Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper: 15
`Entered: December 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`____________
`
`Case IPR2018-01594 (Patent 6,434,687 B1)
`Case IPR2018-01599 (Patent 6,076,152)
`Case IPR2018-01600 (Patent 6,247,110 B1)
`Case IPR2018-01601, IPR2018-01602, and IPR2018-01603
`(Patent 7,225,324 B2)
`Case IPR2018-01604 (Patent 7,421,524 B2)
`Case IPR2018-01605, IPR2018-01606, and IPR2018-01607
`(Patent 7,620,800 B2)1
`____________
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Motion to
`Extend Preliminary Response Deadlines
`37 C.F.R. § 42.5(c)(2)
`
`
`1 This Decision addresses an issue pertaining to all ten cases. Therefore, we
`exercise our discretion to issue a single Decision to be filed in each case.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`

`

`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`
`On November 23, 2018, we issued an Order authorizing Saint Regis
`Mohawk Tribe (“Patent Owner”) to submit a motion to stay these
`proceedings until the Supreme Court renders a decision on Patent Owner’s
`forthcoming petition for a writ of certiorari appealing the Court of Appeals
`for the Federal Circuit’s (“Federal Circuit”) decision in Saint Regis Mohawk
`Tribe v. Mylan Pharms. Inc., Nos. 18-1638, 18-1639, 18-1640, 18-1641, 18-
`1642, and 18-1643 (“Mylan”). Paper 9,23 2–3 (citing 37 C.F.R. § 42.20(d)).
`Our Order further authorized Microsoft Corporation (“Petitioner”) to submit
`an opposition to Patent Owner’s motion to stay. Id. Patent Owner filed a
`Motion (Paper 11, “Mot.”) requesting that “the Board extend [Patent
`Owner’s] Preliminary Response deadlines in all of these proceedings until
`March 1, 2019 to see if the Supreme Court grants certiorari.” Mot. 1.
`Petitioner filed an Opposition (Paper 12, “Opp.”).
`In Mylan, the Federal Circuit held that “tribal sovereign immunity
`cannot be asserted in IPRs.” Ex. 2006, 7. Patent Owner filed a petition for
`rehearing en banc, which the Court denied on October 22, 2018. Ex. 2021.
`Patent Owner also “move[d] to stay issuance of the Court’s mandate pending
`
`2 IPR2018-01599, IPR2018-01600, IPR2018-01601, IPR2018-01602,
`IPR2018-01603, IPR2018-01604, IPR2018-01605, IPR2018-01606, and
`IPR2018-01607 include similar papers, and accordingly all citations are to
`IPR2018-01594 unless otherwise noted.
`3 Our initial Order (Paper 9) included a typographical error identifying a due
`date of January 15, 2018 for some of Patent Owner’s preliminary responses.
`We corrected this typographical error in a subsequent Order to reflect the
`correct due date of January 15, 2019. See Paper 13, 2.
`
`2
`
`

`

`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`the filing and disposition of a petition for a writ of certiorari in the United
`States Supreme Court,” and the Court denied the motion on November 13,
`2018. Ex. 2022. The mandate subsequently issued. Patent Owner states
`that it “will file a petition for a writ of certiorari that asks the Supreme Court
`to decide whether sovereign immunity may be asserted in inter partes
`reviews before the Patent Trial and Appeal Board,” and “intends to file the
`petition in mid-December if possible.” Mot. 3–4 & n.1.
`Patent Owner argues that “sovereign immunity is a threshold issue
`that must be addressed before the IPR may proceed because tribal sovereign
`immunity is not merely a liability defense, it is an ‘immunity from suit’ that
`‘is effectively lost if a case is erroneously permitted to go to trial.’” Mot. 5
`(citing Burlington Northern & Santa Fe Ry. Co. v. Vaughn, 509 F.3d 1085,
`1090 (9th Cir. 2007)). Patent Owner argues that “a stay will preserve the
`status quo while this important issue is decided,” and that Patent Owner
`“would be irreparably harmed if its Preliminary Response Deadline is not
`extended.” Id. at 6–7. Patent Owner contends that Petitioner would not be
`prejudiced by any delay because Petitioner argued in favor of a stay in the
`district court case where the patents challenged in these proceedings are
`being asserted, and previously was “willing to enter into a mutual stay of the
`IPRs.” Id. at 8 (quoting Ex. 2023). Accordingly, Patent Owner asserts that
`“[g]ood cause is present here” to extend the deadlines for Patent Owner’s
`preliminary responses under 37 C.F.R. § 42.5(c)(2), and the Federal Circuit
`denial of Patent Owner’s motion to stay in Mylan is not controlling because
`
`3
`
`

`

`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`“the standard to stay a mandate and the standard to extend the deadline for a
`Patent Owner’s Preliminary Response are not the same.” Id. at 8–9.
`Petitioner opposes Patent Owner’s motion to stay. Opp. 5. Petitioner
`argues that Patent Owner’s assertion of sovereign immunity has been heard
`and rejected, and “[t]he status quo is that [Patent Owner’s] tribal sovereign
`immunity does not apply in an IPR.” Id. at 5–7. Accordingly, Petitioner
`argues that good cause to extend the preliminary response deadlines does not
`exist. Id. at 7. Petitioner further argues that Patent Owner presented the
`same arguments to the Federal Circuit to demonstrate good cause for a stay
`of the mandate in Mylan and the Federal Circuit denied Patent Owner’s
`motion. Id. at 7–8. Petitioner asserts that it would be harmed by a stay
`because Petitioner “is entitled to have its petitions considered in the ordinary
`course, just as any other IPR petitioner is.” Id. at 9. Petitioner further
`asserts that it was only “willing to enter into a mutual stay of the IPRs”
`pending the Federal Circuit’s resolution of the rehearing petition in Mylan,
`and “[t]hat resolution has now occurred, and the mandate in Mylan has now
`issued.” Id. at 10. Accordingly, Petitioner argues that the Federal Circuit’s
`decision in Mylan is controlling because both staying the mandate and
`extending the deadlines for Patent Owner’s preliminary responses require a
`showing of good cause. Id. at 11. According to Petitioner, “[i]t would be
`extraordinary, after that decision, for the Board to come to a different
`conclusion based on the exact same facts and arguments.” Id.
`
`4
`
`

`

`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`
`After considering all of the parties’ arguments for and against
`extending the preliminary response deadlines, we agree with Petitioner. A
`request for an extension of time, including for a patent owner preliminary
`response, “must be supported by a showing of good cause.” 37 C.F.R. §
`42.5(c)(2). Patent Owner has not provided such a showing. As argued by
`Petitioner, the Federal Circuit in Mylan rejected Patent Owner’s argument
`that tribal sovereign immunity can be asserted in an inter partes review, and
`considered whether Patent Owner’s petition for a writ of certiorari to the
`Supreme Court on the issue “would present a substantial question” and
`whether Patent Owner demonstrated “good cause for a stay” of the mandate
`to the Board. See Ex. 2006, 7; Fed. R. App. P. 41(d)(1). The Federal Circuit
`determined that Patent Owner did not make the necessary showing. Ex.
`2022. The Federal Circuit’s determination that Patent Owner had not
`demonstrated a substantial question and good cause to stay its mandate in
`Mylan pending the Supreme Court’s decision on Patent Owner’s
`forthcoming petition instructs us to similarly find that Patent Owner has not
`demonstrated good cause to extend the deadlines for Patent Owner’s
`preliminary responses in these proceedings for the same reasons.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Motion to extend the deadlines for its
`preliminary responses in these proceedings is denied.
`
`
`5
`
`

`

`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601, IPR2018-01602, IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605, IPR2018-01606, IPR2018-01607 (Patent 7,620,800 B2)
`
`
`For PETITIONER:
`Joseph A. Micallef
`Jason Greenhut
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jgreenhut@sidley.com
`
`For PATENT OWNER:
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DEPUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`
`6
`
`