`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`SAINT REGIS MOHAWK TRIBE,
`Patent Owner.
`_______________________
`IPR2018-01594 (Patent 6,434,687 B1)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01602 (Patent 7,225,324 B2)
`IPR2018-01603 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`IPR2018-01606 (Patent 7,620,800 B2)
`IPR2018-01607 (Patent 7,620,800 B2)
`__________________________
`
`PATENT OWNER SAINT REGIS MOHAWK TRIBE’S MOTION TO
`EXTEND ITS PRELIMINARY RESPONSE DEADLINE UNTIL AFTER
`THE RESOLUTION OF ITS PETITION FOR WRIT OF CERTIORARI
`CONCERNING WHETHER SOVEREIGN IMMUNITY MAY BE
`ASSERTED IN INTER PARTES REVIEWS
`
`
`i
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`SUMMARY OF THE MOTION ..................................................................... 1
`PROCEDURAL HISTORY ............................................................................ 2
`A. The Tribe’s forthcoming petition for writ of certiorari may be
`dispositive of these proceedings because it will determine whether
`sovereign immunity may be asserted in inter partes review. ..................... 2
`B. The District Court litigation has been stayed pending the Board’s
`decision whether to institute these proceedings. ........................................ 4
`III. ARGUMENTS AND AUTHORITY .............................................................. 5
`A. The Tribe possesses immunity from suit so this proceeding should
`be stayed until the Supreme Court has finally determined whether
`sovereign immunity may be asserted in inter partes reviews. ................... 5
`B. The Federal Circuit’s denial of the Tribe’s motion to stay the
`mandate in the Mylan case does not control here. ...................................... 8
`IV. CONCLUSION ................................................................................................ 9
`V.
`LIST OF EXHIBITS...................................................................................... 11
`
`
`
`
`
`
`
`ii
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`
`
`TABLE OF AUTHORITIES
`
`CASES:
`Burlington N. & Santa Fe Ry. Co. v. Vaughn,
`509 F.3d 1085 (9th Cir. 2007) ..................................................................................... 5
`
`
`Michigan v. Bay Mills Indian Cmty.,
`134 S. Ct. 2024, (2014) ............................................................................................ 1, 7
`
`
`Osage Tribal Council ex rel. Osage Tribe of Indians v. U.S. Dept. of Labor,
`187 F.3d 1174 (10th Cir. 1999) ............................................................................... 5, 6
`
`
`P.R. Aqueduct & Sewer Auth. v. Metcalf & Eddy, Inc.,
`506 U.S. 139 (1993) ..................................................................................................... 5
`
`
`S. Park Indep. Sch. Dist. v. United States,
`453 U.S. 1301 (1981) .................................................................................................. 9
`
`
`Saint Regis Mohawk Tribe v. Mylan Pharm. Inc.,
`896 F.3d 1322 (Fed. Cir. 2018) ............................................................................... 1, 8
`
`
`Tamiami Partners By & Through Tamiami Dev. Corp. v. Miccosukee Tribe of
`Indians of Fla.,
`63 F.3d 1030 (11th Cir. 1995) ..................................................................................... 6
`STATUTES:
`35 U.S.C. § 313 ................................................................................................................ 6
`
`35 U.S.C. § 314 ................................................................................................................ 6
`
`35 U.S.C. § 316 ................................................................................................................ 6
`RULES:
`Fed. R. App. P. 41 ............................................................................................................ 9
`REGULATIONS:
`37 C.F.R. § 42.5 ................................................................................................... 2, 6, 7, 9
`
`
`
`
`iii
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`
`
`I. SUMMARY OF THE MOTION
`Saint Regis Mohawk Tribe (“Tribe”) is a federally recognized, American Indian
`
`Tribe and owner of all the patents that are the subject of the proceedings listed in
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`the caption. The Tribe, as a sovereign government, is not amenable to suit unless it
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`expressly consents or Congress abrogates its immunity. See, e.g., Michigan v. Bay
`
`Mills Indian Cmty., 134 S. Ct. 2024, 2030, (2014). In Saint Regis Mohawk Tribe v.
`
`Mylan Pharm. Inc., 896 F.3d 1322 (Fed. Cir. 2018) (“Mylan”) the Federal Circuit
`
`held that sovereign immunity cannot be asserted in an IPR because an “IPR is
`
`more like an agency enforcement action than a civil suit brought by a private
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`party.” Id. at 1327.
`
`The Tribe believes that case was wrongly decided and intends to file a petition
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`for 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. On average, it takes about six weeks for the Supreme Court to act
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`once a petition has been filed.
`
`As authorized in the Board’s Order on the Conduct of Proceedings entered on
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`November 23, 2018, the Tribe respectfully requests that the Board extend the
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`Tribe’s Preliminary Response deadlines in all of these proceedings until March 1,
`
`2019 to see if the Supreme Court grants certiorari.
`
`The deadline for a Patent Owner’s preliminary response has no effect on any
`
`
`
`1
`
`
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`statutory pendency goal so the Board may grant an extension upon a showing of
`
`good cause. 37 C.F.R. § 42.5(c)(2). Good cause exists because the Tribe’s
`
`sovereign immunity is an immunity from suit rather than a mere defense to
`
`liability. So the Tribe would be irreparably harmed if the Board were to deny this
`
`motion because its immunity would be lost if these IPRs were to proceed. By
`
`contrast, Microsoft would not be harmed in any way because the co-pending
`
`District Court litigation was stayed pending the Board’s decisions on Microsoft’s
`
`10 IPR petitions.
`
`Accordingly, the Board should grant this motion and extend the Tribe’s
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`Preliminary Response deadline until March 1, 2019.
`
`II. PROCEDURAL HISTORY
`A. The Tribe’s forthcoming petition for writ of certiorari may be dispositive
`of these proceedings because it will determine whether sovereign immunity
`may be asserted in inter partes review.
`Last year, the Tribe moved to terminate IPR2016-01127 based on its Tribal
`
`Sovereign Immunity. EX. 2001. After copious briefing, the Board denied the
`
`Tribe’s motion and held that sovereign immunity does not apply to IPR
`
`proceedings. EX. 2002 at 11-18 (all EX pin citations refer to the EX pagination).
`
`The Tribe immediately appealed under the collateral order doctrine and sought
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`an emergency stay of the IPR proceeding from the Federal Circuit. EX. 2003; EX.
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`2004. The Federal Circuit granted the Tribe’s motion to stay and held that “the
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`
`
`2
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`
`
`appeals divested the Board of jurisdiction … and that exclusive jurisdiction to
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`resolve the threshold issue of whether these proceedings must be terminated vests
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`in this court.” EX. 2005 at 2.
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`On July 20, 2018, the Federal Circuit affirmed the Board’s decision and held
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`that “tribal sovereign immunity cannot be asserted in IPRs” because “IPR is more
`
`like an agency enforcement action than a civil suit brought by a private party.” EX.
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`2006 at 1, 7, 8, 11.
`
`The Tribe then filed a petition for rehearing en banc. EX. 2007. The States of
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`Indiana, Hawaii, Illinois, Massachusetts, Texas, Utah, and Virginia jointly filed an
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`Amicus Brief supporting the Tribe’s petition because they believe that sovereign
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`immunity should apply to IPRs. EX. 2010. The Tribe has also received amicus
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`support from the Regents of the University of Minnesota, STC.UNM, and William
`
`Eskridge, Jr. EX. 2009; EX. 2011.
`
`In October, the Federal Circuit issued a per curiam denial of the Tribe’s petition
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`for rehearing. EX. 2021. The Tribe then moved to stay the mandate pending the
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`filing and disposition of its petition for a writ of certiorari in the United States
`
`Supreme Court but this was also denied per curiam. EX. 2022.
`
`The Tribe will file a petition for writ of certiorari that asks the Supreme Court
`
`to decide whether sovereign immunity may be asserted in inter partes reviews
`
`
`
`3
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`
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`before the Patent Trial and Appeal Board.1 Under Supreme Court Rule 15, the
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`respondent has 30 days to file an opposition brief (which is optional). The Clerk
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`will distribute the petition to the Supreme Court for consideration either 14 days
`
`after an opposition brief is filed or immediately upon receiving an express waiver
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`to file a brief in opposition. On average, it takes about six weeks for the Supreme
`
`Court to act on petitions for writ of certiorari. EX. 2012 at 19. If taken up and
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`reversed by the Supreme Court this issue would be dispositive of these
`
`proceedings.
`
`B. The District Court litigation has been stayed pending the Board’s decision
`whether to institute these proceedings.
`The Tribe and SRC Labs, LLC filed a patent infringement suit against
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`Microsoft in the Eastern District of Virginia on October 18, 2017. The case was set
`
`for a final pre-trial conference on May 11, 2018 with a trial setting that summer.
`
`EX. 2008. Microsoft moved to transfer the case from Alexandria to Seattle based
`
`on convenience, which was granted.
`
`The Western District of Washington then entered a scheduling order setting the
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`claim construction hearing for December 20, 2018 and the Pretrial Conference on
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`October 21, 2019. EX. 2018 at 2. The parties simultaneously filed opening claim
`
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`1 The deadline for the Tribe to file its petition for a writ of certiorari is January 20,
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`2019 but it intends to file the petition in mid-December if possible.
`
`
`
`4
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`
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`construction briefs on November 5, 2018 and responsive claim construction briefs
`
`on November 20, 2018.
`
`Microsoft also filed a motion to stay the case pending the outcome of these
`
`IPRs and argued:
`
`Plaintiffs theorize that the patents are immune from
`challenge in IPR proceedings based on SRMT’s status as
`a sovereign tribe, such that Microsoft’s petitions cannot
`succeed. But the Federal Circuit has already rejected that
`theory, as applied to SRMT itself. Although the Federal
`Circuit may yet hear that issue en banc, or SRMT may
`pursue it further in the Supreme Court, that only counsels
`in favor of a stay at least until that threshold issue is
`resolved.
`EX. 2019 at 5 (emphasis added). That motion was granted and the case was stayed
`
`pending “the PTO’s decisions on Microsoft’s 10 IPR petitions.” EX. 2020 at 15-
`
`16.
`
`III. ARGUMENTS AND AUTHORITY
`A. The Tribe possesses immunity from suit so this proceeding should be
`stayed until the Supreme Court has finally determined whether sovereign
`immunity may be asserted in inter partes reviews.
`The Tribe’s 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.” Burlington N. & Santa Fe Ry. Co. v. Vaughn,
`
`509 F.3d 1085, 1090 (9th Cir. 2007). So sovereign immunity “is for the most part
`
`lost as litigation proceeds past motion practice.” P.R. Aqueduct & Sewer Auth. v.
`5
`
`
`
`
`
`Metcalf & Eddy, Inc., 506 U.S. 139, 145 (1993); see also Osage Tribal Council ex
`
`rel. Osage Tribe of Indians v. U.S. Dept. of Labor, 187 F.3d 1174, 1180 (10th Cir.
`
`1999) (“Were this case erroneously permitted to proceed further, the [tribal
`
`council’s] absolute entitlement to immunity from suit would still be effectively
`
`lost.”); Tamiami Partners By & Through Tamiami Dev. Corp. v. Miccosukee Tribe
`
`of Indians of Fla., 63 F.3d 1030, 1050 (11th Cir. 1995) (“Tribal sovereign
`
`immunity would be rendered meaningless if a suit against a tribe asserting its
`
`immunity were allowed to proceed to trial.”). Thus, a stay will preserve the status
`
`quo while this important issue is decided.
`
`The Board has the authority to extend the Patent Owner’s Preliminary Response
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`deadline. E.g., 37 C.F.R. § 42.5(a) (permitting the Board to “determine a proper
`
`course of conduct in a proceeding for any situation not specifically covered”). The
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`Board may modify by order any deadline that is set by rule so long as “any
`
`applicable statutory pendency goal [is taken] into account.” 37 C.F.R. § 42.5(c)(1).
`
`There are no applicable statutory pendency goals to account for before the
`
`institution of an inter partes review. See 35 U.S.C. § 314(b) (requiring
`
`determination of “whether to institute an inter partes review” within three months
`
`of either the filing of a patent owner’s preliminary response or expiration of the
`
`time for the patent owner to file preliminary response); 35 U.S.C. § 313 (setting no
`
`specific statutory time limit for the filing of Patent Owner’s preliminary response);
`
`
`
`6
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`
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`35 U.S.C. § 316(a)(11) (requiring implementing regulations to require final
`
`determinations in inter partes reviews generally within one year of institution). So
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`the deadline for a Patent Owner’s Preliminary Response may be extended upon a
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`showing of good cause. 37 C.F.R. § 42.5(c)(2).
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`Good cause is present here because the Tribe would be irreparably harmed if its
`
`Preliminary Response Deadline is not extended because, as noted above, sovereign
`
`immunity is immunity from suit, not a defense to liability. See Bay Mills, 134 S.
`
`Ct. at 2030 (2014). And if the Supreme Court grants certiorari and reverses the
`
`Federal Circuit, this issue would be dispositive of these proceedings.
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`In recognition of this, the Board has extended the Patent Owner Preliminary
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`Response deadline in every proceeding where sovereign immunity was raised. EX.
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`2013 (IPR2017-01186, Paper 13); EX. 2014 (IPR2017-00572, Paper 22); EX. 2015
`
`(IPR2017-01338, Paper 7); EX. 2017 (IPR2018-00286, Paper 6).
`
`In fact, the Board sua sponte suspended The Board of Regents of the University
`
`of Texas System’s (“Texas”) Preliminary Response deadline in IPR2018-00948
`
`until after the Federal Circuit issued its decision in Mylan. EX. 2016 at 2. And after
`
`the Federal Circuit’s opinion was issued in Mylan, the Board still authorized Texas
`
`to file a motion to dismiss based on its sovereign immunity and extended the
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`Preliminary Response deadline to “30 days after our decision on Patent Owner’s
`
`motion to dismiss.” Id. at 3.
`
`
`
`7
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`
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`On the other side of the ledger, the requested extension will not prejudice
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`Microsoft. Microsoft successfully argued to the District Court that the Tribe’s
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`petition for writ of certiorari “counsels in favor of a stay” and was previously
`
`“willing to enter into a mutual stay of the IPRs pending [the sovereign immunity
`
`appeal] if SRC and [Saint Regis Mohawk Tribe] are willing to stay all district court
`
`proceedings on the patents that are the subject of those IPR.” EX. 2019 at 5; EX.
`
`2023. And Microsoft could have already challenged the validity of all these patents
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`at trial in the Eastern District of Virginia but instead chose to transfer and stay the
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`case. Clearly this is not a time sensitive issue for Microsoft.
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`Therefore, the Tribe believes that good cause exists to extend its Preliminary
`
`Response Deadline until after the Supreme Court has acted on its petition for writ
`
`of certiorari that will determine if sovereign immunity applies to IPRs.
`
`B. The Federal Circuit’s denial of the Tribe’s motion to stay the mandate in
`the Mylan case does not control here.
`In Mylan, the Federal Circuit held that tribal sovereign immunity cannot be
`
`asserted in IPR. Saint Regis Mohawk Tribe v. Mylan Pharm. Inc., 896 F.3d 1322,
`
`1329 (Fed. Cir. 2018). The Federal Circuit then denied, without opinion, the
`
`Tribe’s motion to stay issuance of the Federal Circuit’s mandate pending the
`
`Tribe’s forthcoming petition for writ of certiorari. EX. 2022. But this denial does
`
`not control here because the standard to stay a mandate and the standard to extend
`
`the deadline for a Patent Owner’s Preliminary Response are not the same.
`8
`
`
`
`
`
`In Mylan, the Tribe sought a stay of the Federal Circuit’s mandate under
`
`Federal Rule of Appellate Procedure 41(d)(2)(A), which requires a showing “that
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`the certiorari petition would present a substantial question and that there is good
`
`cause for a stay.” This is a high bar that required the Tribe to show that “a
`
`reasonable probability that four members of the Court would consider the
`
`underlying issue sufficiently meritorious for the grant of certiorari or the notation
`
`of probable jurisdiction; there must be a significant possibility of reversal of the
`
`lower court's decision; and there must be a likelihood that irreparable harm will
`
`result if that decision is not stayed.” S. Park Indep. Sch. Dist. v. United States, 453
`
`U.S. 1301, 1303 (1981).
`
`By contrast, here the Tribe only needs to demonstrate good cause to extend the
`
`deadline for a patent owner’s preliminary response. See 37 C.F.R. § 42.5(c)(2).
`
`Accordingly, the Federal Circuit’s denial of the Tribe’s motion to stay its mandate
`
`does not dictate the outcome here.
`
`IV. CONCLUSION
`A stay is a practical and legal necessity. Sovereign immunity is a core part of
`
`the Tribe’s identity as a Nation. Absent a stay, the Tribe will suffer irreparable
`
`harm because sovereign immunity is an immunity from suit, not a defense to
`
`liability. Thus, the Board should extend the Patent Owner’s Preliminary Response
`
`deadline until March 1, 2019.
`
`
`
`9
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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
`
`Attorneys for Patent Owner
`Saint Regis Mohawk Tribe
`
`
`
`
`
`
`
`
`
`
`
`Date: November 30, 2018
`
`
`
`
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`
`
`
`
`10
`
`
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`V. LIST OF EXHIBITS
`Exhibit No. Descriptions
`2001
`Mylan Pharmas. Inc., et al v. Saint Regis Mohawk Tribe, et al,
`IPR2016-01127, Paper 78 (PTAB Sept. 22, 2017)
`Mylan Pharmas. Inc., et al v. Saint Regis Mohawk Tribe, et al,
`IPR2016-01127, Paper 129 (PTAB Feb. 23, 2018)
`Mylan Pharmas. Inc., et al v. Saint Regis Mohawk Tribe, et al,
`IPR2016-01127, Paper 133 (PTAB Feb. 28, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 10-1 (Fed. Cir. March 19, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 42 (Fed. Cir. March 28, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 136-1 (Fed. Cir. July 20, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 137 (Fed. Cir. Aug. 20, 2018)
`SRC Labs, LLC, et al v. Microsoft Corp., No. 1:17cv-01172-LO-
`JFA, Dkt. 27 (E.D. Va. Dec. 22, 2017)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 156 (Fed. Cir. Sept. 6, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 162 (Fed. Cir. Sept. 7, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 163 (Fed. Cir. Sept. 7, 2018)
`A Reporter’s Guide to Applications Pending Before The Supreme
`Court of the United States
`Ericsson Inc., et al v. Regents of the Univ. of Minn., IPR2017-
`01186, Paper 13 (PTAB Aug. 15, 2017)
`Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-
`00572, Paper 22, (PTAB Feb. 21, 2017)
`St. Jude Medical, LLC v. The Regents of the Univ. of California,
`IPR2017-01338, IPR2017-01339, Paper 7 (PTAB July 20, 2017)
`Baylor College of Medicine v. The Board of Regents of the Univ. of
`Texas Sys. et al, IPR2018-00948, IPR2018-00949, Paper 8 (PTAB
`Aug. 7, 2018)
`Apple, Inc. v. MEC Resources, Inc., IPR2018-00286, Paper 6
`(PTAB Jan. 30, 2018)
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`
`
`11
`
`
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`
`
`
`
`
`
`SRC Labs, LLC et al v. Microsoft Corp., No. 2:18-cv-00321-JLR,
`Dkt. 94 (W.D. WA May 22, 2018)
`SRC Labs, LLC et al v. Microsoft Corp., No. 2:18-cv-00321-JLR,
`Dkt. 117 (W.D. WA Oct. 11, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 136-1 (Fed. Cir. July 20, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 170 (Fed. Cir. Oct. 22, 2018)
`Saint Regis Mohawk Tribe et al v. Mylan Pharmas., Inc., et al, No.
`18-1638, Dkt. 174 (Fed. Cir. Nov. 13, 2018)
`Email from Scott Border to Christopher Evans re: stay of IPR
`proceeding pending Sovereign Immunity Appeal
`
`
`
`
`
`12
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`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies that
`
`on November 30, 2018, a complete copy of Motion by Patent Owner Saint Regis
`
`Mohawk Tribe For a Stay Pending the Resolution of Whether Sovereign Immunity
`
`May be Asserted in Inter Partes Reviews was filed electronically through the Patent
`
`Trial and Appeal Board’s PTABE2E System and provided, via electronic service, to
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`the Petitioner by serving the correspondence address of record as follows:
`
`
`Joseph A. Micallef
`jmicallef@sidley.com
`Scott M. Border
`sborder@sidley.com
`SIDLEY AUSTIN LLP
`1501 K Street N.W.
`Washington, DC 20005
`
`Jason P. Greenhut
`jgreenhut@sidley.com
`SIDLEY AUSTIN LLP
`1 South Dearborn
`Chicago, IL 60603
`
`
`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Phone: 214-593-9118
`
`
`
`
`
`
`
`
`
`Dated: November 30, 2018
`
`
`
`13
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`