Mohawk Tribe Tees Up Sovereign Immunity Battle [Updated]

A sovereign entity seeks additional discovery on a wide range of topics to address its “concerns about the impartiality” of the Administrative Patent Judges assigned to the case.

Sovereign entities, such as state universities and Native American tribes, are generally immune from the Board’s jurisdiction in an inter partes review (IPR).  To shield their patents from the threat of IPR, a number of patent owners have assigned patents to Native American Tribes.  However, as noted in an earlier post, an expanded panel of the Board recently held that a sovereign entity waives its immunity when it files an infringement suit on the patent in district court.

Sovereign immunity, and whether the defense was waived, is at issue in Mylan Pharma. Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127.  In a rather provocative move, the patent owner seeks oral argument regarding requests for additional discovery on the “identity and impartiality” of the judges assigned to its case.  The patent owner states that “[t]he USPTO, and its executive leadership, has a direct pecuniary interest in the outcome of this case because the Patent Owner’s motion could have a non-trivial impact on the fees collected by the PTAB for IPRs.”  The patent owner further contends that there is “a strong possibility of interested parties (both political and private) that may be seeking to influence the outcome of this case.”

Specifically, the patent owner seeks additional discovery on the following topics to “address [its] concerns about the impartiality of the merits panel:”

  • The makeup of the panel in the patent owner’s IPR proceedings,
  • The date each Administrative Patent Judge (APJ) was added to the panel in those proceedings,
  • How the makeup of the panel was decided,
  • Who determined the makeup of the panel,
  • When the decision of the makeup of the panel was made,
  • The disclosure of all ex parte communications concerning the case,
  • All communications members of the panel have had with Congress or members of the Executive Branch concerning sovereign immunity,
  • Communications the panel has had with anyone concerning sovereign immunity or the proceeding,
  • The assignment of particular APJs to other IPR proceedings involving the petitioners,
  • The dates particular APJs were added to the panels of other particular IPRs,
  • Ex parte communications with the panel in another particular IPR,
  • Communications particular APJs had concerning sovereign immunity,
  • Communications concerning decisions in particular IPRs,
  • Communications between particular APJs concerning sovereign immunity,
  • Policy determinations made by the USPTO concerning sovereign immunity,
  • The methodology used to determine merits-based compensation for each APJ of the panel,
  • The annual reviews of all APJs on the panel,
  • Materials related to projections or predictions for IPR fees in 2018, “including any potential for reductions in fee income if sovereign immunity were respected by the PTAB or upheld on appeal”

There is no statutory or regulatory deadline for ruling on the request for oral argument, but the patent owner seeks a hearing prior to any decision on its pending motion to dismiss on the basis of sovereign immunity.

UPDATE (Jan. 5, 2018): The Board has now denied the patent owner’s requests for additional discovery and oral argument, two days after they were filed.  The Board’s denial states that the request was improper for a number of reasons.

First, the Board noted that the filing of the request itself was improper.  As the deadline for requesting oral argument had already passed, the Board considered the request untimely.  The Board also found the request constituted an unauthorized submission because it was not filed pursuant to any rule or order from the Board.

Turning to the merits of the request, the Board rejected the requested discovery because discovery from the Board is not contemplated by the PTO’s rules.  Nevertheless, even if discovery from the Board was authorized under the rules, the Board concluded that the patent owner had failed to show that additional discovery was warranted, as the patent owner offered only “gross speculation” as to its concerns of alleged impartiality.

Noting that the patent owner has “ignored” the Board’s rules on multiple occasions, the decision also now prohibits the patent owner from filing any further papers in the proceeding without prior authorization.  According to the decision, this is to “assist the Tribe in complying with our rules.”

Finally, the Board cautioned the attorneys for the patent owner that continued failure to comply with the Board’s rules and orders could result in sanctions.  And, in a footnote, the Board noted that failure to abide by the PTO’s Rules of Professional Conduct could justify disciplinary proceedings.