDENBURGH, LINDQUIST & SCHUMAN
`gspeier@carlsoncaspers.com
`mschuman@carlsoncaspers.com
`
`For PETITIONER AKORN:
`
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION PLLC
`akokabi@sughrue.com
`tribar@sughrue.com
`
`
`
`
`
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2);
`IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2);
`IPR2016-01131 (8,648,048 B2); IPR2016-01132 (9,248,191 B2)
`
`For PATENT OWNER:
`
`Dorothy Whelan
`Michael Kane
`Susan Coletti
`Robert Oakes
`Jonathan Singer
`FISH & RICHARDSON P.C.
`IPR13351-0008IP1@fr.com
`PTABInbound@fr.com
`Coletti@fr.com
`Oakes@fr.com
`Singer@fr.com
`
`Alfonso Chan
`Michael Shore
`Christopher Evans
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`Marsha@mkschmidtlaw.com
`
`
`
`
`
`
`
`
`
` 7
`
`
`
`
`
`
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