Indian Tribe files Motion to Dismiss RESTASIS Patent Challenge based on Sovereign Immunity

By Gene Quinn
September 22, 2017

“The Tribe will not assert sovereign immunity in the Eastern District of Texas case,” the Motion to Dismiss reads. ” So dismissing this case does not deprive the Petitioners of an adequate remedy; it only deprives them of multiple bites at the same apple.”

Earlier today the Saint Regis Mohawk Tribe filed a Motion to Dismiss in six[1] separate inter partes review (IPR) proceedings relating to the Allergan drug RESTASIS®. The RESTASIS® patents[2] were recently all assigned by Allergan to the Tribe, with the Tribe granting back to Allergan an exclusive license. The purpose of this transaction was so that the Tribe could assert sovereign immunity and defeat the jurisdiction of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, which has been a much criticized tribunal that heavily favors challengers and significantly disadvantages patent owners (see here, here, here and here, for example).

The Motion to Dismiss filed today was, in fact, based on the Tribes’ assertion of sovereign immunity. If the PTAB follows the well-established law — always a big “if” when the PTAB is involved — these IPR proceedings will be dismissed.

“The Tribe is a sovereign government that cannot be sued unless Congress unequivocally abrogates its immunity or the Tribe expressly waives it,” wrote attorneys for the Tribe in the Motion to Dismiss. “Neither of these exceptions apply here. As Patent Owner, the Tribe is an indispensable party to this proceeding whose interests cannot be protected in its absence.”

Later in the Motion to Dismiss the sovereign immunity argument is put forth in greater detail:

As a federally recognized, sovereign Indian Tribe, the Tribe has inherent sovereign immunity. EX. 2091 at 4. The Federal Government and the U.S. Supreme Court have long recognized that Indian tribes are “distinct, independent political communities.” Worcester v. State of Ga., 31 U.S. 515, 519 (1832).

As such, the Tribe “possess[es] the same common-law immunity from suit traditionally enjoyed by sovereign powers.” Bay Mills, 134 S.Ct. at 2030. The Supreme Court has repeatedly reaffirmed the doctrine of Indian tribal sovereign immunity. 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) (“Potawatomi I”); 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); U.S. v. U.S. Fid. & Guar. Co., 309 U.S. 506, 512 (1940). The Tribe’s status as a sovereign that is immune from suit is firmly established.

The Motion to Dismiss goes on to point out that Congress has not unequivocally abrogated the Tribe’s immunity from suit by statute (as required by the Supreme Court), and that neither has the Tribe has unequivocally waived its immunity. Therefore, the argument is convincingly concluded, “this action must be dismissed.”

The identical filing was made in each of the six IPR proceedings.

As the Motion to Dismiss points out, and as the attorneys involved in the Saint Regis transaction have told us on the record in a previous interview, the petitioners can have an opportunity to challenge these RESTASIS® patents in federal district court. “The Tribe will not assert sovereign immunity in the Eastern District of Texas case,” the Motion to Dismiss reads. ” So dismissing this case does not deprive the Petitioners of an adequate remedy; it only deprives them of multiple bites at the same apple.”

________________

[1] IPR2016-01127 (8,685,930 B2); IPR2016-01128 (8,629,111 B2); IPR2016-01129 (8,642,556 B2); IPR2016-01130 (8,633,162 B2); IPR2016-01131 (8,648,048 B2); and IPR2016-01132 (9,248,191 B2).

[2] U.S. Patent Nos. 8,685,930, 8,629,111, 8,642,556, 8,633,162, 8,648,048, and 9,248,191.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments. Join the discussion.

  1. Edward Heller September 22, 2017 5:30 pm

    Gotta love it. https://www.youtube.com/watch?v=9tjdswqGGVg

  2. Paul R. Jones September 22, 2017 8:20 pm

    The single question to present in court against this “Indian tribes” is this:
    “Where is the proclamation ratified by the voters of the United States that amends the United States Constitution to make the health, welfare, safety and benefits of a select group of U.S./State citizens distinguishable.

  3. Paul Morinville September 23, 2017 2:32 am

    https://www.youtube.com/watch?v=21ixwIaN7qw

  4. Pro Se September 23, 2017 8:51 am

    @1 and 2 – Both of you almost made me laugh spit out my morning latte.

  5. Paul Morinville September 23, 2017 2:43 pm

    Paul @2. Pretty sure they call it a treaty. The treaty was with a sovereign power and nothing in the treaty conceded sovereignty.

  6. Anon September 23, 2017 3:48 pm

    Mr. Jones is attempting to backdoor into the conversation a mere act of Congress as possessing some type of Constitutional Amendment power.

    His diatribe has been played out over on that “other blog.”

    A key factor that Mr. Jones has not accounted for (yet) is the word “abridged,” as he attempts to abridge the rights of sovereignty of Indian tribes by putting forth the idea that when the members of Indian tribes were given full US citizenship that they lost all of the sovereignty as members of an Indian tribe.

    It’s a pretty neat trick if you can do it: make a mere act of Congress override Constitutional considerations.

  7. Paul R. Jones September 23, 2017 5:56 pm

    Paul Morinville September 23, 2017 2:43 pm: You, too, like Anon. lack any U.S. Constitution knowledge about the Treaty Clause post the Indian Citizenship Act of 1924…just an opinion you cannot support in the United States Constitution. Read very carefully the excerpted text below on treaties:
    http://lexrex.com/enlightened/AmericanIdeal/aspects/limited_gov_treaty.htm
    The object of treaties is the regulation of intercourse with foreign nations, and is external.”
    An especially interesting piece of evidence supporting the conclusion that the Treaty Clause was intended and understood by the Framing and Ratifying Conventions not to authorize the President and Senate, by a treaty, either (a) to override the Constitution, in whole or in part, or (b) to make domestic law (as distinguished from governance of relations with foreign governments),
    [Section 52.] “Treaties are legislative acts. A treaty is a law of the land. It differs from other laws only as it must have the consent of a foreign nation, being but a contract with respect to that nation . . . 2. By the general power to make treaties, the Constitution must have intended to comprehend only those objects which are usually regulated by treaty, and cannot be otherwise regulated. 3. It must have meant to except out of these the rights reserved to the States; for surely the President and Senate cannot do by treaty what the whole Government is interdicted from doing in any way.”

    Another fallacious statement is that a treaty “can override the Constitution;” which defies historical truth, as we have seen. A related and most preposterous allegation is that a treaty “can cut across the rights given the people by the constitutional Bill of Rights”–than which nothing could be further from the truth, partly for two reasons: the Constitution does not authorize any such treaty and, secondly, the people are, of course, given their rights by God and not by themselves through their own creation: the Constitution (including its Bill of Rights, or Bill of Prohibitions, Amendments). The quoted statement is farcical.

  8. Paul R. Jones September 23, 2017 5:57 pm

    Paul Morinville September 23, 2017 2:43 pm: You, too, like Anon. lack any U.S. Constitution knowledge about the Treaty Clause post the Indian Citizenship Act of 1924…just an opinion you cannot support in the United States Constitution. Suggest you brush up on the Constitution’s Treaty Clause by reading very carefully the excerpted text below on treaties:
    http://lexrex.com/enlightened/AmericanIdeal/aspects/limited_gov_treaty.htm
    The object of treaties is the regulation of intercourse with foreign nations, and is external.”
    An especially interesting piece of evidence supporting the conclusion that the Treaty Clause was intended and understood by the Framing and Ratifying Conventions not to authorize the President and Senate, by a treaty, either (a) to override the Constitution, in whole or in part, or (b) to make domestic law (as distinguished from governance of relations with foreign governments),
    [Section 52.] “Treaties are legislative acts. A treaty is a law of the land. It differs from other laws only as it must have the consent of a foreign nation, being but a contract with respect to that nation . . . 2. By the general power to make treaties, the Constitution must have intended to comprehend only those objects which are usually regulated by treaty, and cannot be otherwise regulated. 3. It must have meant to except out of these the rights reserved to the States; for surely the President and Senate cannot do by treaty what the whole Government is interdicted from doing in any way.”

    Another fallacious statement is that a treaty “can override the Constitution;” which defies historical truth, as we have seen. A related and most preposterous allegation is that a treaty “can cut across the rights given the people by the constitutional Bill of Rights”–than which nothing could be further from the truth, partly for two reasons: the Constitution does not authorize any such treaty and, secondly, the people are, of course, given their rights by God and not by themselves through their own creation: the Constitution (including its Bill of Rights, or Bill of Prohibitions, Amendments). The quoted statement is farcical.

  9. Paul R. Jones September 23, 2017 6:00 pm

    Anon: Provide in the Constitution where there are “sovereign Indian tribes” post The Indian Citizenship Act of 1924! You make the statement they are ‘sovereign,’ now prove your position citing the Constitution by Article and paragraph.

  10. Anon September 23, 2017 8:37 pm

    Mr. Jones,

    Much like that “other blog,” you ask of others something that they need not present.

    Your position (in greater detail at the other blog) is simply untenable.

    It is YOU that first needs to establish that a mere act of Congress (the reference to the 1924 act), has Constitution changing power.

    As has been pointed out to you, your position does not treat the word “abridge” properly, as you seek to do with that 1924 Act, the act of abridging tribal sovereignty.

    The Tribes simply did NOT disappear with the 1924 Act, as would be necessary with your position.

    Asking others to prove a point when it is YOU that needs to prove a point is simply bad form.

    Please do not lecture others when your own form is so amiss (especially on the points that you seek to lecture).

  11. Paul R. Jones September 23, 2017 8:56 pm

    Anon: You continue to amaze me about your unvarnished lack of comprehension of our U.S. Constitution…when you can provide the source of information citing the Constitution whereby a U.S./State citizen since 1924 with “Indian ancestry/race” can be made distinguishable from all other non-Indian U.S./State citizens and at the same time, over-turn the following SCOTUS decisions posted below, then you can have a seat at the table discussing Constitutional protections of one’s U.S./State citizenship. And, provide the source in the United States Constitution establishing “tribal sovereignty!” Until then, you remain a Constitutional idiot! Your posts have yet to be supported by the Constitution. I, on the other hand, have affirmed my posts citing the Constitution itself beginning with the 14th Amendments ‘equal protection’ provisions as well as SCOTUS decisions on citizenship…none of which you have proven wrong…merely your unproven opinions. You have provided no Constitutional source that refutes the word ‘abridge’ as used in Osborn…merely your incessant use of ‘abridge’ in conjunction with ‘tribal sovereignty’…’tribal sovereignty’ you cannot support from the Constitution.

    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.
    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.

    4. “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)]

    5. http://lexrex.com/enlightened/AmericanIdeal/aspects/limited_gov_treaty.htm
    The object of treaties is the regulation of intercourse with foreign nations, and is external.”
    An especially interesting piece of evidence supporting the conclusion that the Treaty Clause was intended and understood by the Framing and Ratifying Conventions not to authorize the President and Senate, by a treaty, either (a) to override the Constitution, in whole or in part, or (b) to make domestic law (as distinguished from governance of relations with foreign governments),
    [Section 52.] “Treaties are legislative acts. A treaty is a law of the land. It differs from other laws only as it must have the consent of a foreign nation, being but a contract with respect to that nation . . . 2. By the general power to make treaties, the Constitution must have intended to comprehend only those objects which are usually regulated by treaty, and cannot be otherwise regulated. 3. It must have meant to except out of these the rights reserved to the States; for surely the President and Senate cannot do by treaty what the whole Government is interdicted from doing in any way.”

    Another fallacious statement is that a treaty “can override the Constitution;” which defies historical truth, as we have seen. A related and most preposterous allegation is that a treaty “can cut across the rights given the people by the constitutional Bill of Rights”–than which nothing could be further from the truth, partly for two reasons: the Constitution does not authorize any such treaty and, secondly, the people are, of course, given their rights by God and not by themselves through their own creation: the Constitution (including its Bill of Rights, or Bill of Prohibitions, Amendments). The quoted statement is farcical.

  12. Anon September 23, 2017 9:12 pm

    Your Supreme Court quotes (as long as they are), simply do not hold the position that you think that they do.

    I have made this very concise for you, Mr. Jones.

    The word “abridge” is what YOU are doing when your own very quotes tell you that you may not do so.

    Please correct yourself (and until you do, calling others names only all the more reflects poorly on you).

  13. Paul R. Jones September 23, 2017 9:23 pm

    Anon: Your latest post affirms you will remain a Constitution idiot. Idiot is the perfect word. Not even Winston Churchill’s note overcomes you.
    “The truth is incontrovertible. … Malice may attack it, ignorance may deride it, but in the end, there it is.” – Winston Churchill

  14. Anon September 23, 2017 10:09 pm

    Name calling – is that all that you have?

    Mr. Jones, that level of non-discourse may fly on that “other blog,” but watch your step here, this blog provides a tighter leash.

    May I suggest that instead of name-calling, that you realize that your position requires a mere act of Congress to place itself above the Constitution (directly related to the word “abridge”).

    Please direct your energies accordingly.

  15. Tami Dynes September 24, 2017 5:57 am

    *native american tribe

  16. Joachim CS Martillo September 24, 2017 11:25 am

    Seems like poetic justice. European invaders stole the real property of the natives. Now the natives get to own the intellectual property of the invaders.

  17. Mike McCabe September 24, 2017 1:01 pm

    This is brilliant, creative lawyering. Whomever came up with this idea, it is genius. I have no skin in this fight. All I know is this is what we are supposed to do as lawyers: the answer isn’t always going to jump out at you in Westlaw. We need to think, be imaginative, be creative. Too few lawyers, in my opinion, are trained like that.

  18. Anon September 24, 2017 2:24 pm

    For Mr. Jones’s benefit (emphasis added):

    The text of the 1924 Indian Citizenship Act (43 U.S. Stats. At Large, Ch. 233, p. 253 (1924)) reads as follows:

    BE IT ENACTED by the Senate and house of Representatives of the United States of America in Congress assembled, That all non citizen Indians born within the territorial limits of the United States be, and they are hereby, declared to be citizens of the United States: Provided That the granting of such citizenship shall not in any manner impair or otherwise affect the right of any Indian to tribal or other property.

    Approved, June 2, 1924. June 2, 1924. [H. R. 6355.] [Public, No. 175.]

    SIXTY-EIGHTH CONGRESS. Sess. I. CHS. 233. 1924.

    See House Report No. 222, Certificates of Citizenship to Indians, 68th Congress, 1st Session, Feb. 22, 1924.

    Note: This statute has been codified in the United States Code at Title 8, Sec. 1401(b).

    See: https://en.wikipedia.org/wiki/Indian_Citizenship_Act

  19. Anon September 24, 2017 2:32 pm

    FYI, Mr. Jones, the same wiki article continues to read:

    In 1868, under the 14th Amendment, all persons “born or naturalized in the United States, and subject to the jurisdiction thereof” were declared citizens. However, the jurisdiction requirement was interpreted to exclude most Native Americans, and in 1870, the Senate Judiciary committee further clarified the matter: “the 14th amendment to the Constitution has no effect whatever upon the status of the Indian tribes within the limits of the United States.”[1]

    and

    The exclusion of Native people from US citizenship was further established by Elk v. Wilkins, 112 U.S. 94 (1884), when the Court held that a Native person born a citizen of a recognized tribal nation was not born an American citizen and did not become one simply by voluntarily leaving his tribe and settling among whites. The syllabus of the decision explained that a Native person “who has not been naturalized, or taxed, or recognized as a citizen either by the United States or by the state, is not a citizen of the United States within the meaning of the first section of the Fourteenth Article of Amendment of the Constitution.”[4]

    and

    Under the 1924 Act, indigenous people did not have to apply for citizenship, nor did they have to give up their tribal citizenship to become a U.S. citizen. Most tribes had communal property, and to have a right to the land, individual Indian people needed to belong to the tribe. Thus, dual citizenship was allowed.

    [1] – NCC Staff (June 2, 2015). “On this day in 1924: All Indians made United States citizens”. National Constitution Center. Retrieved 5 September 2015.

    [4] – Elk v. Wilkins, 112 U.S. 94 (1884)

  20. Michael E. McCabe, Jr. September 24, 2017 2:37 pm

    A brilliant piece of lawyering.

  21. Anon September 26, 2017 8:03 am

    In addition to the items that I have presented here, Mr. Jones may be interested in the abundance of legal positions offered in the Mohawk Tribe’s brief itself.

    A synopsis is at: http://www.patentdocs.org/2017/09/mohawk-nation-exercises-sovereign-immunity-in-inter-partes-review.html

  22. Mr. V September 26, 2017 9:49 am

    Can anyone give me a ball park as to how long it will take the PTAB to rule on these 6 identical motions? Thanks!

  23. Anon September 26, 2017 5:18 pm

    It is almost comical that Mr. Jones has now appeared over at patentdocs with the same errors and refusal to actually engage on the counter points presented to him on a number of occasions.

    Mr. Jones, step down from that soapbox. Recognize the points being put to you.

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