Case 2:15-cv-01455-WCB Document 510 Filed 10/10/17 Page 1 of 6 PageID #: 25541
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ALLERGAN, INC.,
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` Plaintiff,
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`v.
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`TEVA PHARMACEUTICALS USA, INC., et
`al.,
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` Defendants.
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` Civil Action No. 2:15-cv-1455 WCB LEAD
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`PLAINTIFF’S PRODUCTION OF DOCUMENTS IN RESPONSE TO COURT’S
`OCTOBER 6, 2017 ORDER
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`The Court’s October 6, 2017 Order (Dkt. 503) directed Allergan to provide the Court
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`with “copies of those documents pertinent to the terms of the assignment of the patents-in-suit to
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`the Tribe, including any information as to payments made or to be made either by the Tribe or by
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`Allergan in connection with the transaction.” (Dkt. 503 at 2.) In its filing dated October 9, 2017
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`(Dkt. 505; Dkt. 508), Allergan provided the Court with the assignment and license documents
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`themselves. (Dkt. 508 at Exhibits A-D). Allergan had previously produced those same materials
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`to Defendants on September 8, 2017 and provided them again to Defendants yesterday. Allergan
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`now provides the additional materials requested in the Court’s Order, which are attached hereto
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`and described below:
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`• Exhibit E – Patent assignment as recorded with the PTO (Reel 043532, Frame
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`0422), dated Sept. 8, 2017;
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`• Exhibit F – Allergan Press Release dated Sept. 8, 2017;
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`• Exhibit G – Saint Regis Mohawk Tribe Press Release dated Sept. 8, 2017;
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`• Exhibit H – Saint Regis Mohawk Tribe Press Release dated Sept. 14, 2017;
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`• Exhibit I – Saint Regis Mohawk Tribe Press Release dated Oct. 5, 2017;
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`• Exhibit J – Letter from Allergan to Senators Grassley and Feinstein, dated Oct. 3,
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`2017;
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`• Exhibit K – Redacted Allergan Bank Statement, dated Sept. 29, 2017, showing
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`wire transfer on Sept. 8, 2017 to the Trust Account of Shore Chan Depumpo LLP,
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`counsel for the Saint Regis Mohawk Tribe; and
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`• Exhibit L – Saint Regis Mohawk Tribe’s Motion to Dismiss for Lack of
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`Jurisdiction Based on Tribal Sovereign Immunity, filed in the pending IPR
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`proceedings on the patents-in-suit on September 22, 2017.
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`As provided in the Court’s October 10 Order (Dkt. 509), Allergan is also providing these
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`additional materials (Exhibits E-L) to Defendants at the same time. With the simultaneous
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`service of this response, Defendants have all of the same information that has been supplied to
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`the Court. There are no other agreements, side-agreements, or payments between Allergan and
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`the Tribe that are not reflected in the September 8, 2017 documents, i.e., those attached as
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`Exhibits A-D of Allergan’s October 9, 2017 filing with the Court.
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`In its October 10 Order, the Court also directed Allergan to identify what the “good and
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`valuable consideration” referred to in the assignment of the patents-in-suit to the Tribe
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`“consisted of and to provide any documentary evidence confirming the payment by the Tribe of
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`any such consideration for the assignment of the patents.” (Dkt. 509 at 2-3.) The promises and
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`commitments made by the Tribe in the simultaneously-executed assignment and license
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`agreements, and the subsequent performance of those promises, provides such consideration.
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`See United States v. Dreier, 952 F. Supp. 2d 582, 590 (S.D.N.Y. 2013) (“Black-letter contract
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`law, in turn, provides that ‘when a man acts in consideration of a conditional promise, if he gets
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`Case 2:15-cv-01455-WCB Document 510 Filed 10/10/17 Page 3 of 6 PageID #: 25543
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`the promise he gets all that he is entitled to by his act, and if, as events turn out, the condition is
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`not satisfied, and the promise calls for no performance, there is no failure of consideration.’”
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`(quoting 3 Williston on Contracts § 7:18 (4th ed.)); Kinley Corp. v. Ancira, 859 F. Supp. 652,
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`657 (W.D.N.Y. 1994) (“A benefit to a promisor or a detriment to a promisee is sufficient
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`consideration for a contract. … ‘Far from consideration needing to be coextensive or even
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`proportionate, the value or measurability of the thing forborne or promised is not crucial as long
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`as it is acceptable to the promisee.’”) (citation omitted); Bank of Bermuda, Ltd. v. Rosenbloom,
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`76 Civ. 1830 (GLG), 1976 U.S. Dist. LEXIS 11648, at *7-8 (S.D.N.Y. Jan. 1, 1976) (“It is
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`hornbook law that in the absence of fraud any benefit conferred upon a promisor in exchange for
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`his promise is sufficient to constitute a valid consideration and the court will not look to the
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`sufficiency or the insufficiency of such benefit conferred.”); see also Memorylink Corp. v.
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`Motorola Sols., Inc., Motorola Mobility, Inc., 773 F.3d 1266, 1271 (Fed. Cir. 2014) (“We agree
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`with Motorola that there is no genuine issue of material fact that consideration existed, because
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`the Assignment explicitly acknowledges consideration for the sale, assignment, and transfer of
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`rights relating to the wireless video technology.”).
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`By the terms of the assignment agreement, the Tribe promised that it “will not waive its
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`or any other Tribal Party’s sovereign immunity in relation to any inter partes review or any other
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`proceeding in the United States Patent and Trademark Office or any administrative proceeding
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`that may be filed for the purpose of invalidating or rendering unenforceable any Assigned
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`Patents.” (Dkt. 508, Ex. B (Patent Assignment Agreement) at § 12(i).) The Tribe has performed
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`that promise by asserting its sovereign immunity in the pending IPR proceedings on the patents-
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`in-suit and by filing its Motion to Dismiss for Lack of Jurisdiction Based on Tribal Sovereign
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`Immunity on September 22, 2017. (See Ex. L.)
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`Case 2:15-cv-01455-WCB Document 510 Filed 10/10/17 Page 4 of 6 PageID #: 25544
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`In addition, in the License Agreement by which the Tribe granted a limited field of use
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`exclusive license to Allergan, the Tribe agreed “that it will and shall assert its sovereign
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`immunity in any Contested PTO Proceeding, including in the IPR Proceedings.” (Dkt. 508, Ex.
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`C (License) at § 5.3; see also id. at § 7.2.12.) The Tribe also agreed that, with respect to
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`proceedings in this Court, it “(i) consents to join as a party and (ii) shall not assert its sovereign
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`immunity.” (Id. at § 5.2.2.) Further, the Tribe agreed to assist and cooperate with all
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`enforcement proceedings, prosecution, and contested Patent Office proceedings concerning the
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`patents-in-suit, and is doing so. (Id. at § 5.2.)
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`When and how the Tribe asserts its sovereign immunity is an issue of critical importance
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`to the Tribe. The Tribe’s promises, agreements, and actions with respect to asserting its
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`sovereign immunity in the IPR proceedings, as well as the Tribe’s participation in this
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`proceeding (where the Tribe agreed that it will not assert its sovereign immunity), serves as good
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`and valuable consideration under the law, including the law of the State of New York, which
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`governs the assignment and license agreements. See Dreier, 952 F. Supp. 2d at 590; Kinley, 859
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`F. Supp. at 657.
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`Dated: October 10, 2017
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`Respectfully submitted,
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`FISH & RICHARDSON P.C.
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`/s/ Susan E. Morrison
`By:
`Jonathan E. Singer (CA Bar No. 187908)
`LEAD ATTORNEY
`singer@fr.com
`Juanita R. Brooks (CA Bar No. 75934)
`brooks@fr.com
`12390 El Camino Real
`San Diego, CA 92130
`Telephone: 858-678-5070
`Facsimile: 858-678-5099
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`Case 2:15-cv-01455-WCB Document 510 Filed 10/10/17 Page 5 of 6 PageID #: 25545
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`Michael J. Kane (MN Bar No. 0247625)
`kane@fr.com
`Deanna J. Reichel (MN Bar No. 0326513)
`reichel@fr.com
`Joseph A. Herriges (MN Bar No. 390350)
`herriges@fr.com
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`Telephone: (612) 335-5070
`Facsimile: (612) 288-9696
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`Douglas E. McCann (DE Bar No. 3852)
`dmccann@fr.com
`Susan Morrison (DE Bar No. 4690)
`morrison@fr.com
`Robert M. Oakes (DE Bar No. 5217)
`oakes@fr.com
`222 Delaware Avenue, 17th Floor
`Wilmington, DE 19801
`Telephone: (302) 652-5070
`Facsimile: (302) 652-0607
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`J. Wesley Samples (OR Bar No. 121784)
`samples@fr.com
`901 15th Street, N.W., 7th Floor
`Washington, D.C. 20005
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`T. John Ward, Jr.
`State Bar No. 00794818
`E-mail: jw@wsfirm.com
`Wesley Hill
`State Bar No. 24032294
`E-mail: wh@wsfirm.com
`Claire Abernathy Henry
`State Bar No. 24053063
`E-mail: claire@wsfirm.com
`Andrea L. Fair
`State Bar No. 24078488
`E-mail: andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
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`Case 2:15-cv-01455-WCB Document 510 Filed 10/10/17 Page 6 of 6 PageID #: 25546
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`COUNSEL FOR PLAINTIFF
`ALLERGAN, INC.
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a) on October 10, 2017. As such, this document was served on
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`all counsel who are deemed to have consented to electronic service. Local Rule CV-5(a)(3)(A).
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`/s/ Susan E. Morrison
`Susan E. Morrison
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