The St. Regis Mohawk Tribe and Allergan filed a joint motion late last week before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB), arguing that its Notice of Appeal divested the Board of jurisdiction over the inter partes review proceedings related to the Tribe's patents obtained by assignment by Allergan, and thus that the Board can no longer proceed to Final Written Decision in any of these IPRs.  In the alternative, the Tribe argues that the Board should suspend the IPRs under 37 C.F.R. § 42.5(a) pending Federal Circuit review, because "the issues raised in [these proceedings] are important matters of first impression not contemplated by the statutory scheme."

On the divestiture argument, the Tribe's brief in support of its Motion first establishes its right to immediate appellate review under the collateral order doctrine, citing Osage Tribal Council ex rel. Osage Tribe of Indians v. U.S. Dep't of Labor, 187 F.3d 1174 (10th Cir. 1999); Wisconsin v. Ho-Chunk Nation, 512 F.3d 921, 928 (7th Cir. 2008); and In re Board of Regents of The Univ. of Tex. Sys., 435 F. App'x 945, 947-48 (Fed. Cir. 2011), all to the effect that denial of tribal sovereign immunity in an administrative agency proceeding is immediately appealable.  The Tribe cites the Supreme Court standard, that interlocutory review of an order is immediately reviewable if it "conclusively determine[s] the disputed question, resolve[s] an important issue completely separate from the merits of the action, and [is] effectively unreviewable on appeal from a final judgment," citing Justice Brennan's concurring opinion in Mitchell v. Forsyth, 472 U.S. 511, 543 (1985).  The Tribe is entitled to having immunity decided before final judgment, according to the Tribe's interpretation of Supreme Court precedent, because if properly immune, the Tribe should not be subjected to judgment at all.  It is "immunity from suit rather than a mere defense to liability[]" that is at issue, and "[the immunity] is effectively lost if a case is erroneously permitted to go to trial," according to the brief, citing Burlington N. & Santa Fe Ry Co. v. Vaughn, 509 F.3d 1085, 1090 (9th Cir. 2007) (emphasis in original).

The brief counters Petitioners' position that, inter alia, precedent related to immunity is inapposite because an IPR is not a trial but rather a specialized administrative agency proceeding by contending that an IPR is an "adjudicatory process" and the Tribe is asserting absolute immunity from being subjected to it.  Also, sovereign immunity is a jurisdictional issue that can be raised at any time, according to the brief, and the Tribe asserts that it raised it "at its first opportunity to do so - the day it acquired the patents."

As a consequence, the Tribe argues that its appeal divests the Board from jurisdiction over the IPR unless and until the Federal Circuit decides the appeal, citing Forsyth and Apostol v. Gallio, 870 F.2d 1335, 1338 (7th Cir. 1989), to the effect that "[t]he justification for the interlocutory appeal is that the trial destroys rights created by the immunity."  The brief also cites precedent from several Circuit Courts of Appeal as well as the Supreme Court that a notice of appeal divests a district court of jurisdiction.  Closer to home, the brief cites Federal Circuit (In re Graves, 69 F.3d 1147, 1149 (Fed. Cir. 1995)) and Board (Smart Microwave Sensor GmbH, IPR2016-00488, 2017 WL 3669083, at *1 (Aug. 24, 2017)) cases on this point ("The general rule is that the Board is divested of jurisdiction when either party files a notice of appeal to the Federal Circuit.").  The brief also sets forth the equitable basis for its position:  "If this Board went forward despite the appeal, the Tribe will be forced to choose between appearing before the Board, thereby losing its immunity, or risk losing its substantial property rights in absentia."  Hardly seems fair.  And the argument that the Tribe's interests can be adequately represented by Allergan begs the question, because whether or not that is the case is "'inextricably tied' to the question of immunity" that is the subject of the Tribe's appeal to the Federal Circuit.

The brief then ups the ante, by contending that the Board is without authority to ignore these procedural requirements or to have determined that Allergan could adequately represent the Tribe's interests in the IPR:

The Tribe will further argue that PTAB has no authority to create equitable or common law rules to facilitate the exercise of its Congressional mandate through its written decisions and orders in IPRs; only the Director has rulemaking authority under the AIA. 35 U.S.C. § 316(a); Am. Library Ass'n v. FCC, 406 F.3d 689, 698 (D.C. Cir. 2005) (noting agencies have no constitutional or common law authority, only authority granted by Congress).  PTAB has no implied authority to create ad hoc rules and new forms of PTAB standing to facilitate what it perceives to be its mission.  The Supreme Court has held "[r]egardless of how serious the problem an administrative agency seeks to address, [an agency] may not exercise its authority in a manner that is inconsistent with the administrative structure that Congress enacted into law."  Food & Drug Admin. v. Brown & Williamson Tobacco Corp., 529 U.S. 120, 125 (2000) (internal quotation omitted).  Doing so "would deal a severe blow to the Constitution's separation of powers."  Utility Air Regulatory Group v. E.P.A., 134 S. Ct. 2427, 2446 (2014).  Thus, on appeal, the Tribe will argue that the Board erred when it deemed Allergan the "effective owner" in order to avoid the Tribe's immunity as an impediment to Board jurisdiction.

In the only portion of the brief resembling a carrot or peace offering, the Tribe argues in the alternative that there is a mechanism for the Board to suspend proceedings in anticipation of the Federal Circuit's ultimate ruling on the tribal sovereign immunity question.  Under 37 C.F.R. § 42.5(a), the Board is empowered to "determine proper course of conduct in a proceeding for any situation not specifically covered" and to "set times by order."  Sovereign immunity is just such an issue that is "not specifically covered" or anticipated by the statute, and thus the Tribe argues in its brief that it is entitled to the "extraordinary relief" contemplated by Rule 42.1(a).  In addition, the brief reminds the Board that the statute already permits the time limit for a Final Written Decision to be extended by six months and (as here) in cases of joinder, citing 35 U.S.C. § 316(a)(11).  The brief mentions that failure to adhere to the statutory time limit is without penalty, and then recites three "distinct and important issues" raised in this case that justify resorting to the extension of time provisions of the statute:

• Tribal immunity from suit before the PTAB;
• The "schism" between the Board's decision regarding tribal immunity and State sovereign immunity in Ericsson Inc., et al v. Regents of the Univ. of Minn., IPR2017-01186, Paper 14 at 4 (Dec. 19, 2017); and
• The panel split over jurisdiction as applied to the tribe in this case and to state actors (universities) in Covidien LP v. Univ. of Fla. Research Found. Inc., IPR2016-01274, Paper 21 at 19 (Jan. 25 2017); Neochord, Inc. v. Univ. of Md. et al, Case IPR2016-00208, Paper 28 at 6-7 (May 23, 2017); Reactive Surfaces Ltd, LLP v. Toyota Motor Corp., Case IPR2016-01914, Paper 36 at 7-8 (July 13, 2017); Minnesota Order at 4-6.

The brief ends with a warning:  "If necessary, the Tribe and Allergan intend to seek emergency relief from the Federal Circuit no later than March 16, 2018."

In addition to the legal issues addressed in the Tribe's brief, another question arises:  by filing this motion the Tribe (or at least their counsel) is playing with fire?  Recall that after filing a motion for discovery regarding, inter alia, whether the PTAB would "stack the panel" by adding members to "ensure consistency with Office policies" (see "Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances"), the PTAB in a sharply-worded Order precluded the tribe or their counsel from filing any additional papers in the IPR without express authorization from the Board (see "The PTAB Strikes Back -- Issues Order Prohibiting St. Regis Mohawk Tribe from Filing Any Additional Papers in IPR").  That Order also included the following warning:

As a final note, we caution counsel for the Tribe that failure to comply with an applicable rule or order, abuse of discovery, and abuse of process are all grounds for sanctions.  37 C.F.R. § 42.12(a)(1), (5), (6).  We strongly advise counsel for the Tribe to review our rules and caution that any further actions that demonstrate a disregard for our process will not be tolerated.  See 37 C.F.R. § 42.12(b).

This prohibition does not apply to the Notice of Appeal, of course, filed at the end of last month (see "St. Regis Mohawk Tribe and Allergan Appeal Denial of Motion to Dismiss on Sovereign Immunity Grounds").  But this Motion once again contains a flavor of mistrust, that the Board will attempt to forestall the Tribe's appeal by mooting it and issuing a Final Written Decision before the Federal Circuit can decide the issue.  Perhaps provoking the kind of response from the Board that the Tribe did with its earlier discovery motion is intentional, the aim being to use any similar response to support a motion to the Federal Circuit for a writ precluding the Board from acting peremptorily.  It is clear that the Tribe and its counsel are willing to use the kind of zealous tactics common in district court litigation against the Board, and that the Board is not used to and does not appreciate being treated in this fashion.  But the stakes here, for both Allergan and the Tribe (and all tribes; see "Amicus Briefs Filed in Mohawk Tribe's Motion to Dismiss IPRs") are apparently sufficiently high to justify ruffling a few Administrative Patent Law judge's feathers in the process and the Tribe and its counsel show no reluctance to ruffle.