`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`MYLAN PHARMACEUTICALS INC., TEVA PHARMACEUTICALS USA,
`INC., and AKORN INC., 1
`Petitioners,
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`v.
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`SAINT REGIS MOHAWK TRIBE and ALLERGAN, INC.,
`Patent Owner.2
`_____________
`
`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)
`_____________
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`COMBINED NOTICE OF APPEAL TO THE UNITED STATES COURT
`OF APPEALS FOR THE FEDERAL CIRCUIT BY SAINT REGIS
`MOHAWK TRIBE AND ALLERGAN, INC.
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`
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`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 (collectively
`the “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).
`2 The caption used in this Notice of Appeal was intended only to comply with
`the Board’s order that the “caption for these proceedings shall reflect both
`Allergan’s and the Tribe’s status as ‘Patent Owners.’” Saint Regis Mohawk Tribe
`is the Patent Owner. By using this caption, neither Saint Regis Mohawk Tribe nor
`Allergan concede that Allergan is a “Patent Owner.”
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`Notice is hereby given, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A) and
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`37 C.F.R. § 90.2, that Patent Owner St. Regis Mohawk Tribe (the “Tribe”) hereby
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`appeals to The United States Court of Appeals for the Federal Circuit from the
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`Patent Trial and Appeal Board’s (the “Board”) Decision Denying the Tribe’s
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`Motion to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign Immunity
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`entered on February 23, 2018 as Paper No. 130 in IPR2016-01127, Paper No. 132
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`in IPR2016-01128, Paper No. 127 in IPR2016-01129, Paper No. 127 in IPR2016-
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`01130, Paper No. 129 in IPR2016-01131, and Paper No. 127 in IPR2016-01132,
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`and any other orders factually intertwined with the Order denying the Tribe’s
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`Motion to Dismiss.
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`Notice is hereby given, under 35 U.S.C. § 141, 28 U.S.C. § 1295(a)(4)(A) and
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`37 C.F.R. § 90.2, that Allergan, Inc. (“Allergan”) hereby appeals to the United
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`States Court of Appeals for the Federal Circuit from the Board’s Order denying
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`Allergan’s Motion to Withdraw entered on February 23, 2018 as Paper No. 132 in
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`IPR2016-01127, Paper No. 134 in IPR2016-01128, Paper No. 129 in IPR2016-
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`01129, Paper No. 129 in IPR2016-01130, Paper No. 131 in IPR2016-01131, and
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`Paper No. 129 in IPR2016-01132, and any other orders factually intertwined with
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`the Order denying Allergan’s Motion to Withdraw, including but not limited to the
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`Orders appealed by the Tribe. This combined notice is timely filed within 63 days
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`of the Board’s decisions. 37 C.F.R. § 90.3(a)(1).
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`2
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`It is undisputed that the Tribe is a federally recognized, sovereign American
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`Indian Tribe that did not waive its sovereign immunity from participation in the
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`Proceedings. EX. 2091 at 4. The Board erred as a matter of law in holding that the
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`Tribe’s assertion of its sovereign immunity does not serve as a basis to terminate
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`the Proceedings and that Allergan can adequately represent the Tribe in the
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`Proceedings in the Tribe’s absence.
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`The Board’s decisions in the Proceedings are immediately appealable under 28
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`U.S.C. § 1295(a)(4)(A) via the Collateral Order Doctrine, which applies to agency
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`adjudications rejecting sovereign immunity claims. See, e.g.¸ Chehazeh v.
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`Attorney Gen. of U.S., 666 F.3d 118, 136 (3d Cir. 2012) (collecting cases from nine
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`Courts of Appeals that found the Collateral Order Doctrine applies to judicial
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`review of agency decisions); Burlington N. & Santa Fe Ry. Co. v. Vaughn, 509
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`F.3d 1085, 1094 (9th Cir. 2007) (holding that denial of tribal immunity is an
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`immediately appealable collateral order); Osage Tribal Council ex rel. Osage Tribe
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`of Indians v. U.S. Dep't of Labor, 187 F.3d 1174, 1179 (10th Cir. 1999) (holding
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`that the denial of tribal immunity in an agency proceeding is an immediately
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`appealable collateral order); see In re Board of Regents of Univ. of Texas Sys., 435
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`F. App’x 945, 947-48 (Fed. Cir. 2011) (holding that denial of Eleventh
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`Amendment sovereign immunity allows for immediate appeal under Collateral
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`3
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`Order Doctrine); Baum Research & Dev. Co. v. Univ. of Massachusetts at Lowell,
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`503 F.3d 1367, 1369 (Fed. Cir. 2007) (same).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the Tribe anticipates that the
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`issues on appeal may include, but are not limited to, one or more of the following,
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`as well as any underlying findings, determinations, rulings, decisions, opinions, or
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`other related issues:
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`• Whether the Board erred in denying the Tribe’s Motion to Dismiss for
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`Lack of Jurisdiction Based on Tribal Sovereign Immunity.
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`• Whether the Board erred in finding that inter partes review is not the
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`type of “suit” to which an Indian tribe would traditionally enjoy
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`immunity under common law, declining to find the holding in Federal
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`Maritime Commission v. South Carolina State Ports Authority, 535 U.S.
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`743, 754-56 (2002) applies to Tribal sovereigns as it does State
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`university sovereigns.
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`• Whether the Tribe is entitled to a dismissal of the Proceedings under
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`tribal sovereign immunity because an IPR is adjudicative in nature,
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`Tribes have inherent immunity from suit, and absent express abrogation,
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`there is no indication that Congress intended the Tribe be subject to
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`actions in this forum.
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`4
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`• Whether the Board’s conclusion that it is not adjudicating claims and
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`that it has no authority to provide a remedy against the Tribe in the
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`Proceedings means the Board also lacked statutory authority to proclaim
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`the Tribe lacks immunity from participation in the Proceedings.
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`• Whether the Board erred in concluding that tribal sovereign immunity is
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`a defense that may only be raised by statutory authority, rather than a
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`jurisdictional threshold issue that can be raised at any time in the
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`Proceedings.
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`• Whether the Board erred in holding that the Tribe may not assert
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`immunity from participation in the Proceedings based on the Board’s
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`conclusion that the Proceedings are “federal administrative proceedings”
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`despite the fact that the Proceedings were instituted and prosecuted by
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`private parties and as such, were private actions brought by Petitioners.
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`• Whether the Board erred in holding that it does not exercise personal
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`jurisdiction over the Tribe as a patent owner.
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`• Whether the Board erred in finding that the Tribe’s assertion of its
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`sovereign immunity does not serve as a basis to terminate these inter
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`parte review Proceedings.
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`• Whether the Board erred in finding that the Tribe is not an indispensible
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`party to the Proceedings.
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`5
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`• Whether the Board erred in finding that Allergan obtained all substantial
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`rights in the patents at issue in these Proceedings.
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`• Whether the Board’s Decision should be found unlawful due to any of
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`the statutory reasons set forth in 5 U.S.C. § 706(2).
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`• Whether inter partes review violates the Constitution by extinguishing
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`private property rights through a non-Article III forum.
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`• Whether the rules applied or misapplied and decisions rendered during
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`the Proceedings violated the Tribe’s due process rights to a fair hearing.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Allergan anticipates that the
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`issues on appeal may include, but are not limited to, one or more of the following,
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`as well as any underlying findings, determinations, rulings, decisions, opinions, or
`
`other related issues:
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`• Whether the Board erred in finding that Allergan obtained all substantial
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`rights in the patents at issue in these Proceedings.
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`• Whether the Board erred in finding that Allergan “remains an effective
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`‘patent owner’ of the challenged patents in these proceedings” and erred
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`in denying Allergan’s requests and motion to withdraw from the
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`Proceedings.
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`In accordance with 35 U.S.C. § 142 and 37 C.F.R. §§ 90.2 and 90.3, copies of
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`this Notice of Appeal are being timely filed simultaneously with the Director of the
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`6
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`United States Patent and Trademark Office and the Patent Trial and Appeal Board.
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`In addition, a copy of this Notice of Appeal, along with the required docketing
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`fees, are being filed electronically with the Clerk’s Office of the United States
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`Court of Appeals for the Federal Circuit via CM/ECF. A copy of this Notice of
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`Appeal is also being served on Petitioners.
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`
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`Date: February 28, 2018
`
`
`Dorothy P. Whelan _
`Dorothy P. Whelan
`Reg. No. 33,814
`Michael J. Kane
`FISH & RICHARDSON P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
`whelan@fish.com
`kane@fish.com
`Attorneys for Allergan, Inc.
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`7
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`Respectfully submitted,
`
`
`/Alfonso Chan /
`Alfonso Chan
`Reg. No. 45,964
`achan@shorechan.com
`Michael Shore*
`mshore@shorechan.com
`Christopher Evans*
`cevans@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Marsha Schmidt*
`Attorney at Law
`14928 Perrywood Drive
`Burtonsville, MD 20866
`marsha@mkschmidtlaw.com
`Tel: (301) 949-5176
`*admitted pro hac vice
`
`Attorneys for Patent Owner
`Saint Regis Mohawk Tribe
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`CERTIFICATE OF FILING
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`I certify that on February 28, 2018, in addition to being filed electronically
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`through the Patent Trial and Appeal Board’s PTABE2E System, the original version
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`of the foregoing Notice of Appeal was mailed via Certified Mail, Return Receipt
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`Requested (No. 7196 9008 9111 2423 2300) to the Director of the United States
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`Patent and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`CERTIFICATE OF FILING
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`I hereby certify that a true and correct copy of the foregoing Combined Notice
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`of Appeal to the United States Court of Appeals for the Federal Circuit by the Saint
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`Regis Mohawk Tribe and Allergan, Inc. was filed with the Clerk’s Office of the
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`United States Court of Appeal for the Federal Circuit through the federal courts’
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`Case Management and Electronic Case Files (CM/ECF) system on February 28,
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`2018, along with the requisite fee. One copy was sent to the Clerk by Certified Mail,
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`Return Receipt Requested (No. 9414 7266 9904 2080 2701 94) at the following
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`address:
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`
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Room 401
`Washington, DC 20439
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`8
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), 42.205(b) and 90.2, the undersigned
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`certifies that on February 28, 2018, a complete and entire copy of Combined Notice
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`of Appeal to the United States Court of Appeals for the Federal Circuit by the Saint
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`Regis Mohawk Tribe and Allergan, Inc. was filed electronically through the Patent
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`Trial and Appeal Board’s PTABE2E System and provided, via electronic service, to
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`the Petitioners by serving the correspondence address of record as follows:
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`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
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`9
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`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`1700 K Street NW, 5th Floor
`Washington, DC 20006
`rtorczon@wsgr.com
`
`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
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`Eric D. Miller
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`emiller@perkinscoie.com
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`Counsel for Mylan Pharmaceuticals, Inc.
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`10
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`And upon the remaining Petitioners as follows:
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`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
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`Attorneys for Akorn Inc.
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`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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`Attorneys for Teva Pharmaceuticals
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`/Alfonso G. Chan/
`Alfonso G. Chan
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`(214) 593-9110
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`11
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