`
`Filed: January 5, 2018
`
`
`
`
`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 (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)
`_____________________________
`
`PETITIONERS’ SUPPLEMENTAL BRIEF ON
`LITIGATION WAIVER
`
`
`
`
`
`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).
`
`
`
`
`
`
`
`The Tribe entered these proceedings demanding to be treated just like a state
`
`university, but now demands just the opposite. The “litigation waiver” principles
`
`applied in LSI and Ericsson, however, govern with equal force here. The Tribe af-
`
`firmatively waived its sovereign immunity in the district court by joining in Aller-
`
`gan’s infringement action against Mylan. Allergan, Inc. v. Teva Pharm. USA, Inc.,
`
`No. 2:15-cv-1455-WCB, 2017 WL 4619790, at *2, 5 (E.D. Tex. Oct. 16, 2017).
`
`Mylan objected to the Tribe’s “gaming [of] the patent system” in its next brief. Pa-
`
`per 121 in IPR2016-1127, at 7 (citing Vas-Cath, Inc. v. Curators of Univ. Mo., 473
`
`F.3d 1376, 1383-85 (Fed. Cir. 2007)). The Board should apply the reasoning of LSI
`
`and Ericsson here and hold the Tribe has waived any immunity it may have en-
`
`joyed from IPR by joining Allergan’s infringement action.
`
`Although the scope of litigation waiver differs in some respects between
`
`states and tribes, the same “need to avoid unfairness and inconsistency, and to pre-
`
`vent a [sovereign] from selectively using its immunity to achieve a litigation ad-
`
`vantage,” LSI at 7, restricts tribal as well as state sovereign immunity. Federal
`
`courts routinely apply these principles to allow counterclaims inextricably linked
`
`to a tribe’s claims. See, e.g., Cayuga Indian Nation of N.Y. v. Seneca Cty., 260 F.
`
`Supp. 3d 290, 299-300 (W.D.N.Y. 2017); Tohono O’Odham Nation v. Ducey, 174
`
`F. Supp. 3d 1194, 1203-07 (D. Ariz. 2016); Oneida Tribe of Indians of Wis. v. Vil-
`
`lage of Hobart, 500 F. Supp. 2d 1143, 1146-50 (E.D. Wis. 2007).
`
`-1-
`
`
`
`
`
`The Tribe argued in a Dec. 21 email to the Board that “the analysis begins
`
`and ends with” Bodi v. Shingle Springs Band of Miwok Indians, 832 F.3d 1011 (9th
`
`Cir. 2016). But Bodi involved the distinct issue of removal from state to federal
`
`court under 28 U.S.C. § 1441. The Ninth Circuit held that, although a state often
`
`waives immunity through removal, a tribe does not where it removes for the pur-
`
`pose of having a federal court decide the immunity issue. 832 F.3d at 1017-23. The
`
`court emphasized that the “unfairness” and “selective use” concerns that favor
`
`waiver of state immunity upon removal “cut the other way in the tribal immunity
`
`context,” given the historic role of federal courts in protecting tribes from states. Id.
`
`at 1022. Neither Bodi nor any other federal Indian law decision justifies giving
`
`tribes “litigation advantages” denied to states under LSI and Ericsson.
`
`The Tribe’s Dec. 21 email also claims that McClendon v. United States, 885
`
`F.2d 627 (9th Cir. 1989), bars any counterclaim against a tribe “as a matter of well-
`
`settled law.” This argument also is incorrect. McClendon prevents counterclaims
`
`on “collateral disputes” but allows those “inextricably linked” to a tribe’s claims.
`
`Id. at 631. IPR initiated by a litigation defendant is much more like the “mirror-
`
`image” counterclaims routinely allowed against tribes, see cases cited above, than
`
`an impermissible counterclaim raising a “collateral dispute.”
`
`To provide a complete record for judicial review, the Board should apply
`
`LSI and Ericsson in addition to all the other bases for denying the Tribe’s motion.
`
`-2-
`
`
`
`
`
`
`
`
`
`Dated: January 5, 2018
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee
`Reg. No. 31,990
`
`
`
`-3-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that I caused to be served true and correct copies of the
`
`foregoing Petitioners’ Supplemental Brief on Litigation Waiver on this 5th day of
`
`January, 2018, on Allergan, Inc. and the St. Regis Mohawk Tribe as follows:
`
`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
`Email: IPR13351-0008IP1@fr.com
`Email: IPR13351-0008IP2@fr.com
`Email: IPR13351-0008IP3@fr.com
`Email: IPR13351-0008IP4@fr.com
`Email: IPR13351-0008IP5@fr.com
`Email: IPR13351-0008IP6@fr.com
`Email: PTABInbound@fr.com
`
`
`Alfonso Chan
`Joseph DePumpo
`Michael W. Shore
`Christopher L. Evans
`Shore Chan DePumpo LLP
`901 Main Street, Suite 3300
`Dallas, TX 75201
`Email: achan@shorechan.com
`Email: jdepumpo@shorechan.com
`Email: mshore@shorechan.com
`Email: cevans@shorechan.com
`
`
`
`-4-
`
`
`
`
`
`Marsha K. Schmidt
`14928 Perrywood Drive
`Burtonsville, MD 20866
`Email: marsha@mkschmidtlaw.com
`
`
`And on the remaining Petitioners as follows:
`
`
`Gary Speier
`Mark Schuman
`Carlson, Caspers, Vandenburgh,
`Lindquist & Schuman, P.A.
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`Email: gspeier@carlsoncaspers.com
`Email: mschuman@carlsoncaspers.com
`Attorneys for Teva Pharmaceuticals USA, Inc.
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., NW
`Washington, DC 20037
`Email: mdzwonczyk@sughrue.com
`Email: akokabi@sughrue.com
`Email: tribar@sughrue.com
`Attorneys for Akorn Inc.
`
`
`
`
`
`
`Respectfully submitted,
`
`Dated: January 5, 2018
`
`
`
`
`
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`-5-
`
`
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