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`
`
`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) 1
`
`_____________
`
`BRIEF OF AMICI SCHOLARS IN SUPPORT OF
`PATENT OWNER THE ST. REGIS MOHAWK TRIBE
`
`
`
`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.
`1
`
`
`
`
`
`INTRODUCTION AND INTEREST OF AMICI
`
`Pursuant to the Board’s Order of November 3, 2017, the undersigned scholars submit
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`this brief amici curiae in support of the St. Regis Mohawk Tribe, the Patent Owner
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`in this proceeding. Amici are legal scholars with expertise in the U.S. Constitution,
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`the separation of powers, and the proper role of governmental agencies such as the
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`Patent Trial and Appeal Board (“PTAB”).
`
`Amici submit that, where a patent owner establishes a prima facie showing of
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`tribal sovereign immunity, the Board should accept that showing at face value and
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`decline to entertain the kind of arguments against tribal sovereign immunity that
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`Petitioners seek to raise here. Congress, not the Board (nor Article III courts), is the
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`arbiter of tribal immunity and the proper forum for considering the policy arguments
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`and objections raised by Petitioners.
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`ARGUMENT
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`Petitioners Mylan Pharmaceuticals, Inc. et al. contend that “[c]ourts and
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`agencies have the power and duty” to deny assertions of tribal sovereign immunity
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`to prevent what they call “abuses.” Petrs. Opp. to Motion to Dismiss, Paper 87,
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`IPR2016-01127 (Oct. 13, 2017), at 10. Petitioners maintain that “[s]overeign
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`immunity does not require respect for an agreement designed to protect patents from
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`review.” Id. at 13. They describe the Tribe’s assertion of immunity as being part of
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`a “sham” (id. at 2, 10, 11, 12, 13), a “contrivance” (id. at 3), a “manipulation” (id. at
`
`
`
`2
`
`
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`15), and a “rent-a-tribe” scheme. Id. at 10 (internal quotation marks and citation
`
`omitted). They urge the Board to withhold tribal immunity to protect “the integrity
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`of the patent system” (id. at 13) and to prevent patent owners from “reap[ing] a
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`windfall at the public’s expense.” Id. at 11 (citation and internal quotation marks
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`omitted); id. at 12 (“private gain at public expense . . . is no justification for
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`extending tribal immunity”).
`
`Petitioners’ contentions miss the mark. Tribal sovereignty is not a “sham” or
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`a “contrivance,” even when it produces results Petitioners do not like. There is no
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`dispute that the St. Regis Mohawk Tribe is what the Supreme Court has termed a
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`“domestic dependent nation[]” (Cherokee Nation v. Georgia, 30 U.S. 1, 17 (1831)
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`(Marshall, C.J.)) entitled to tribal sovereign immunity and that its agreement with
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`Allergan is a legitimate contract. Further, the Tribe has explained that the contract
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`serves its sovereign interests and represents an important part of its technology
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`development plan, a project that is saturated with sovereign importance, in part
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`because it complements the Tribe’s modest tax base. See Michigan v. Bay Mills
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`Indian Community, 134 S. Ct. 2024, 2043-45 (2014) (Sotomayor, J., concurring).
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`Moreover, Petitioners’ objections are being raised in the wrong forum.
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`Congress – rather than the Board, the Article II executive, or even the Article III
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`courts – controls the availability of tribal sovereign immunity. As the Supreme
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`Court has explained, “it is fundamentally Congress’s job, not ours, to determine
`
`
`
`3
`
`
`
`whether or how to limit tribal immunity. The special brand of sovereignty the tribes
`
`retain—both its nature and its extent—rests in the hands of Congress.” Bay Mills
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`Indian Community, 134 S. Ct. at 2037. Congress has not withdrawn tribal immunity
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`in patent cases. Where a patent owner makes a prima facie showing of tribal
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`sovereign immunity, the Board should recognize that showing and decline to
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`consider the kind of challenges to immunity that Petitioners seek to raise. There is
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`no warrant for the Board to entertain Petitioners’ policy objections to the Tribe’s
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`assertion of sovereign immunity, and doing so would interfere with Congress’s
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`plenary and exclusive responsibility for setting the boundaries of tribal immunity.
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`The Board has already adopted a similar approach in recognizing the
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`sovereign immunity of three state universities. See Covidien LP v. Univ. of Fla.
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`Research Found. Inc., IPR2016-01274, Paper 21 at 39 (Jan. 25, 2017); Neochord,
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`Inc. v. Univ. of Md., et al., IPR2016- 00208, Paper 28 at 20 (May 23, 2017); Reactive
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`Surface Ltd., LLP v. Toyota Motor Corp., IPR2016-01914, Paper 36 at 17 (July 13,
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`2017). The Board should follow the same approach with respect to tribal sovereign
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`immunity.
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`The Supreme Court’s decision in Republic of Philippines v. Pimentel, 553
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`U.S. 851 (2008), provides instruction for the proper resolution of this proceeding.
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`In Pimental, the Supreme Court held that an interpleader action could not proceed
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`in the absence of the Republic of the Philippines and a government-created
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`
`
`4
`
`
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`commission, which were protected by sovereign immunity. The Court explained
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`that, once a tribunal recognizes that an assertion of sovereign immunity is “not
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`frivolous,” it is “error” for the tribunal to proceed further to address the merits. Id.
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`at 864. “[W]here sovereign immunity is asserted, and the claims of the sovereign
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`are not frivolous,” the tribunal should accept those claims. Id. at 867. The Board
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`should follow that approach here and decline to consider Petitioners’ policy
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`objections to tribal sovereign immunity.
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`I.
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`Congress, Not The Board, is the Arbiter of Tribal Sovereign
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`Immunity.
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`“Indian tribes are ‘domestic dependent nations’ that exercise ‘inherent
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`sovereign authority.’” Michigan v. Bay Mills Indian Community, 134 S. Ct. 2024,
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`2030 (2014) (citations omitted). “As dependents, the tribes are subject to plenary
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`control by Congress,” although “they remain ‘separate sovereigns pre-existing the
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`Constitution.’” Id. (citation omitted). “Thus, unless and ‘until Congress acts, the
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`tribes retain’ their historic sovereign authority.” Id. (citation omitted). The Supreme
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`Court has “time and again treated the ‘doctrine of tribal immunity [as] settled law’
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`and dismissed any suit against a tribe absent congressional authorization (or a
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`waiver).” Id. at 2030-31 (quoting and following Kiowa Tribe of Okla. v.
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`Manufacturing Technologies, Inc., 523 U.S. 751, 756 (1998)).
`
`
`
`5
`
`
`
`“Among the core aspects of sovereignty that tribes possess— subject, again,
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`to congressional action—is the ‘common-law immunity from suit traditionally
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`enjoyed by sovereign powers.’” Bay Mills Indian Community, 134 S. Ct. at 2030
`
`(quoting Santa Clara Pueblo v. Martinez, 436 U.S. 49, 58 (1978)). That immunity,
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`the Supreme Court has explained, is “a necessary corollary to Indian sovereignty and
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`self-governance.” Three Affiliated Tribes of Fort Berthold Reservation v. Wold
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`Engineering, P.C., 476 U.S. 877, 890 (1986). Immunity from suit reflects a logical
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`corollary of sovereignty (protection from suit in court absent consent), the
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`governance needs of the sovereign in protecting the public fisc and allocating
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`resources according to the political needs of its population, and a dignitary interest
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`in the form of respect from other governments as a matter of comity. 2
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`The Supreme Court has repeatedly stressed that Congress plays the exclusive
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`role in setting the bounds of tribal sovereign immunity. Neither Article III courts
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`nor administrative agencies (nor even the Article II Executive) may disregard an
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`
`2 See Washington v. Confederated Tribes of Colville Reservation, 447 U.S.
`134, 154 (1980); Santa Clara Pueblo v. Martinez, 436 U.S. 49, 56 (1978); Puyallup
`Tribe, Inc. v. Department of Game of Wash., 433 U.S. 165, 167-68, 172-73 (1977);
`United States v. United States Fidelity & Guaranty Co., 309 U.S. 506, 512 (1940);
`Turner v. United States, 248 U.S. 354, 358 (1919); Parks v. Ross, 52 U.S. (11 How.)
`362, 374 (1850); David H. Getches, Charles F. Wilkinson, Robert A. Williams Jr.,
`Matthew L.M. Fletcher, and Kristen A. Carpenter, Cases and Materials on Federal
`Indian Law 415-65 (7th ed. 2017); Catherine T. Struve, Tribal Immunity and Tribal
`Courts, 36 Ariz. St. L.J. 137, 139-45 (2004) (providing a deep account of tribal
`sovereign immunity in Supreme Court precedents).
`
`
`
`6
`
`
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`assertion of tribal immunity that Congress has seen fit to retain. As the Supreme
`
`Court has explained, “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 hands of Congress.” Bay Mills
`
`Indian Community, 134 S. Ct. at 2037. “[A] fundamental commitment of Indian law
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`is judicial respect for Congress’s primary role in defining the contours of tribal
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`sovereignty.” Id. at 2039. Congress “has the greater capacity ‘to weigh and
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`accommodate the competing policy concerns and reliance interests’ involved in the
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`issue.” Id. at 2037-38 (citation omitted).3
`
`The baseline condition is one of tribal immunity. As long ago as Talton v.
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`Mayes, 163 U.S. 376, 425 (1896), the Supreme Court recognized the “powers of
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`self-government enjoyed by the Cherokee nation existed prior to the Constitution.”
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`Thus, the Court’s decisions establish that any congressional abrogation of tribal
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`sovereign immunity “must be clear. The baseline position, we have often held, is
`
`
`3 See also United States v. Lara, 541 U.S. 193, 200 (2004) (Congress’s power
`is “plenary and exclusive”) (citations omitted); Kiowa, 523 U.S. at 758 (“we defer
`to the role Congress may wish to exercise in this important judgment”); Oklahoma
`Tax Comm’n v. Citizen Band Potawatomi Indian Tribe of Oklahoma, 498 U.S. 505,
`510 (1991) (because “Congress has always been at liberty to dispense with” or limit
`tribal immunity, “we are not disposed to modify” its scope); Santa Clara Pueblo,
`436 U.S. at 60 (“[A] proper respect ... for the plenary authority of Congress in this
`area cautions that [the courts] tread lightly”); Felix Cohen, Handbook of Federal
`Indian Law § 2.01[1], at 110 (1982 ed.), (“Judicial deference to the paramount
`authority of Congress in matters concerning Indian policy remains a central and
`indispensable principle of the field of Indian law”).
`
`
`
`7
`
`
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`tribal immunity; and ‘[t]o abrogate [such] immunity, Congress must ‘unequivocally’
`
`express that purpose.’” Bay Mills Indian Community, 134 S. Ct. at 2031 (quoting
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`C&L Enterprises, Inc. v. Citizen Band Potawatomi Tribe of Okla., 532 U.S. 411, 418
`
`(2001)). “That rule of construction reflects an enduring principle of Indian law:
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`Although Congress has plenary authority over tribes, courts will not lightly assume
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`that Congress in fact intends to undermine Indian self-government.” Id. at 2031-32.
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`Congress has exercised its power by choosing to adjust tribal immunity in
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`some contexts but not others. In Kiowa, for example, the Court noted that Congress
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`had restricted tribal immunity “in limited circumstances” (including in 25 U.S.C. §
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`450f(c)(3) (mandatory liability insurance); § 2710(d)(7)(A)(ii) (gaming activities)),
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`while “in other statutes” declaring an “intention not to alter” the doctrine. 523 U.S.
`
`at 758; see also Oklahoma Tax Comm’n v. Citizen Band Potawatomi Indian Tribe
`
`of Oklahoma, 498 U.S. 505, 510 (1991) (discussing Indian Financing Act of 1974,
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`88 Stat. 77, 25 U.S.C. § 1451 et seq.). “Congress should make the call whether to
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`curtail a tribe’s immunity,” and “the Court should accept Congress’s judgment.”
`
`Bay Mills Indian Community, 134 S. Ct. at 2038 (enforcing tribal sovereign
`
`immunity even though Congress, in the Indian Gaming Regulatory Act, had
`
`abrogated tribal immunity in certain circumstances)
`
`Here, the critical fact is that Congress did not expressly abrogate tribal
`
`sovereign immunity in the America Invents Act, or any other statute, for purposes
`
`
`
`8
`
`
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`of inter partes review. In fact, tribes are not mentioned in any statute governing
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`patents. See Home Bingo Network v. Multimedia Games, Inc., No. 1:05-CV-0608,
`
`2005 WL 2098056, at *1 (N.D.N.Y. Aug. 30, 2005) (“Plaintiff points to no authority
`
`that Congress has expressly waived tribal immunity with respect to the enforcement
`
`of patents.”); Specialty House of Creation, Inc. v. Quapaw Tribe, No. 10-CV-371-
`
`GKF-TLW, 2011 WL 308903, at *1 (N.D. Okla. Jan. 27, 2011) (noting lack of
`
`“authority that Congress has expressly abrogated tribal sovereign immunity with
`
`respect to the enforcement of patents”).
`
`Indeed, legislation has been introduced in Congress to address the very issue
`
`of tribal sovereign immunity in inter partes review. See, e.g., S. 1948, 115th Cong.,
`
`1st Sess. (2017). The pendency of that proposal reinforces our point: that the
`
`decision is Congress’s (and not the Board’s) to make. As the Supreme Court has
`
`observed, Congress’s consideration of legislative proposals restricting tribal
`
`sovereign immunity is a powerful reason for other branches not to interfere. See Bay
`
`Mills Indian Community, 134 S. Ct. at 2038-39 (“Following Kiowa, Congress
`
`considered several bills to substantially modify tribal immunity in the commercial
`
`context . . . But instead of adopting those reversals of Kiowa, Congress chose to
`
`enact a far more modest alternative . . . [W]e act today against the backdrop of a
`
`congressional choice: to retain tribal immunity (at least for now) in a case like this
`
`one.”). In fact, the Court noted that failing to recognize tribal immunity where
`
`
`
`9
`
`
`
`Congress has not actually enacted legislation abrogating it “would scale the heights
`
`of presumption: Beyond upending ‘long-established principle[s] of tribal sovereign
`
`immunity,’ that action would replace Congress’s considered judgment with our
`
`contrary opinion.” Id. at 2039 (citation omitted). The Court’s commitment to the
`
`primacy of Congress “gains only added force when Congress has already reflected
`
`on an issue of tribal sovereignty, including immunity from suit, and declined to
`
`change settled law.” Id. That principle is squarely applicable here.
`
`II. The Issues Raised By Petitioners Are Beyond The Board’s
`
`Statutory Purview and Institutional Expertise.
`
`The Board should reject Petitioners’ policy arguments against tribal sovereign
`
`immunity for a further reason: The Supreme Court has established that
`
`administrative agencies should not decide questions — especially complex and
`
`sensitive questions, such as those arising from Petitioners’ arguments against tribal
`
`sovereign immunity — beyond their statutory purview and institutional competence.
`
`In such situations, agencies lack the expertise to resolve broader policy issues and
`
`risk interference with Congress’s legislative prerogatives. Further, an agency acting
`
`beyond its purview lacks legitimacy and accountability. Controversial measures
`
`such as Petitioners’ proposed restrictions on tribal sovereign immunity require a
`
`broader national democratic debate than an agency like the Board can provide.
`
`
`
`10
`
`
`
`In Hampton v. Mow Sun Wong, 426 U.S. 88, 116 (1976), for example, the
`
`Supreme Court invalidated a Civil Service Commission regulation denying federal
`
`employment to non-citizens — even though the agency was not found to have acted
`
`beyond its statutory mandate — simply because the decision to bar aliens from
`
`federal employment was not one with which Civil Service Commission officials
`
`were specifically charged, nor one they were competent to make. The Court noted
`
`that the Civil Service Commission “performs a limited and specific function” and
`
`that its “only concern” was “the promotion of an efficient federal service.” Id. at
`
`114. The Court held that the Commission could not justify its rule because it “has
`
`no responsibility for foreign affairs, for treaty negotiations, for establishing
`
`immigration quotas or conditions of entry, or for naturalization policies. Indeed, it is
`
`not even within the responsibility of the Commission to be concerned with the
`
`economic consequences of permitting or prohibiting the participation by aliens in
`
`employment opportunities in different parts of the national market.” Id.
`
`Similarly, in Greene v. McElroy, 360 U.S. 474 (1959), the Supreme Court
`
`refused to find an implicit congressional delegation of authority to the Department
`
`of Defense to administer a security clearance program that had far-reaching legal
`
`implications: “Without explicit action by
`
`lawmakers, decisions of great
`
`constitutional import and effect would be relegated by default to administrators who,
`
`under our system of government, are not endowed with authority to decide them.”
`
`
`
`11
`
`
`
`Id. at 507; see also King v. Burwell, 135 S. Ct. 2480, 2489 (2015) (Internal Revenue
`
`Service not equipped to resolve questions of “deep ‘economic and political
`
`significance” arising under Affordable Care Act).
`
`This principle applies squarely here. The Board has no expertise or
`
`experience that would enable it to second-guess prima facie assertions of tribal
`
`sovereign immunity. Its statutory jurisdiction over IPRs is limited to challenges
`
`based on prior art and obviousness. 35 U.S.C. § 311(b). The problematic objections
`
`to tribal sovereign immunity that Petitioners seek to raise involve sensitive legal
`
`questions that are far different from the patent issues that Congress has charged the
`
`Board with resolving. As Petitioners concede, an “agency can only do what
`
`Congress permits.” Petrs. Opp. to Motion to Dismiss, Paper 87, IPR2016-01127
`
`(Oct. 13, 2017), at 24.
`
`The Board is not competent to evaluate or balance the legitimacy of the
`
`Allergan-Mohawk contract from Congress’s policy perspective. Far from being a
`
`scheme to shield patents from review, the agreement from the Tribe’s perspective is
`
`part of its economic development plan. The Tribe, as sovereign, adopted a Tribal
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`Resolution endorsing the creation of a technology and innovation center for the
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`commercialization of existing and emerging technologies. The enterprise is known
`
`as the Office of Technology, Research and Patents and is part of the Tribe’s
`
`Economic Development Department. Hence, the Allergan-Mohawk contract
`
`
`
`12
`
`
`
`reflects exactly the sort of economic entrepreneurship that Congress has been urging
`
`upon Tribes — to pursue economic development based on new businesses (such as
`
`gaming and energy ventures), contracts with off-reservation partners, and other
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`market-based solutions, rather than federal handouts. See Bay Mills Indian
`
`Community, 134 S. Ct. at 2043-45 (Sotomayor, J., concurring).4
`
`Petitioners’ objections boil down to the claim that the Allergan/Mohawk
`
`contract is a “sham agreement” (Petrs. Opp. to Motion to Dismiss, Paper 87,
`
`IPR2016-01127 (Oct. 13, 2017), at 2, 10), a “sham assignment” (id. at 11, 12, 13), a
`
`“scheme[] to buy tribal immunity for dubious activities” (id. at 10), and even an
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`example of “rent-a-tribe” schemes (id. at 10 (internal quotation marks and citation
`
`omitted). Not only are these arguments highly disrespectful to the sovereign Tribe,
`
`but adjudicating them will embroil the Board in an intrusive and politically charged
`
`inquiry into tribal motivations and the policy wisdom of tribal economic freedom.
`
`These are issues for Congress, not the courts, and not an agency.
`
`Accordingly, the Board should decline to entertain Petitioners’ arguments
`
`against tribal sovereign immunity.
`
`
`4 See also Stephen Cornell & Joseph Kalt, “American Indian Self-
`Determination: The Political Economy of a Successful Policy” (Working Paper,
`Harvard Project on Native American Indian Economic Development 2010),
`excerpted in David H. Getches, Charles F. Wilkinson, Robert A. Williams Jr.,
`Matthew L.M. Fletcher, and Kristen A. Carpenter, Cases and Materials on Federal
`Indian Law 721-27 (7th ed. 2017).
`
`
`
`13
`
`
`
`CONCLUSION
`
`The Patent Owner’s Motion to Dismiss should be granted.
`
`
`Respectfully submitted.
`
`___/Derek Gilliland/____
`Derek Gilliland
`Nix, Patterson & Roach LLP
`205 Linda Dr.
`Daingerfield, TX 75638
`Tel. (903) 645-7333
`dgilliland@nixlaw.com
`
`Laurence H. Tribe
`Carl M. Loeb University Professor and Professor of Constitutional Law*
`Harvard Law School
`1575 Massachusetts Avenue
`Cambridge, Massachusetts 02138
`Tel. (617) 495-1767
`ltribe@law.harvard.edu
`
`William N. Eskridge Jr.
`John A. Garver Professor of Jurisprudence*
`Yale Law School
`127 Wall Street
`New Haven CT 06511
`Tel. (203) 432-9056
`william.eskridge@yale.edu
`
`Erwin Chemerinsky
`Dean and Jesse H. Choper Distinguished Professor of Law*
`University of California, Berkeley
`School of Law
`215 Boalt Hall
`Berkeley, California 94720-7200
`Tel. 510-642-6483
`
`
`
`14
`
`
`
`echemerinsky@law.berkeley.edu
`
`Joseph William Singer
`Bussey Professor of Law*
`Harvard Law School
`Griswold 306
`1563 Massachusetts Avenue
`Cambridge, Massachusetts 02138
`Tel. 617-496-5292
`jsinger@law.harvard.edu
`
`David Orozco
`Associate Professor of Legal Studies*
`College of Business
`Florida State University
`821 Academic Way, Room 415
`Tallahassee, Florida 32306
`Tel. 850-644-9733
`dorozco@business.fsu.edu
`
`*Affiliations noted for identification purposes only
`
`Jonathan S. Massey
`Massey & Gail LLP
`1325 G St. N.W., Suite 500
`Washington, D.C. 20005
`Tel. (202) 652-4511
`jmassey@masseygail.com
`
`
`
`15
`
`
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