Attorneys for the St. Regis Mohawk tribe have sent an e-mail requesting permission to enter a heavily redacted document into evidence in the inter parte review (IPR) challenges relating to the RESTASIS patents acquired from Allergan. The document, which is an e-mail from Administrative Patent Judge Sheridan Snedden to Administrative Patent Judge James Arpin, was made available to attorneys for the tribe through a Freedom of Information Act (FOIA) request.
On Friday, March 9, 2018, the United States Patent and Trademark Office provided attorneys for the tribe some 500 pages responsive to a FOIA request centering on documents that would show whether any improper ex parte communications occurred between the three Administrative Patent Judges assigned to hear the RESTASIS IPRs, and who refused to allow the Mohawk tribe to assert tribal sovereign immunity. Hundreds of pages of documents were either blank, or completely redacted. Few pages actually provided any relevant information, and what was not redacted were largely already published decisions of the PTAB. Interestingly, also provided as a part of the FOIA request was an article written by Richard Lloyd of IAM Magazine, which was cut and pasted and widely distributed throughout the USPTO, seemingly with careless disregard of the copyright protection afforded to IAM Magazine.
What was provided by the USPTO as part of the March 9, 2018 document release does, however, clearly demonstrate that APJ Snedden had written communications with APJ Arpin about the topic of “Tribal Immunity”. This is relevant because APJ Arpin was not assigned to the case.
The USPTO is claiming deliberative privilege pursuant to 5 U.S.C. 552(b)(5), which protects an agency’s deliberative process privilege, to support their reason for providing such heavily redacted documents. See Mapother v. Dep’t of Justice, 3 F.3d 1533, 1537 (D.C. Cir. 1993). This deliberative privilege applies to documents such as “advisory opinions, recommendations and deliberations comprising part of a process by which governmental decisions and policies are formulated.” NLRB v. Sears, Roebuck & Co., 421 U.S. 132, 150 (1975).
Attorneys for the Mohawk tribe have notified the USPTO that ex parte communications between an APJ assigned to the IPRs and an APJ not assigned to the IPRs cannot possibly fall within the deliberative privilege of (b)(5), as it is commonly referred to in FOIA matters.
Michael Shore, lead attorney for the Mohawk tribe, explained in an e-mail to the USPTO:
Communications between APJs on our panel and third parties, including other APJs not on the panel, cannot possibly be “deliberations comprising part of a process by which government decisions and policies are formulated” because only the APJs on our panel are authorized to participate in such deliberations as to the merits of our case. Third party communications cannot be deliberations because they are illegal under the [Administrative Procedures Act], as only our judges can decide our case, and any outside influences must be disclosed and made of record. This is not a Star Chamber or some third world country. We have a right to know what our panel is being told to do, suggested to do or guided to do.
The Shore e-mail goes on:
The [St. Regis Mohawk tribe] has an absolute due process right to have its legal issues decided by the APJs assigned to the panel, without undue interference based on politics. The fact that non-panel members are putting in their views or influencing our panel must be disclosed and cannot as a matter of law be privileged.
Discussions among the duly appointed panel members are privileged. Discussions and communications on the dispute and legal issues between the panelists and third parties not authorized to make a decision for the parties is NOT privileged, and is in fact potentially illegal ex parte communications unless disclosed and made of record. We have a right to know who opposes us beyond the Petitioners, even if those people are internal to the PTAB. This is why the APA requires ex parte communications with administrative judges to be made of record.
Shore concluded his e-mail to the USPTO putting the Office on notice of impending litigation, reminding the USPTO of its obligation to retain all information and documents in anticipation of a FOIA lawsuit that would seek to compel release of documents in non-redacted form.
In reviewing the March 9, 2018 document release there are several other e-mail communications that raise the specter of improper ex parte communications in violation of the APA, both relating to the Mohawk RESTASIS IPRs, as well as the IPRs where an expanded panel of the PTAB refused to recognize a sovereign immunity defense made by the State of Minnesota.
- On Tuesday, December 12, 2017, at 12:51pm, PTAB Vice-Chief Jacqueline Bonilla e-mailed APJ Christopher Paulraj. The subject is “Emailing: Hatch Waxman and AIA interplay”. The name of the attached file is partially redacted, as is the entirety of the e-mail communication. APJ Paulraj was on the panel that denied the assertion of sovereign immunity to the Mohawk tribe, and presumably this e-mail is related to the matter given it was included in the document production. Since Vice-Chief Bonilla was not assigned to the RESTASIS IPRs, and this communication occurred prior to the decision, this could be evidence of another communication in violation of the APA.
- On Tuesday, December 12, 2017, Vice-Chief Bonilla also e-mailed Lead APJ Aaron Moore. The subject is partially redacted: “Documents regarding REDACTED proposal – all drafts, pre-decision, and confidential”. The attachments list is completely redacted, but the body of the e-mail read: “For our call later. Thanks!” Presumably, this e-mail is also related to the sovereign immunity issue since it was disclosed as a part of the above referenced FOIA request. Neither Bonilla nor Moore were assigned to the RESTASIS IPRs, which raises the question about why they would be circulating pre-decisional drafts and discussing them. Moore was also not assigned to the expanded panel in the University of Minnesota cases.
- On December, 12, 2017, at 10:18am, APJ Snedden e-mails APJ Jacqueline Harlow. The e-mail subject is “FW: Tribal Immunity”. The e-mail forwards to APJ Harlow the e-mail sent to APJ Snedden on December 9, 2017, by APJ Arpin.
- On December 4, 2017, APJ Kalyan Deshpande, PTAB Deputy Chief Scott Boalick and PTAB Vice-Chief Scott Weidenfeller communicated via e-mail. The first e-mail, from Boalick to Desphande and Weidenfeller at 9:14am had the subject: “State Sovereign Immunity Cases”. The second e-mail, a response by APJ Deshpande, has the subject redacted. The substance of both e-mails is completely redacted. Subsequently, Deputy Boalick forwards the e-mail chain to PTAB Chief David Ruschke. This raises a question about improper communications that might have taken place regarding the University of Minnesota IPRs. APJ Kalyan Deshpande was not assigned to the expanded panel deciding the University of Minnesota sovereign immunity matter. This is relevant because this would have been prior to the decision in the University of Minnesota cases, which came out dated December 19, 2017.
- On December 14, 2017, at 11:34am, an e-mail that are somehow relates to the Mohawk tribe request was sent from PTAB Deputy Chief Boalick to Lead APJ Michael Tierney, Lead APJ William Fink, Vice-Chief Bonilla, APJ Michelle Ankenbrand, and APJ Deshpande. The subject and attachments are redacted, as is the body of the e-mail being forwarded. Tierney, Fink, Kalyan and Ankenbrand were not assigned to either the expanded panel in the University of Minnesota case or to the Mohawk RESTASIS IPRs.
- On December 14, 2017, at 11:36am, an e-mail is sent from an anonymous individual to PTAB Chief David Ruschke, Deptuy Chief Boalick, Vice-Chief Bonilla, Vice-Chief Weidenfeller, and Lead APJ Tierney. The includes the name of APJ Ankenbrand (implying it is from her) but the rest of the e-mail is redacted. Again, this would have been before the decision in the Minnesota IPR cases.
- On December 14, 2017, at 11:37am, Chief Ruschke forwards the 11:34am e-mail chain (see 4 above) to Bob Moore and Sylvia Gerukos. The subject, attachment and body are all redacted, but the message is marked as having “High” importance.
- On December 15, 2017, at 9:46am, an e-mail is sent from APJ Kalyan to Chief Ruschke, Deputy Chief Boalick, Vice Chief Bonilla, Vice Chief Weidenfeller, Lead APJ Tierney and Lead APJ Fink, with APJ Ankenbrand copied. The subject, attachments and substance are redacted. Again, this shows a communication among APJs not assigned to either the Mohawk RESTASIS IPRs or the University of Minnesota IPRs before the decision on the University of Minnesota IPRs was delivered.
- On December 15, 2017, at 10:16am, APJ Stacy Margolies e-mailed Chief Ruschke, Deputy Chief Boalick, Vice Chief Bonilla, Vice Chief Weidenfeller, and Lead APJ Tierney. The subject is partially redacted, but suggests that it is related to the RESTASIS IPRs, reading: “Pending AIA cases REDACTED new tribal immunity case”. The attachment name is partially redacted, but reads: “Pending AIA cases REDACTED 017.12.15.pdf”. APJ Margolies was not assigned to either the University of Minnesota or RESTASIS IPRs, and this communication was prior to the decision of either case.
- On December 15, 2017, at 11:06am, APJ Ankenbrand responds to the e-mail sent by APJ Deshpande earlier in the morning at 9:46am (see 7 above). The subject, attachments and substance of her response was redacted.