By Kevin E. Noonan --
As previously reported, the St. Regis Mohawk Tribe filed a request for oral hearing that included a "request for discovery into the identity and impartiality of the merits panel assigned to this case." The paper was replete with justifications for its request and specific discovery it was seeking, all premised on its apprehension that the Patent Trial and Appeal Board (PTAB) might deprive the Tribe of due process by, inter alia, empaneling an expanded panel of Board members (including specifically Chief Administrative Patent Judge David Ruschke) that would not be impartial in deciding whether the Tribe's sovereign immunity precluded the Board from deciding on the validity of the patents (U.S. Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930; and 9,248,191) involved in the consolidated IPRs.
Last week, the PTAB responded, in a sharply worded per curiam decision denying the Tribe's motion and an Order precluding the Tribe from filing any additional papers in this IPR. The Board's displeasure was evident from the first sentence of the Order, wherein the Board noted that the Tribe's January 2nd filing was "without authorization" and was based only "purportedly" on 37 C.F.R. § 42.70(a). The Board characterized this request as being improper and then proceeded to list its reasons why.
First, the request for oral argument is improper in the Board's view because it was made at the same time as the request for discovery, which had not been made prior to the request for oral argument and thus was not an issue that could be raised under Rule 70(a) by that rule's plain language. Second, the Board's Scheduling Order in these consolidated IPRs mandated that any request for Oral Argument be made by DUE DATE 4, which in this case was July 20, 2017 (and at that time, both Mylan and the patent owner at that time, Allergan, requested oral argument, which requests were granted on August 1, 2017). Thus, in the Board's view, the request was untimely (although, in addition to the Tribe having been added as the real party in interest after that date, the substantive basis for the request was unknown at DUE DATE 4). Third, under these circumstances Board rules required the Tribe to have sought authorization to file its discovery request, 37 C.F.R. § 42.70(a), (b), which it did not do. And it is clear the Board believes this action was willful: the Order states that "counsel for the Tribe ignored our rules (once again) and preemptively filed its paper." In verbiage dripping with institutional sarcasm, the Board offered to "assist the Tribe in complying with our rules" by mandating that "the Tribe shall not file any further papers in these proceedings without prior authorization from the Board" (emphasis in Order).
After noting that the Board had the power to expunge the (in its view) improvident request from the record, the Order states that it shall decline to do so in order to "ensure the record is clear regarding why we deny not only the Request for Oral Hearing, but the Tribe's request for authorization to file a motion for additional discovery, as well." And that reasoning is that the request "far exceeds the scope of permissible discovery in these proceedings." The first ground for this decision is that the rule cited in the Tribe's request, 37 C.F.R. § 42.51, relates to discovery between the parties, not from the Board itself. As such, the Board can take shelter from the fact that its rules were not promulgated to permit a party from interrogating the Board as the Tribe has attempted to do, "and the Tribe has not pointed us to any legal authority that suggests otherwise." That would be enough, according to the PTAB, to justify denial of the Tribe's discovery request.
In addition, the Board asserted that the Tribe has proffered nothing more than "gross speculation" regarding its allegations of impropriety by the Board, either in its alleged lack of impartiality or susceptibility to political pressure, here citing its decision with regard to discovery from a party in Garmin Int'l, Inc. v. Cuozzo Speed Techs. LLC, Case IPR2012-00001, Paper No. 26, slip op. at 6 (PTAB Mar. 5, 2013). This portion of the Order is backed in a footnote with a citation to the USPTO Rules of Professional conduct with regard to allegations regarding the qualifications or integrity of a judge (37 C.F.R. § 11.802(a), albeit these are qualified as being allegations a practitioner knows to be false or with reckless disregard as to its truth or falsity'), and 37 C.F.R. §§ 11.804, 11.901 (related to penalties for violating these Rules).
After noting that the makeup of the panel has always been "listed on the cover page of our decisions" and reminding the Tribe's counsel that the Board has "considered this issue twice now," the Order concludes with a stark 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).