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.
`
`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)
`
`AMICUS CURIAE BRIEF OF THE OGLALA SIOUX TRIBE
`IN SUPPORT OF CORRECTED PATENT OWNER'S MOTION
`TO DISMISS BASED ON TRIBAL SOVEREIGN IMMUNITY
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC.,
`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)
`
`AMICUS CURIAE BRIEF OF THE OGLALA SIOUX TRIBE
`IN SUPPORT OF CORRECTED PATENT OWNER'S MOTION
`TO DISMISS BASED ON TRIBAL SOVEREIGN IMMUNITY
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES…………………………………………………....ii-iv
`
`ARGUMENT ............................................................................................................. 1
`
`I.
`
`II.
`
`It Is For Congress Alone To Consider The Policy Arguments Favoring
`Abrogation Of The Defense Of Tribal Sovereign Immunity In The Area Of
`Patents ............................................................................................................ 1
`
`To Promote Tribal Self-Sufficiency, Tribes Should Be Free To Enter Into
`New And Innovative Types Of Business Development Contracts, Including
`Those Requiring Assertion Of Tribal Sovereign Immunity ............................ 5
`
`III. Patent-Holding Tribes, Like State Universities, Should Be Allowed To
`Assert Sovereign Immunity To Bar Patent Challenges ................................... 9
`
`IV. The Allergan-Saint Regis Mohawk Patent Assignment Is Not A Sham
`Assignment .................................................................................................... 14
`
`
`CONCLUSION ........................................................................................................ 15
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`CASES:
`
`
`Allergan, Inc. v. Teva Pharmaceuticals USA Inc.,
`No. 2:15-cv-1455-WCB (E.D.Tex. Oct. 16, 2017) ………………………………14
`
`
`Arizona Dep't of Revenue v. Blaze Constr. Co.,
`526 U.S. 32 (1999) ……………………………………………………………….. 6
`
`
`College Savings Bank v. Florida Prepaid Postsecondary
`Educ. Expense Bd., 527 U.S.666 (1999) …………………………………..…… 11
`
`
`Kiowa Tribe of Oklahoma v. Manufacturing Technologies, Inc.,
`523 U.S. 751 (1998) ………………………………………………………..….1,3,4
`
`
`Michigan v. Bay Mills Indian Community,
` ___ U.S. ___, 134 S.Ct. 2024 (2014) ……………………………………..2-3,5,6,7
`
`
`Oklahoma Tax Comm'n v. Citizen Band Pottawatomie Tribe of Okla.,
`498 U.S. 505 (1991) ……………………………………………………………. 2,6
`
`
`Thomas v. Gay,
`169 U.S. 264 (1898) …………………………………………………...…………..7
`
`
`Seminole Tribe [of Fla. v. Florida],
`517 U.S. (1996) ………………………………………………………..............…10
`
`White Mountain Apache Tribe v. Bracker,
`448 U.S. 136, (1980) ………….…………………………………………… 9,10,12
`
`
`
`ADMINSTRATIVE ORDERS:
`
`
`
`Covidien LP v. Univ. of Fla. Research Found. Inc.,
`Case IPR2016-1274 (PTAB Jan. 25, 2017) ………………………..………. 9,10,12
`
`
`ii
`
`
`
`NeoChord, Inc. v. Univ. of Md., Baltimore,
`Case IPR2016-208 (PTAB May 23, 2017) ……………………………………11,12
`
`
`Reactive Surfaces Ltd., LLP v. Toyota Motor Corp.,
`Case IPR2016-1914 (July 13, 2017) …………………………………………….. 11
`
`
`CONSTITUTON AND STATUTES:
`
`
`Eleventh Amendment, U.S. Const.……………………………………...….10,11,13
`
`
`25 U.S.C. § 2702(1) ………………………………………………………..………5
`
`
`25 U.S.C. § 4301 ……………………………………………………………….. 5,8
`
`
`Leahy-Smith America Invents Act,
`Pub. L. No. 112–29, 125 Stat. 284, 331 (2011) ……………….…………. ……...10
`
`
`OTHER AUTHORITIES:
`
`
`Struve, Tribal Immunity and Tribal Courts,
`36 Ariz. St. L.J. 137, (2004). …...……………………………….…………….4,6,7
`
`
`A. Meister, “Casino City's Indian Gaming Industry Report 28”
`(2009-2010 ed.) ………………………………………………………….………...6
`
`
`C. Quijada, “Patents and Tribal Sovereign Immunity,
`BioLawToday.org” (Oct. 23, 2017) (https://www.law.utah.
`edu/patents-and-tribal-sovereign-immunity/) ………………………………….. 8,9
`
`
`G. Ablovsky, “Tribal Sovereign Immunity and Patent Law,”
`blog post on Legal Aggregate (Sept. 13, 2017) (emphasis added)
`(https://law.stanford.edu/ 2017/09/13/tribal-sovereign-
`immunity-and-patent-law/). ……………………………………………………4,6,7
`
`
`
`
`
`iii
`
`
`
`G. Quinn, “Senator McCaskill Introduces Bill to Abrogate
`Native American Sovereign Immunity,”
`IPWatchdog Blog (Oct. 5, 2017) (http://www.ipwatchdog .com/2017/10/05/senator-
`mccaskill-legislation-abrogate-native-
`american-sovereign-immunity/id=88975/). ………………………………………13
`
`K. Thomas, “How to Protect a Drug Patent? Give It to a
`Native American Tribe,” New York Times (Sept. 8, 2017)
`(https://www.nytimes.com /2017/09/08/health/allergan-
`patent-tribe.html) ………………….…………………………………………..….. 8
`
`iv
`
`
`
`
`
`Amicus Curiae Oglala Sioux Tribe hereby submits this brief in support of the
`
`Corrected Patent Owner, Saint Regis Mohawk Tribe's Motion to Dismiss the above
`
`referenced inter partes review proceeding based on the defense of tribal sovereign
`
`immunity.
`
`ARGUMENT
`
`I.
`
`It Is For Congress Alone To Consider The Policy Arguments
`Favoring Abrogation Of The Defense Of Tribal Sovereign
`Immunity In The Area Of Patents.
`
`
`
`
`
`Policy arguments have been advanced in opposition to the ability of a tribe,
`
`such as the Saint Regis Mohawk Tribe, to enter into commercial contracts with
`
`corporations to acquire patents and then license those patents back to the
`
`corporations to achieve a stream of royalty income for the tribe, in return for the
`
`tribe's promise to assert its sovereign immunity to bar administrative petitions for
`
`inter partes review (IPR) of the patents before the Patent Trial and Appeal Board
`
`(PTAB). Only Congress, however, may act on those policy arguments to limit or
`
`abrogate tribal sovereign immunity.
`
`
`
`Thus, in Kiowa Tribe of Oklahoma v. Manufacturing Technologies, Inc., 523
`
`U.S. 751 (1998), involving a state court action by a private party on a promissory
`
`note given by the defendant tribe, in an opinion by Justice Kennedy, the Court
`
`recognized that “[t]here are reasons to doubt the wisdom of perpetuating the [tribal
`
`1
`
`
`
`sovereign immunity] doctrine”:
`
`At one time, the doctrine of tribal immunity from suit might have
`been thought necessary to protect nascent tribal governments from
`encroachments by States. In our interdependent and mobile society,
`however, tribal immunity extends beyond what is needed to safeguard
`tribal self-governance. This is evident when tribes take part in the
`Nation's commerce. Tribal enterprises now include ski resorts,
`gambling, and sales of cigarettes to non-Indians. . . . In this economic
`context, immunity can harm those who are unaware that they are
`dealing with a tribe, who do not know of tribal immunity, or who have
`no choice in the matter, as in the case of tort victims.
`
`523 U.S. at 758 (citations omitted).
`
`
`
`The Supreme Court nevertheless refused to limit or restrict the assertion of
`
`tribal sovereign immunity “to reservations or to noncommercial activities,” saying:
`
`“We decline to draw this distinction in this case, as we defer to the role Congress
`
`may wish to exercise in this important judgment.” Id. (emphasis added). The
`
`Court explained this deference to the Legislative Branch as follows:
`
`. . . Congress is in a position to weigh and accommodate the
`competing policy concerns and reliance interests. The capacity of the
`Legislative Branch to address the issue by comprehensive legislation
`counsels some caution by us in this area. Congress “has occasionally
`authorized limited classes of suits against Indian tribes” and “has
`always been at liberty to dispense with such tribal immunity or to
`limit it.” [Oklahoma Tax Comm'n v. Citizen Band of] Potawatomi
`[Tribe of Okla.], supra, [498 U.S. 505] at 510 [(1991)]. It has not yet
`done so.
`
`Id. at 759 (emphasis added).
`
`
`
`The Supreme Court subsequently followed Kiowa in Michigan v. Bay Mills
`
`2
`
`
`
`Indian Community, ___ U.S. ___, 134 S.Ct. 2024 (2014). In that case, the State of
`
`Michigan sought to enjoin the defendant tribe from opening a casino outside of
`
`reservation or other Indian lands. The tribe asserted its tribal sovereign immunity
`
`to bar the action. On appeal, Michigan argued that the Supreme Court should
`
`revisit its holding in Kiowa and hold that tribes have no immunity with regard to
`
`“illegal commercial activity” conducted outside of the tribe's sovereign territory.
`
`134 S.Ct. at 2036. Michigan further argued that “tribes increasingly participate in
`
`off-reservation gaming and other commercial activity, and operate in that capacity
`
`less as governments than as private businesses,” pointing out that since Kiowa was
`
`decided tribal casino revenues “have more than tripled.” Id. Michigan also pointed
`
`out that “tribes have broader immunity from suits arising from such conduct than
`
`other sovereigns — most notably, because Congress enacted legislation limiting
`
`foreign nations' immunity for commercial activity in the United States.” Id.
`
`
`
`In an opinion by Justice Kagan, the Court in Bay Mills declined to disturb its
`
`holding in Kiowa refusing to confine tribal sovereign immunity to reservations or
`
`to noncommercial activities. The Bay Mills Court explained that it ruled as it did
`
`in Kiowa “for a single, simple reason: because it is fundamentally Congress's job,
`
`not ours, to determine whether or how to limit tribal immunity. The special brand
`
`of sovereignty the tribes retain — both its nature and its extent — rests in the
`
`3
`
`
`
`hands of Congress.” Id. at 2037 (emphasis added and citations omitted).
`
`“Congress should make the call whether to curtail a tribe's immunity for off-
`
`reservation commercial conduct — and the Court should accept Congress's
`
`judgment.” Id. at 2038. The Court therefore concluded that
`
`Having held in Kiowa that this issue is up to Congress, we cannot
`reverse ourselves because some may think its conclusion wrong.
`Congress of course may always change its mind — and we would
`readily defer to that new decision. But it is for Congress, now more
`than ever, to say whether to create an exception to tribal immunity for
`off-reservation commercial activity. As in Kiowa— except still more
`so — “we decline to revisit our case law[,] and choose" instead "to
`defer to Congress.” Id., at 760 . . . .
`
`Id. at 2039 (emphasis added).
`
`
`
`Similarly, “[i]f tribal sovereign immunity dramatically distorts patent law,
`
`there is a remedy available. . . . Congress can readily use its plenary power to
`
`abrogate tribal sovereign immunity in patent law.” Professor Gregory Ablovsky,
`
`“Tribal Sovereign Immunity and Patent Law” blog post on Legal Aggregate (Sept.
`
`13, 2017) [hereinafter “Ablovsky”] (emphasis added) (https://law.stanford.edu/
`
`2017/09/13/tribal-sovereign-immunity-and-patent-law/). Congress has yet to do
`
`so. Unless and until Congress acts, neither the federal courts nor federal
`
`administrative tribunals should prevent the tribes from asserting tribal sovereign
`
`immunity to bar inter partes review of tribally-owned patents.
`
`
`
`4
`
`
`
`II. To Promote Tribal Self-Sufficiency, Tribes Should Be Free To
`Enter Into New And Innovative Types Of Business Development
`Contracts, Including Those Requiring Assertion Of Tribal
`Sovereign Immunity.
`
`As Justice Sotomayor recognized in her concurring opinion in Michigan v.
`
`
`
`Bay Mills Indian Community, “[t]ribes face a number of barriers to raising revenue
`
`in traditional ways,” and, thus, “[i]f Tribes are ever to become more self-sufficient,
`
`and fund a more substantial portion of their own governmental functions,
`
`commercial enterprises will likely be a central means of achieving that goal.” 134
`
`S.Ct. at 2041 (Sotomayor, J., concurring) (emphasis added).
`
`
`
`As early as 1980, the Supreme Court recognized that Congress had begun to
`
`demonstrate “a firm federal policy of promoting tribal self-sufficiency” and “tribal
`
`independence.” White Mountain Apache Tribe v. Bracker, 448 U.S. 136, 143-44
`
`(1980) (footnote omitted). More recently, Justice Sotomayor has likewise
`
`recognized that “[a] key goal of the Federal Government is to render Tribes more
`
`self-sufficient, and better positioned to fund their own sovereign functions, rather
`
`than relying on federal funding.” Id. at 2043, citing 25 U.S.C. § 2702(1)
`
`(explaining that Congress' purpose in enacting the Indian Gaming Regulatory Act
`
`of 1988 (IGRA) was “to provide a statutory basis for the operation of gaming by
`
`Indian tribes as a means of promoting tribal economic development, self-
`
`sufficiency, and strong tribal governments”); see also 25 U.S.C. § 4301 (stating
`
`5
`
`
`
`that one of the purposes of the Native American Business Development, Trade
`
`Promotion, and Tourism Act of 2000 was “[t]o promote economic self-sufficiency
`
`and political self-determination for Indian tribes and members of Indian tribes”).
`
`
`
`This goal of self-sufficiency cannot be achieved by casinos alone. “Popular
`
`imagination might envision casino riches, but Indian gaming revenue is spread
`
`very unevenly, with only a handful of well-situated tribes bringing in large sums.”
`
`Ablovsky. Approximately half of the tribes do not operate casinos at all, and “even
`
`among the Tribes that do, gaming revenue is far from uniform. As of 2009, fewer
`
`than 20% of Indian gaming facilities accounted for roughly 70% of the revenues
`
`from such facilities.” Michigan v. Bay Mills Indian Community, 134 S.Ct. at 2043
`
`(Sotomayor, J., concurring), citing A. Meister, Casino City's Indian Gaming
`
`Industry Report 28 (2009-2010 ed.).
`
`
`
`Taxation of reservation businesses is also problematic. “States have the
`
`power to tax certain individuals and companies based on Indian reservations,
`
`making it difficult for Tribes to raise revenue from those sources.” Michigan v.
`
`Bay Mills Indian Community, 134 S.Ct. at 2043 (Sotomayor, J., concurring), citing
`
`Oklahoma Tax Comm'n v. Citizen Band Pottawatomie Tribe of Okla., 498 U.S. 505
`
`(1991) (allowing State to collect taxes on sales to non-Indians on Indian land);
`
`Arizona Dep't of Revenue v. Blaze Constr. Co., 526 U.S. 32 (1999) (allowing State
`
`6
`
`
`
`taxation of companies owned by non-Indians on Indian land); and Thomas v. Gay,
`
`169 U.S. 264 (1898) (allowing taxation of property owned by non-Indians on
`
`Indian land). “[I]f Tribes were to impose their own taxes on these same sources,
`
`the resulting double taxation would discourage economic growth.” Id. at 2043-44
`
`(citations omitted). Thus, tribes are presented with the Hobson's choice “of
`
`imposing double taxation on reservation businesses or foregoing their own tax
`
`revenue.” Ablovsky.
`
`
`
`Consequently, the development of new and innovative “tribal business
`
`operations are critical to the goals of tribal self-sufficiency because such
`
`enterprises in some cases 'may be the only means by which a tribe can raise
`
`revenues[.]” Michigan v. Bay Mills Indian Community, 134 S.Ct. at 2043
`
`(Sotomayor, J., concurring), quoting Struve, “Tribal Immunity and Tribal Courts,”
`
`36 Ariz. St. L.J. 137, 169 (2004). “Tribal leaders are understandably anxious to
`
`make deals that will bring much-needed jobs and money to places that have long
`
`lacked both.” Ablovsky.
`
`
`
`In the case of the Saint Regis Mohawk Tribe, a tribal community of 13,000
`
`in a rural area of New York bordering Canada with an annual budget of $50
`
`million, “the [Allergan] deal offers the promise of a new revenue stream [$15
`
`million in annual royalties as long as the patents remain valid] that would bring in
`
`7
`
`
`
`income beyond that of a casino the tribe runs near the reservation.” Katie Thomas,
`
`“How to Protect a Drug Patent? Give It to a Native American Tribe,” New York
`
`Times (Sept. 8, 2017) (https://www.nytimes.com /2017/09/08/health/allergan-
`
`patent-tribe.html). As the Tribe's general counsel puts it, “The tribe has many
`
`unmet needs, . . . We want to be self-reliant.” (Id.) The Tribe, as part of its
`
`economic diversification strategy, has also received around forty (40) patents from
`
`SRC Labs LLC, a research, and development technology corporation specializing
`
`in the areas of defense, environment and intelligence. Carlos Quijada, “Patents and
`
`Tribal Sovereign Immunity,” BioLawToday.org (Oct. 23, 2017) [hereinafter
`
`“Quijada”] (https://www.law.utah. edu/patents-and-tribal-sovereign-immunity/).
`
`The Tribe plans to invest the licensing and royalty revenues earned from these
`
`patents in health, safety, education and cultural programs. Id.
`
`
`
`Congress has expressly found that, “consistent with the principles of
`
`inherent tribal sovereignty and the special relationship between Indian tribes and
`
`the United States, Indian tribes retain the right to enter into contracts and
`
`agreements to trade freely [.]” 25 U.S.C. § 4301 (emphasis added). This tribal
`
`freedom of contract should not be curtailed, but rather should be encouraged as
`
`necessary to achieve the goal of tribal self-sufficiency. Tribes should therefore be
`
`allowed to enter into a variety of business development arrangements, including
`
`8
`
`
`
`those where, as here, part of the consideration for the agreement involves a
`
`promise by the tribe to assert its sovereign immunity as a defense in legal
`
`proceedings.
`
`III. Patent-Holding Tribes, Like State Universities, Should Be Allowed
`To Assert Sovereign Immunity To Bar Patent Challenges.
`
`
`
`
`
`“Using sovereign immunity to dismiss patent challenges is not without
`
`precedent.” Quijada. In two cases decided earlier this year, the PTAB ruled that
`
`state university-owned patents are not subject to the inter partes review process
`
`because the state universities enjoy sovereign immunity.
`
`
`
`Thus, in Covidien LP v. Univ. of Fla. Research Found. Inc., Case IPR2016-
`
`1274, Patent No. 7,062,251 B2 (PTAB Jan. 25, 2017), the petitioner argued that
`
`allowing the University of Florida Research Foundation (UFRF) to assert
`
`sovereign immunity to bar inter partes review before the PTAB of the patents the
`
`state university foundation holds “would have harmful and far-reaching
`
`consequences”:
`
`One, invalid patents would stand simply because they are assigned to
`a state entity. Two, a patent owned by a monetization foundation
`affiliated with a state university would be insulated from the inter
`partes review process.
`
`Id. at 25.1 Rejecting this argument, the PTAB stated as follows:
`
`
`1
`It was undisputed that “UFRF's entire business is that of a technology
`
`9
`
`
`
`[W]e are cognizant of the fact that applying an Eleventh Amendment
`immunity to inter partes review, absent waiver by the state entity,
`precludes the institution of inter partes review against a state entity
`entitled to Eleventh Amendment immunity. This, indeed, is precisely
`the point of the Eleventh Amendment, which is the preservation of the
`dignity afforded to sovereign states. . . . When sovereign immunity
`conflicts with legislation, Congress may abrogate sovereign immunity
`if it has unequivocally expressed its intent to abrogate the immunity
`and has acted pursuant to a valid exercise of power. Seminole Tribe [of
`Fla. v. Florida], 517 U.S. [44] at 55 [(1996)]. Petitioner does not point
`to, and we do not find there is, an unequivocal, express intent by
`Congress in the AIA[2] to abrogate immunity for the purposes of inter
`partes review.
`
`Id. at 26.
`
`
`
`The PTAB further concluded that “there is no evidence that the harm to the
`
`patent system, described by the Petitioner, will come to pass, let alone exists as a
`
`basis to divest States of sovereign immunity.” Id. at 27.
`
`
`
`Thus, after concluding that the university foundation was an arm of the State
`
`of Florida, id. at 27-39, the PTAB in Covidien concluded that “Eleventh
`
`Amendment immunity applies to inter partes review proceedings, and that UFRF,
`
`having shown it is an arm of the State of Florida, is entitled to assert its sovereign
`
`immunity as a defense to the institution of an inter partes review,” requiring
`
`dismissal of the petitions for the review of the UFRF's patents. Id. at 39.
`
`
`licensor designed to monetize University of Florida patents.” Id. at 29.
`2
`Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284, 331
`(2011).
`
`10
`
`
`
`
`
`Subsequently, the PTAB granted a similar motion to dismiss on the basis of
`
`sovereign immunity under the Eleventh Amendment filed by the University of
`
`Maryland, Baltimore (UMDB). See NeoChord, Inc. v. Univ. of Md., Baltimore,
`
`Case IPR2016-208, Patent No. 7,635,386 B1 (PTAB May 23, 2017). The PTAB
`
`found that the fact that UMDB had transferred less than “substantially all” rights to
`
`the licensee made UMDB a necessary and indispensable party to the proceedings,
`
`and granted the motion to dismiss based on UMDB’s sovereign immunity (Id. at
`
`19-20). In doing so, the PTAB “recognized that the University’s assertion of
`
`sovereign immunity creates special treatment for a State entity” but pointed out
`
`that “any asymmetry is the result of the Eleventh Amendment itself”:
`
`In contrast, a suit by an individual against an unconsenting State is the
`very evil at which the Eleventh Amendment is directed— and it exists
`whether or not the State is acting for profit, in a traditionally “private”
`enterprise, and as a “market participant.” In the sovereign-immunity
`context, moreover, “[e]venhandness” between individuals and States
`is not to be expected: “[T]he constitutional role of the States sets
`them apart from other employers and defendants.”
`
`
`Id. at 18 (quoting College Savings [Bank v. Florida Prepaid Postsecondary Educ.
`
`Expense Bd.], 527 U.S. [666] at 685–86 [(1999)](citations and footnote omitted).
`
`
`
`See also, Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., Case IPR2016-
`
`1914 Patent No. 8,394,618 B2 (July 13, 2017), wherein the PTAB dismissed the
`
`Regents of the University of Minnesota from the IPR proceeding because they had
`
`11
`
`
`
`sovereign immunity, but declined to dismiss Toyota, which was co-owner of the
`
`patent. Id. at 17.
`
`
`
`By direct analogy to the PTAB's decisions in Covidien and NeoChord, the St.
`
`Regis Mohawk Tribe may assert its tribal sovereign immunity to require the
`
`dismissal of the petitions challenging the Restasis patents that the tribe now owns.
`
`Absent a waiver by the tribe, tribal sovereign immunity precludes the institution of
`
`inter partes review proceedings against the tribe, and there is no unequivocal,
`
`express intent by Congress in the America Invents Act to abrogate tribal sovereign
`
`immunity for the purposes of inter partes review. No evidence, moreover, has
`
`been presented that the alleged harm to the patent system described by the
`
`Petitioners, will come to pass.
`
`
`
`In particular, there is no real difference in the role of the university
`
`foundation in Covidien and that of the Saint Regis Mohawk Tribe in this case.
`
`Both merely took an assignment of the patent or patents in question for purposes of
`
`monetizing the patents through licensing and generating royalty revenue. To deny
`
`the Tribe the right to assert its tribal sovereign immunity to defeat inter partes
`
`review of the Restasis patents would constitute improper unequal treatment and
`
`discrimination against the Tribe.
`
`
`
`Indeed, one patent attorney/commentator has observed, in criticizing as
`
`12
`
`
`
`“discriminatory” the bill recently introduced by Senator Claire McCaskill (D-Mo)
`
`to abrogate tribal sovereign immunity as a defense in inter partes review:
`
`An important question needs to be asked: Why is everyone so upset
`that Native American Indians are asserting sovereign immunity? No
`one was upset when it was the University of Florida Research
`Foundation. Would Senator McCaskill or other[s] call it clearly illegal
`if Allergan or other companies were to do the same deal with a state
`university instead of a Native American Indian Tribe?
`
`Gene Quinn, “Senator McCaskill Introduces Bill to Abrogate Native American
`
`Sovereign Immunity,” IPWatchdog Blog (Oct. 5, 2017) (http://www.ipwatchdog
`
`.com/2017/10/05/senator-mccaskill-legislation-abrogate-native-american-
`
`sovereign-immunity/id=88975/).
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`In short, given the PTAB's recent decisions permitting universities, and even
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`a university monetization foundation, to raise Eleventh Amendment immunity to
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`defeat IPR review, the Tribe should likewise be allowed to assert its tribal
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`sovereign immunity as a defense to inter partes review of the Restasis patents.
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`IV. The Allergan-Saint Regis Mohawk Patent Assignment Is Not A
`Sham Assignment.
`
`
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`
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`After taking the assignment of the Restasis patents from Allergan, the St.
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`Regis Mohawk tribe granted Allergan an exclusive license. That license, however,
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`placed “limitations on Allergan’s rights to a[] particular field of use—specifically,
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`to practice the patents in the United States for all FDA-approved uses,” thus
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`13
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`“giv[ing] the Tribe at least nominal rights with regard to the Restasis patents.” See
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`Allergan, Inc. v. Teva Pharmaceuticals USA Inc., No. 2:15-cv-1455-WCB, Mem.
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`Opinion & Order, p. 7 (E.D.Tex. Oct. 16, 2017) (Bryson, J.) [Doc. 522]. In
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`addition, the Tribe retained other substantial rights, “including the right to practice
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`the patents for research, education, and other non-commercial uses, and the first
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`right to sue third parties not related to Restasis bioequivalents.” Id. Even Judge
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`Bryson considered it at least a “close question” whether the Tribe retained
`
`substantial rights in the Restasis patents, thereby validating the assignment of the
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`patents to the Tribe. Id.
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`
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`That the assignment is not a sham can also be seen from the fact that the St.
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`Regis Mohawk Tribe has opened an Office of Technology, Research and Patents to
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`manage the Tribe's patent business. There would be no need for such an office if
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`all the Tribe was reduced to by the exclusive license granted to Allergan was to
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`receive and cash royalty checks.
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`CONCLUSION
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`In view of the arguments made and authorities cited above, amicus curiae,
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`Oglala Sioux Tribe, urges the PTAB to grant the motion to dismiss the instant IRP
`
`proceeding filed by the Corrected Patent Holder, Saint Regis Mohawk Tribe, as
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`barred by the doctrine of tribal sovereign immunity.
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`14
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`Date: November 29, 2017 Respectfully submitted,
`
` /S/
`Mario Gonzalez, Esq.
`South Dakota Bar # 612
`Gonzalez Law Office, PLLC
`522 Seventh Street, Suite 202
`Rapid City, South Dakota 57701
`Telephone: 605-540-4220
`Fax: 605-799-1146
`Email: mario@mariogonzalezlaw.com
`
`Counsel for Amicus Curiae Oglala
`Sioux Tribe
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`15
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`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 CFR 42.6(3)(4) and 42.205(b), the undersigned certifies that
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`on November 29, 2017, a complete entire copy of the Amicus Curiae Brief of the
`Oglala Sioux Tribe In Support Of Corrected 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
`
`
`Richard Torczon
`WILSON SONSINI GOODRICH &ROSATI
`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
`
`
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`
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`16
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`
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`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
`
`
`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
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`17
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`Attorneys for Saint Regis Mohawk Tribe
`
`
`Alfonso G. Chan
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
`achan@shorechan.com
`mshore@shorechan.com
`cevans@shorechan.com
`
`Marsha Schmidt
`Attorney at Law
`14928 Perrywood Drive
`Burtonsville, MD 20866
`(301) 949-5176
`marsha@mkschmidtlaw.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
`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
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` /S/
`Mario Gonzalez, Esq.
`South Dakota Bar # 612
`Gonzalez Law Office, PLLC
`522 Seventh Street, Suite 202
`Rapid City, South Dakota 57701
`Telephone: 605-540-4220
`
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`19
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