By Kevin E. Noonan --
Not unexpectedly, on Friday, the Saint Regis Mohawk Tribe (SRMT) filed a motion before the Patent Trial and Appeal Board (PTAB) to have inter partes review Nos. IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131, and IPR2016-01132, instituted against U.S. Patent Nos. 8,685,930, 8,629,111, 8,642,556, 8,633,162, 8,648,048, and 9,248,191 respectively, dismissed based on the tribe's sovereign immunity upon Allergan's assignment of the patents to them (see "Allergan Avails Itself of Sovereign Immunity").
The SRMT's assertion of its sovereign immunity is based, according to the brief, on the principle that only Congress can abrogate the Tribe's immunity as a sovereign government (and then only explicitly) or that the immunity can be waived by the Tribe, which the brief affirmatively states is has not done and will not do. Citing recent PTAB precedent related to the principle as it applies to state universities (Covidien LP v. Univ. of Fla. Research Found. Inc.; Neochord, Inc. v. Univ. of Md. et al.; and Reactive Surfaces Ltd, LLP v. Toyota Motor Corp.), the Tribe asserts that it does not submit to the Board's authority or jurisdiction (except insofar as is necessary to appear to defend its motion) and that the IPRs should be dismissed.
The brief (perhaps wisely but certainly strategically) sets forth this tribe's (like all Native American tribes') need to find ways to develop their economy and the difficulties tribes have had in doing so. Paradoxically, these difficulties stem in part to the restricted sovereignty Native American tribes have, insofar as they cannot levy property nor income taxes and yet are responsible for providing essential government functions such as education, policing, infrastructure, housing services, social services, and health care. The history of tribes' attempts to develop their economies over the past thirty years have most famously involved casinos and other venues for gambling in jurisdictions where such practices are otherwise banned. The brief notes that efforts to remedy tribes' economic woes extends to Federal government policy, putting the government's imprimatur generically if not specifically to this particular effort at economic development (citing the Indian Self-Determination and Education Assistance Act, 25 U.S.C. § 5302(b) and the Indian Financing Act, 25 U.S.C. § 1451). Similar support for Indian sovereignty is cited from the Executive branch (Executive Order 13647) and the judiciary (Justice Sotomayor's concurring opinion in Michigan v. Bay Mills Indian Community, 134 S. Ct. 2024, 2043–44 (2014) (Sotomayor, J., concurring)).
In view of these economic realities, the brief puts its acquisition of the Allergan patents in context, as a way to generate much-needed revenue for the tribe's citizens. Not merely a one-off, the brief asserts that this agreement is the result of efforts by the Tribe's Economic Development Department and the Office of Technology, Research and Patents. The Office intends to "strengthen the Tribal economy by encouraging the development of emerging science and technology initiatives and projects, and promoting the modernization of Tribal and other businesses" to "create revenue, jobs, and new economic development opportunities for the Tribe and its members."
Turning to its legal arguments, the brief asserts the Tribe's inherent sovereign immunity from suit as recognized for almost two centuries. Worcester v. State of Ga., 31 U.S. 515, 519 (1832). This common law immunity has been consistently reaffirmed by the Supreme Court, according to the brief, citing Kiowa Tribe of Okla. v. Mfg. Techs. Inc., 523 U.S. 751, 754 (1998); Okla. Tax Comm'n v. Citizen Band Potawatomi Indian Tribe of Okla., 498 U.S. 505, 510 (1991); Santa Clara Pueblo v. Martinez, 436 U.S. 49, 58 (1978); Puyallup Tribe, Inc. v. Dep't of Game, 433 U.S. 165, 172-73 (1977); and U.S. v. U.S. Fid. & Guar. Co., 309 U.S. 506, 512 (1940). In somewhat of an understatement, this long line of consistent precedent shows that the Tribe's sovereign immunity is "firmly established."
One exception to the Tribe's sovereign immunity (and a way that it differs from that immunity enjoyed by the States) is when Congress has expressly (not impliedly) abrogated it. Santa Clara Pueblo v. Martinez and Ransom v. St. Regis Mohawk Educ. and Cmty. Fund, Inc., 86 N.Y.2d 553, 560 (1995). The other exception is when a Tribe waives the immunity, which also must be "unequivocally expressed," C & L Enters. Inc. v. Citizen Band Potawatomi Tribe of Okla., 532 U.S. 411, 418 (2001), and cannot stem from a Tribe's actions (an important consideration here, where this should be an expected line of argument by Petitioners). Florida v. Seminole Tribe of Florida, 181 F.3d 1237, 1243 (11th Cir. 1999). Indeed, Demontiney v. U.S. ex rel. Dept. of Interior, Bureau of Indian Affairs, 255 F.3d 801, 811 (9th Cir. 2001), supports the existence of a presumption against any such waiver unless the presumption is expressly rebutted. Moreover, a party challenging the Tribe's sovereign immunity bears the burden of establishing waiver or abrogation of the immunity.
The brief then sets forth the lack of either abrogation or waiver in this case. As for abrogation, it is undisputed that nothing in the Patent Act abrogates Tribal sovereign immunity and that Congress has tried (and failed) to abrogate State sovereign immunity (e.g., in Florida Prepaid Postsecondary Education Expense Bd. v. College Savings Bank, 527 U.S. 627, 635-36 (1999). Analogous circumstances regarding gaming support the proposition that the Tribe's participation in the patent system (by accepting assignment of the Allergan patents) does not act to abrogate the Tribe's sovereign immunity. Florida v. Seminole Tribe of Florida. Not only has the Tribe not waived its sovereign immunity but the brief affirmatively states that it will not do so, and the brief characterizes as "black letter law" that waiver cannot be implied. And the brief cautions the PTAB that "waiver of tribal sovereign immunity cannot be premised on policy concerns, fairness, or the unique circumstances of a case. No court has ever found a waiver of tribal sovereign immunity based on equitable or policy concerns and it would be unprecedented for the Board to do so," citing Ute Distrib. Corp. v. Ute Indian Tribe, 149 F.3d 1260, 1267 (10th Cir. 1998).
While the legal arguments and precedent cited in the brief relate in large part to lawsuits, the brief also cites Supreme Court precedent that sovereign immunity extends to adjudicatory proceedings of all kinds, including administrative agency matters. Fed. Mar. Comm'n v. S.C. State Ports Auth., 535 U.S. 743, 754–756 (2002). The Board has applied this reasoning in the Covidien, Neochord, and Reactive Surfaces cases, and the brief argues their position is supported (albeit not directly addressed) by the Federal Circuit, for example, in SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016); In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016); and Vas-Cath, Inc. v. Curators of Univ. of Missouri, 473 F.3d 1376, 1382 (Fed. Cir. 2007). Extension of Tribe's sovereign immunity to administrative proceedings has also been affirmed in other situations. See, In the Matter of Jamal Kanj v. Viejas Band of Kumeyaay Indians, 2007 WL 1266963, *1 (DOL Adm. Rev. Bd. Apr. 27, 2007); Great Plains Lending, LLC v. Conn. Dep't of Banking, No. HHBCV156028096S, 2015 WL 9310700, at *4 (Conn. Super. Ct. Nov. 23, 2015); In the Matter of Tammy Stroud v. Mohegan Tribal Gaming Authority, 2014 WL 6850018, at *2-3 (DOL Admin Rev. Bd. Nov. 26, 2014); lhameed v. Grand Traverse Resort & Casino, 10 OCAHO 1126 (DOJ Exec Office for Hearing Review Sept. 25, 2008); and In the Matter of Private Fuel Storage, 56 N.R.C. 147, 159 (Oct. 1, 2002).
The patents having been assigned, and sovereign immunity established, the brief then notes that the IPRs cannot proceed without the Tribe as an indispensible party under Fed. R. Civ. Pro. 19 and otherwise. Allergan cannot substitute for the Tribe because their interests are not identical (A123 Sys. Inc. v. Hydro-Quebec, 626 F.3d 1213, 1217 (Fed. Cir. 2010)) as the Board found in the Reactive Systems case. Supporting their position, the Tribe argues that it has transferred less than "substantially all" of their patent rights, specifically being limited in a field-of-use license for "all FDA-approved uses in the U.S." and retains the right to sue third parties, either outside the scope of Allergan's license or if Allergan declined to file suit. The Tribe controls prosecution and maintenance of the patents should Allergan decline to do so, and Allergan cannot assign its rights without the Tribe's consent. Finally, in addition to these considerations, the brief notes that a sovereign's rights are granted "heightened protections" under Klamath Tribe Claims Comm. v. United States, 106 Fed. Cl. 87, 95 (2012), aff'd sub nom. 541 F. App'x 974 (Fed. Cir. 2013), and that Allergan cannot adequately protect the Tribe's interests in favor of it members and citizens.
While the Federal Rules of Civil Procedure do not apply to Board proceedings, the "four factors" set forth in Rule 19(b)"have served as a touchstone" for determining whether a case can go forward without a consenting sovereign. These four factors are:
(1) the extent to which a judgment rendered in the person's absence might prejudice that person or the existing parties;
(2) the extent to which any prejudice can be lessened or avoided by protective provisions in the judgment, the shaping of relief, or other measures;
(3) whether a judgment rendered in the person's absence will be adequate; and
(4) whether the plaintiff will have an adequate remedy if the action is dismissed for non-joinder.
As a threshold matter, with regard to sovereign immunity per se, the Tribe's interest in its immunity must be given "significant, if not dispositive, weight" according to the brief. Regarding the factors, there would be "significant prejudice" under the first factor if the IPRs continued, citing inter alia the possibility that Allergan might be willing to accept (or not challenge) a claim construction that supported patent rights necessary for its field of use but would not support aspects of the patents not licensed to Allergan. Having the Board invalidate the patents would be severely prejudicial in view of the financial consequences to Tribe revenue. As to mitigation the Board's decision is "binary" according to the brief; the patents are valid or they are not and there is no opportunity for mitigation under these circumstances. Petitioners have an adequate alternative remedy (the ANDA litigation recently concluded) and the brief notes that the aspects of patent invalidity considered in district court are much broader than the more limited grounds under §§ 102 and 103 available before the PTAB in an IPR.
Finally, the brief argues that only Petitioners and patentees can participate in an IPR and, after assigning its rights to the Tribe, Allergan is neither under the IPR statute.
While it is possible that the Board will deny the Tribe's motion it is unlikely, in view of the Board's position regarding sovereign immunity for state universities. Petitioners have the ability to file briefs in opposition, and the content of those briefs will be reviewed in a later post.
Just thinking out loud here: could it be argued that in this particular case, by acquiring the patents *AFTER* proceedings before PTAB had already been instituted, SRMT's sovereign immunity was already waived, i.e. since it stepped into a situation where proceedings had already commenced, it consented to waiver of its immunity?
Posted by: Atari Man | September 26, 2017 at 12:57 AM
This article is an astonishing piece of a deplorable lack of journalist curiosity regarding U.S./State citizens with “Indian ancestry/race” since The Indian Citizenship Act of 1924! That single Indian Citizenship Act of 1924, made null all previous common law-state and federal-including Presidential Executive Orders, Commerce Clause and Treaty Clause alleged Indian Treaties (if any U.S. Senate confirmed Indian treaties actually existed pre-1924 Citizenship) regarding U.S./State citizens with “Indian ancestry/race” so often touted by politicians and Indian advocates as being legitimate law.
And yet, politicians and MSM continue to perpetuate willful blindness to the Constitutional absurdity that Congress, Presidents/Governors, Initiatives and Referendums can make distinguishable the capacities, metes and boundaries of a select group of U.S./State citizens with “Indian ancestry/race” post citizenship. There is nothing in U.S.C. Title 25-INDIANS that speaks to the Constitution’s mandate that common law must be for “We, The People, By The People and For The People’s” health, welfare, safety and benefits for a specific geographic area in a State or the Union.
The United States Constitution makes for no provisions for:
1. Indian sovereign nations. None of the asserted tribes possess any of the attributes of being a ‘sovereign nation:’ a. No U.S. Constitution recognition b. No international recognition c. No fixed borders d. No military e. No currency f. No postal system g. No passports h. et al
2. Treaties with its own constituency
3. Indian reservations whereby a select group of U.S./State citizens with “Indian ancestry/race” reside exclusively and to the exclusion of all others, on land-with rare exception-that is owned by the People of the United States according to federal documents readily available on-line that notes rights of renters as ‘occupancy and use’ by these distinguished U.S./State citizens with “Indian ancestry/race” only with the land owned by the People of the United States.
4. Recognition of ‘Indian citizenship’ asserted by various tribes. There is no international/U.S. Constitution recognition of “Indian citizenship” as there is no ‘nation-state’ from which citizenship is derived.
A simple question for politicians and MSM to answer…a question so simple, it is hard:
“Where is the proclamation ratified by the voters of the United States that amends the Constitution to make the health, welfare, safety and benefits of a select group of U.S./State citizens distinguishable because of their “Indian ancestry/race?”
Posted by: Paul R. Jones | September 26, 2017 at 08:29 AM
The Indian Citizenship Act of 1924 made null all references to "Indians" in the Constitution. One's U.S./State Citizenship is now controlled entirely by the Constitution as noted in the following SCOTUS decisions and American Journal of Law clearly states an un-Constitutional act has no validity! Again, this question will debunk the Mohawks position:
"Where is the proclamation ratified by the voters of the United States that amends the Constitution to make the health, welfare, safety and benefits of a select group of U.S./State citizens distinguishable because of their “Indian ancestry/race?”
These SCOTUS decisions affirm that once U.S. Citizenship is achived, the Constitution is controlling and in order to make the Mohawk position true requires a Constitutional Amendment to make a select group of U.S./State citizens 'distinguishable' (SCOTUS in Osborn)from all other non-Indian U.S./State citizens. Stare Decisis forecloses citation of any court decision pre-1924 citizenship post 1924 citizenship as there are no more "Indians" within the original meaning of the Constitution including Indian court decisions pre-citizenship...only U.S./State citizens with "Indian ancestry/race" entitled to no more and no less than every other non-Indian U.S./State citizen!
1. United States Supreme Court AFROYIM v. RUSK, (1967) No. 456 Argued: February 20, 1967 Decided: May 29, 1967
“(a) Congress has no express power under the Constitution to strip a person of citizenship, and no such power can be sustained as an implied attribute of sovereignty, as was recognized by Congress before the passage of the Fourteenth Amendment; and a mature and well-considered dictum in Osborn v. Bank of the United States, 9 Wheat. 738, 827, is to the same effect. Pp. 257-261.
(b) The Fourteenth Amendment's provision that "All persons born or naturalized in the United States . . . are citizens of the United States . . ." completely controls the status of citizenship and prevents the cancellation of petitioner's citizenship. Pp. 262-268”
2. United States Supreme Court OSBORN v. BANK OF U.S., (1824) No. 80
Argued: Decided: March 19, 1824
“A naturalized citizen is indeed made a citizen under an act of Congress, but the act does not proceed to give, to regulate, or to prescribe his capacities. He becomes a member of the society, possessing all the rights of a native citizen, and standing, in the view of the constitution, on the footing of a native. The constitution does not authorize Congress to enlarge or abridge those rights. The simple power of the national Legislature, is to prescribe a uniform rule of naturalization, and the exercise of this power exhausts it, so far as respects the individual. The constitution then takes him up, and, among other rights, extends to him the capacity of suing in the Courts of the United States, precisely under the same circumstances under which a native might sue. He is [22 U.S. 738, 828] distinguishable in nothing from a native citizen, except so far as the constitution makes the distinction. The law makes none.”
3. "An unconstitutional act is not a law; it confers no rights; it imposes no duties; it affords no protection; it creates no office; it is in legal contemplation, as inoperative as though it had never been passed." [Norton v. Shelby County, 118 US 425 (1885)]
4. United States Supreme Court
ADARAND CONSTRUCTORS, INC. v. PENA, (1995) No. 93-1841 Argued: January 17, 1995 Decided: June 12, 1995:
JUSTICE SCALIA, concurring in part and concurring in the judgment.
I join the opinion of the Court, except Part III-C, and except insofar as it may be inconsistent with the following: In my view, government can never have a "compelling interest" in discriminating on the basis of race in order to "make up" for past racial discrimination in the opposite direction. See Richmond v. J. A. Croson Co., 488 U.S. 469, 520 (1989) (SCALIA, J., concurring in judgment). Individuals who have been wronged by unlawful racial discrimination should be made whole; but under our Constitution there can be no such thing as either a creditor or a debtor race. That concept is alien to the Constitution's focus upon the individual, see Amdt. 14, 1 ("[N]or shall any State . . . deny to any person" the equal protection of the laws) (emphasis added), and its rejection of dispositions based on race, see Amdt. 15, 1 (prohibiting abridgment of the right to vote "on account of race") or based on blood, see Art. III, 3 ("[N]o Attainder of Treason shall work Corruption of Blood"); Art. I, 9 ("No Title of Nobility shall be granted by the United States"). To pursue the concept of racial entitlement - even for the most admirable and benign of purposes - is to reinforce and preserve for future [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 2] mischief the way of thinking that produced race slavery, race privilege and race hatred. In the eyes of government, we are just one race here. It is American.
It is unlikely, if not impossible, that the challenged program would survive under this understanding of strict scrutiny, but I am content to leave that to be decided on remand. [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 1]
JUSTICE THOMAS, concurring in part and concurring in the judgment.
I agree with the majority's conclusion that strict scrutiny applies to all government classifications based on race. I write separately, however, to express my disagreement with the premise underlying JUSTICE STEVENS' and JUSTICE GINSBURG'S dissents: that there is a racial paternalism exception to the principle of equal protection. I believe that there is a "moral [and] constitutional equivalence," post, at 3, (STEVENS, J., dissenting), between laws designed to subjugate a race and those that distribute benefits on the basis of race in order to foster some current notion of equality. Government cannot make us equal; it can only recognize, respect, and protect us as equal before the law.
That these programs may have been motivated, in part, by good intentions cannot provide refuge from the principle that under our Constitution, the government may not make distinctions on the basis of race. As far as the Constitution is concerned, it is irrelevant whether a government's racial classifications are drawn by those who wish to oppress a race or by those who have a sincere desire to help those thought to be disadvantaged. There can be no doubt that the paternalism that [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 2] appears to lie at the heart of this program is at war with the principle of inherent equality that underlies and infuses our Constitution. See Declaration of Independence ("We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty, and the pursuit of Happiness").
These programs not only raise grave constitutional questions, they also undermine the moral basis of the equal protection principle. Purchased at the price of immeasurable human suffering, the equal protection principle reflects our Nation's understanding that such classifications ultimately have a destructive impact on the individual and our society. Unquestionably, "[i]nvidious [racial] discrimination is an engine of oppression," post, at 3. It is also true that "[r]emedial" racial preferences may reflect "a desire to foster equality in society," ibid. But there can be no doubt that racial paternalism and its unintended consequences can be as poisonous and pernicious as any other form of discrimination. So-called "benign" discrimination teaches many that because of chronic and apparently immutable handicaps, minorities cannot compete with them without their patronizing indulgence. Inevitably, such programs engender attitudes of superiority or, alternatively, provoke resentment among those who believe that they have been wronged by the government's use of race. These programs stamp minorities with a badge of inferiority and may cause them to develop dependencies or to adopt an attitude that they are "entitled" to preferences. Indeed, JUSTICE STEVENS once recognized the real harms stemming from seemingly "benign" discrimination. See Fullilove v. Klutznick, 448 U.S. 448, 545 (1980) (STEVENS, J., dissenting) (noting that "remedial" race legislation "is perceived by many as resting on an assumption that those who are granted this special [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 3] preference are less qualified in some respect that is identified purely by their race").
In my mind, government-sponsored racial discrimination based on benign prejudice is just as noxious as discrimination inspired by malicious prejudice. * In each instance, it is racial discrimination, plain and simple.
"The general rule is that an unconstitutional statute, though having the form and the name of law, is in reality no law, but is wholly void and ineffective for any purpose since unconstitutionality dates from the time of its enactment and not merely from the date of the decision so branding it; an unconstitutional law, in legal contemplation, is as inoperative as if it had never been passed ... An unconstitutional law is void. (16 Am. Jur. 2d, Sec. 178)"
Posted by: Paul R. Jones | September 26, 2017 at 08:48 AM
Question for someone more knowledgeable: Since the tribe has engaged/is engaging in commercial activity with respect to these patents by licensing them back to Allergan and profiting from that license, are the patents themselves not subject to challenge in the same way as the Australian CSIRO patents, where the fact that there was commercial activity relating to them prevented the assertion of foreign sovereign immunity?
Posted by: Derek Freyberg | September 26, 2017 at 10:23 AM
How can Allergan possibly remove itself from an existing IPR by a subsequent "assignment" when it obviously remains at least "privy" if not the "real party in interest" in the IPR since it's "assignment" has clearly has not given up all control of this patent or it could not be proceeding in the D.C.?
Posted by: Paul F. Morgan | September 26, 2017 at 12:36 PM
Dear Paul: no offense intended but keep in mind that what is interesting (we hope) to readers of this blog is the effect of the SRMT's assertion of sovereign immunity in a patent context. We don't have the knowledge or expertise to explicate much less debate the status of the Native American groups as they self-identify (e.g., SRMT).
But thanks for giving us your perspective.
Posted by: Kevin E Noonan | September 26, 2017 at 02:17 PM
Atari, Derek and Paul: No doubt your arguments will find their way into Petitioners' opposition brief(s). My thought is that the issue is one of status: if the SRMT can assert sovereign immunity then when they acquired the patents is not relevant. My very brief review of the cases cited in SRMT's brief suggest to me that this black-or-white view of the matter is the basis for much of the case law supporting recognition of the immunity by various Native American tribes.
Thanks for the comments
Posted by: Kevin E Noonan | September 26, 2017 at 02:25 PM
How far does the proposed Native American tribal immunity go?
Let's say (for argument's sake) that they are successful in inoculating themselves [bad historical pun, my apologies] from IPRs.
Does that same power then stop Article III challenges?
Or would a tribe choosing to enforce a patent in an Article III forum constitute appropriate waiver?
Posted by: skeptical | September 27, 2017 at 07:04 AM
Dear skeptical: for now, the tribe is taking the position that their immunity extends to IPRs and proceedings before the PTAB. I think that if they were to enforce the claims in an ANDA they would need to waive the immunity, because Allergan would be the ANDA plaintiff and the tribe would be an indispensable party.
Posted by: Kevin E Noonan | September 27, 2017 at 11:42 PM