Askeladden LLC Submits Another Amicus Brief Advocating Against Tribal Sovereign Immunity for PTAB Proceedings

Last December, we reported on an Amicus Brief filed by Askeladden LLC (“Askeladden”) with the Patent Trial and Appeal Board (“PTAB”) arguing that efforts by the St. Regis Mohawk Tribe (“the Tribe”) to dismiss a series of inter partes review (“IPR”) proceedings involving patents covering Restasis®, were based on misplaced notions of “tribal sovereign immunity.”

On February 23, 2018, the PTAB agreed with Askeladden’s position and denied the Tribe’s Motion to Terminate the proceeding.  See Mylan Pharmaceuticals Inc. v. St. Regis Mohawk Tribe, IPR2016-01127, Paper 129 (PTAB Feb. 23, 2018) (per curiam).

Thereafter, the Tribe filed an interlocutory appeal to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) under the collateral order doctrine to challenge this decision.  See St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, Inc., Nos. 2018-1638, -1639, -1640, -1641, -1642, -1643 (Fed. Cir.).

The Federal Circuit then took the unusual step of granting a motion to stay the PTAB proceedings and setting an accelerated briefing and hearing schedule.

Askeladden again submitted an amicus brief to the Federal Circuit on May 17, 2018 supporting the PTAB’s decision below.  A copy of that amicus brief is available here.

In this submission, Amicus Curiae Askeladden LLC advocated in support of the PTAB’s decision below based on the following grounds:

  1. The Tribe’s request is based on the misplaced theory that tribal sovereign immunity from suit is applicable to administrative proceedings before the PTAB. There is no dispute that, absent abrogation or waiver, Native American Tribes (like the Tribe) are generally immune from “suits” in federal or state court (see Red Br. at 13 (“a tribe is not subject to suit in federal or state court”) (emphasis added)).  However, such immunity does not extend to all government action.  See, e.g., Kiowa Tribe of Okla. v. Mfg. Techs., Inc., 523 U.S. 751, 755 (1998) (“We have recognized that a State may have authority to tax or regulate tribal activities occurring within the State but outside Indian country . . . .”).

In this regard, a PTAB proceeding is not a suit in court, but instead an administrative proceeding in which the Patent Office (through the PTAB) takes “a second look at an earlier administrative grant of a patent.”  Cuozzo, 136 S. Ct. at 2144 (2016); see also Oil States, slip op. at 7 (“[T]he decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.”).  Like other administrative actions in which States and Federal Agencies (e.g., the Federal Power Commission) may regulate rights or responsibilities of Tribes with respect to off-reservation activities, a PTAB proceeding is one of the “other mechanisms” available to the USPTO to resolve questions of patent validity as the administrative authority granting the patent in the first instance.  Cf. Michigan v. Bay Mills Indian Cmty., 134 S. Ct. 2024, 2028 (2014).Even if the Tribe cannot be compelled to participate in this proceeding, the PTAB retains authority to adjudicate the validity of patents under review.  Indeed, there is no requirement under the AIA that a patent owner participate in a proceeding in order for it to proceed.  See 35 U.S.C. §§ 311–319.

  1. Even if the Tribe cannot be compelled to participate in this proceeding, the PTAB retains authority to adjudicate the validity of patents under review. Indeed, there is no requirement under the AIA that a patent owner participate in an instituted proceeding in order for the PTAB to proceedSee 35 U.S.C. §§ 311–319.  The Tribe does not dispute this point.  (Red Br. at 27 (noting that “Board cited its ability to complete a case even if the patent owner fails to participate or even if the case is settled”)).  Thus, the Board correctly held that it “does not exercise personal jurisdiction over the patent owner”—“[a]t most, the Board exercises jurisdiction over the challenged patent in an inter partes review proceeding.”  (Appx16–17).
  2. Given that the PTAB has had jurisdiction over the challenged patents all along, the subsequent transaction by Allergan and the Tribe cannot and should not be entitled to divest the PTAB of its rights and duty to complete these proceedings. Cuozzo, 136 S. Ct. at 2144.  This is true irrespective of whether notions of tribal sovereign immunity are applicable.  The Patent Office has a duty to “protect the public’s ‘paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.’”  Cuozzo, 136 S. Ct. at 2144–45 (quoting Precision Instr. Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806 (1945)), and inter partes review is an “efficient system for challenging patents that should not have issued.”  Cuozzo, 136 S. Ct. at 2144–45 (quoting H.R. Rep. No. 112-98, at 39–40 (2011)).  Consistent with the Court’s guidance, the agreements here should not divest the PTAB of its jurisdiction to complete the task it has rightfully begun, and the stay should be lifted promptly.

The following is an excerpt from the Brief addressing Points 1 and 2 above:

I.  Notions of Tribal Sovereign Immunity Do Not Apply to Administrative Proceedings Like This One

The Tribe’s motion below was premised on the proposition that “The Tribe Possesses Immunity from Suit.”  (Paper 81, at 8).  On appeal, the Tribe repeats its argument that “a tribe is not subject to suit in federal or state court absent waiver or abrogation.”  (Red Br. at 13 (emphasis added)).  However, the Tribe fails to acknowledge that sovereign immunity granted to Native American tribes is limited, and does not extend to administrative proceedings, like inter partes reviews before the PTAB.

A.  Tribal Immunity Does Not Extend to PTAB Proceedings

Native American tribes are “‘domestic dependent nations’” that exercise “inherent sovereign authority.”  Bay Mills, 134 S. Ct. at 2030.  Among the core aspects of sovereignty that tribes possess—subject to congressional action—is the “common-law immunity from suit traditionally enjoyed by sovereign powers.”  Id. (emphasis added).  Such immunity is found “in an agreement, express or implied between the two sovereigns, or in the voluntary decision of the second [sovereign] to respect the dignity of the first [sovereign] as a matter of comity.”  Nevada v. Hall, 440 U.S. 410, 416 (1979).  The doctrine of tribal sovereign immunity developed on a “slender reed” from a “passing reference to immunity” to become “an explicit holding that tribes had immunity from suit.”  Kiowa, 523 U.S. at 757 (emphasis added).  “As sovereigns or quasi sovereigns, the Indian Nations enjoyed immunity ‘from judicial attack’ absent consent to be sued.”  Id. (emphasis added).

As recognized in Cuozzo, an inter partes review is an administrative process held before the U.S. Patent and Trademark Office, an administrative agency, and not a law suit held in a Court (or a “judicial attack”).  136 S. Ct. at 2137–38.  As such, traditional concerns regarding sovereign immunity, which focus on immunity from suit in a court, do not come into play.  This is because the Supreme Court recognizes a distinction between passing a law which may govern off-reservation activities of a tribe (e.g., taxing the sale of cigarettes, denying a casino license, or cancelling a patent) and the ability to enforce those laws in courtsKiowa, 523 U.S. at 755 (“We have recognized that a State may have authority to tax or regulate tribal activities occurring within the State but outside Indian country . . . [,] however, [that] is not to say that a tribe no longer enjoys immunity from suit.”).

For example, in Okla. Tax Comm’n v. Citizen Band Potawatomi Indian Tribe the Supreme Court held that while a State (Oklahoma) may tax cigarette sales by a Tribe’s store to nonmembers, the Tribe enjoys immunity from a suit to collect unpaid state taxes.  498 U.S. 505, 510 (1991).  In other words, there is a difference between the right to demand compliance with state laws and the means available to enforce them.  See id. at 514.

This distinction was also recognized in Michigan v. Bay Mills, where the Supreme Court held that, even if sovereign immunity barred a lawsuit by the State of Michigan against a tribe, “Michigan must therefore resort to other mechanisms, . . . to resolve this dispute.”  134 S. Ct. at 2028 (emphasis added).  One of “the panoply of tools Michigan can use to enforce its law on its own lands” was that “Michigan could, in the first instance, deny a license to [the identified tribe] for an off-reservation casino.”  Id. at 2035.

Federal Agencies, such as the Federal Communications Committee (“FCC”), have exercised their power to regulate the continuation of previously issued licenses, even when the licensee is a tribe.  See, e.g., In re Confederated Tribes and Bands of the Yakama Nation, 31 FCC Rcd. 8857, 8857 (F.C.C. Aug. 10, 2016); In re Business Council of the N. Arapaho Tribe, 29 FCC Rcd. 2650, 2650 (F.C.C. Mar. 10, 2014).

Askeladden respectfully submits that inter partes review is one these “other mechanisms” authorized by Potawatomi and Bay Mills to be used with Native American Tribes.  Specifically, an inter partes review is more akin to a state imposing a tax or granting or revoking a franchise or license, than it is to a lawsuit seeking to enforce those tax laws or impose penalties for unlicensed activities.  Cf. Potawatomi, 498 U.S. at 512 (“Although the doctrine of tribal sovereign immunity applies to the Potawatomis, that doctrine does not excuse a tribe from all obligations to assist in the collection of validly imposed state sales taxes.”), with Oil States, slip op. at 9 (“inter partes review involves the same interests as the determination to grant a patent in the first instance”).

An inter partes review is an administrative proceeding before an administrative agency—the Patent Office’s PTAB—to take a second look at the agency’s earlier grant of a patent.  Contrary to Appellants’ contentions, (Red Br. 19–21), such proceedings cannot properly be characterized as “lawsuits.”  As this Court has noted, although “[t]he PTO at times refers to the IPR proceedings as a ‘trial’[,] [v]ery seldom do IPR proceedings have the hallmarks of what is typically thought of as a trial.”  Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1270 n.2 (Fed. Cir. 2017) (citation omitted).  In this regard, “discovery is significantly restricted and live testimony is rarely allowed in IPR proceedings.”  See Joanna Shepherd, Disrupting the Balance: The Conflict Between Hatch-Waxman and Inter Partes Review, 6 NYU J. INTELL. PROP. & ENT. L. 14, 37 (2016).

The Cuozzo court explained how, in many ways, “inter partes review is less like a judicial proceeding and more like a specialized agency proceeding.”  Cuozzo, 136 S. Ct. at 2143.  For example, the private parties that initiate inter partes reviews need not stay in the proceedings, and the Patent Office (i.e., the U.S. Government) exercises discretion over institution and is permitted to intervene in any appeal of an inter partes review proceeding.  Cuozzo, 136 S. Ct. at 2140 (citing 35 U.S.C. § 314(a)); 35 U.S.C. § 143

B.  The Tribe’s Patent Rights Are Subject to the Patent Office’s Jurisdiction

In Oil States, the Supreme Court reaffirmed that “Patent claims are granted subject to the qualification that the PTO has ‘the authority to reexamine—and perhaps cancel—a patent claim’ in an inter partes review.”  Oil States, slip op. at 9 (quoting Cuozzo, 36 S. Ct. 2131, 2137).  “Patents thus remain ‘subject to [the Board’s] authority’ to cancel outside of an Article III court.”  Oil States, slip op. at 9 (quoting Crowell v. Benson, 285 U.S. 22, 50 (1932)).

Appellants rely heavily on Federal Maritime Commission v. S.C. State Ports Authority, 535 U.S. 743 (2002) (“FMC”) for the proposition that tribal immunity can be invoked in inter partes review proceedings.  (See Red Br. at 21–24).  While FMC is instructive, it is distinguishable.  As discussed above, inter partes review proceedings do not have the hallmarks of a traditional lawsuit.  This is in contrast to the particular type of administrative proceeding at issue in FMC:

FMC administrative proceedings bear a remarkably strong resemblance to civil litigation in federal courts. For example, the FMC’s Rules governing pleadings are quite similar to those found in the Federal Rules of Civil Procedure….  Not only are discovery procedures virtually indistinguishable, but the role of the ALJ, the impartial officer designated to hear a case … is similar to that of an Article III judge….  In fact, to the extent that situations arise in the course of FMC adjudications which are not covered by a specific Commission rule, the FMC’s own Rules of Practice and Procedure specifically provide that the Federal Rules of Civil Procedure will be followed to the extent that they are consistent with sound administrative practice.

FMC, 535 U.S. at 757-759 (emphasis added) (internal quotation marks and citations omitted).

Also unlike an FMC administrative proceeding, a PTAB proceeding does not result in a litigation-like remedy.  In FMC, the Court noted that, in FMC proceedings, an Administrative Law Judge issues a decision that includes “relief,” such as “directing the payment of reparation to an aggrieved party” and “require[ing] the losing party to pay the prevailing party’s attorney’s fees.”  FMC, 535 U.S. at 759.  In contrast, the PTAB “does not make any binding determination regarding ‘the liability of [Patent Owner] to [Petitioner] under the law as defined.”  Oil States, slip op. at 15–16.  Rather, inter partes review is intended to be an “efficient system for challenging patents that should not have issued.”  H.R. Rep. No. 112-98, at 39–40 (2011); see also Cuozzo, 136 S. Ct. at 2144 (“the purpose of the proceeding is not quite the same as the purpose of district court litigation”)).

As the Supreme Court recently reinforced, the PTAB does not exercise judicial power:

[The Supreme Court] has never adopted a ‘looks like’ test to determine if an adjudication has improperly occurred outside of an Article III court. The fact that an agency uses court-like procedures does not necessarily mean it is exercising judicial power…. Although inter partes review includes some of the features of adversarial litigation, it does not make any binding determination regarding ‘the liability of [Greene’s Energy] to [Oil States] under the law as defined.’ Crowell, 285 U.S., at 51. It remains a matter involving public rights, one ‘between the government and others, which from [its] nature do[es] not require judicial determination.’ Ex parte Bakelite Corp., 279 U.S., at 451.

Oil States, slip op. at 15–16 (emphasis added).

Further, in FMC, a State run entity asserted sovereign immunity as a defense against litigation before an independent agency, the Federal Maritime Commission.  In finding that Eleventh Amendment State Sovereign Immunity principles were applicable to that proceeding, FMC relied upon, inter alia, the bargain reached between the States in the constitutional convention to arrive at the Eleventh Amendment (a factor not at play in the case of tribal sovereign immunity, which is merely grounded in comity).  Compare FMC, 535 U.S. at 751–52, with Bay Mills, 134 S. Ct. at 2031.

Another factor behind the FMC Court’s decision was the “interest in protecting States’ dignity,” explaining that “[p]rivate suits against nonconsenting States . . . present ‘the indignity of subjecting a State to the coercive process of judicial tribunals at the instance of private parties,’ regardless of the forum.”  FMC, 535 U.S. at 751 (quoting In re Ayers, 123 U.S. 443, 505 (1887)) (emphasis in original).  The Court noted that—rather than subjecting sovereign states to this indignity of being sued by private parties—private parties could obtain the same relief sought in the FMC proceedings by bringing their complaints to the FMC directly, and urging the FMC to bring a suit in district court.  535 U.S. at 768 & n.19.  No similar procedure exists here for patents.

Prior PTAB decisions holding that a state may assert Eleventh Amendment sovereign immunity are inapplicable here.  See, e.g., Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., No. IPR2016-1914 (PTAB July 13, 2017) (Paper 36).  Those decisions turned on the notion that inter partes reviews are the type of proceeding from which the Framers of the Constitution would have thought the States possessed immunity.  However, even if those decisions were correct, “the immunity possessed by Indian tribes is not coextensive with that of the States,” Kiowa, 523 U.S. at 755–56 [Three Affiliated Tribes of Fort Berthold Reservation v. Wold Eng’g, 476 U.S. 877, 890 (1986) (“Of course, because of the peculiar ‘quasi-sovereign’ status of the Indian tribes, the Tribe’s immunity is not congruent with that which the Federal Government, or the States, enjoy.”).], since it evolved out of judicial doctrine rather than the Eleventh Amendment.  Thus, the Board correctly refused to extend these prior decisions to include tribal sovereign immunity.  (Appx9; see also Paper 130, at 2–4).

II.  The PTAB May Proceed Without a Patent Owner

An inter partes review proceeding is focused on the patent, not the patent owner.  Indeed, the patent owner is not required to participate in the proceeding.  As such, principles of immunity from suit are simply inapplicable.  Cf. Cty. of Yakima v. Confederated Tribes and Brands of Yakima Nation, 502 U.S. 251, 264–65 (1992) (recognizing that taxation of fee-patented land under in rem jurisdiction could be exercised against land owned by a sovereign Native American tribe).  Although the PTAB found “we need not characterize these proceedings as in rem in order to reach our conclusions here” (Appx17 n.6), to the extent this Court agrees that inter partes reviews are in rem proceedings, it may be otherwise dispositive.  Cf. Upper Skagit Indian Tribe v. Lundgren, 138 S.Ct. 543 (Mem.) (2017) (currently pending on question whether “a court’s exercise of in rem jurisdiction overcome[s] the jurisdictional bar of tribal sovereign immunity when the tribe has not waived immunity and Congress has not unequivocally abrogated it.”).

While the AIA sets forth certain limits on what must be in a Petition (see, e.g., 35 U.S.C. § 312), who may file a Petition (see, e.g., 35 U.S.C. § 315), and even provides a patent owner a right (but not obligation) to respond to the Petition (see, e.g., 35 U.S.C. § 313), it does not require participation by a Patent Owner (or even the Petitioner) for the PTAB to complete its task (see, e.g., 35 U.S.C. § 317(a)).  See, e.g., Cuozzo, 136 S. Ct. at 2144 (“challengers need not remain in the proceeding; rather that Patent Office may continue to conduct an inter partes review even after the adverse party has settled. § 317(a).”); Reactive Surfaces Ltd. v. Toyota Motor Corp., IPR2016-01914, slip op. at 17 (PTAB July 13, 2017) (Paper 36) (“We conclude that Patent Owner has not shown sufficiently that dismissal of the Regents from this proceeding requires termination of the proceeding as to the remaining patent owner, Toyota.”).

In Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274 (PTAB Jan. 25, 2017) (Paper 21) (Ex. 2095), another panel rejected the fact that an inter partes review is an in rem proceeding because the patent owner could be subject to an estoppel from an adverse judgment.  However, the Supreme Court rejected that kind of analysis in Tennessee Student Assistance Corp v. Hood, 541 U.S. 440 (2004).  Specifically, the Court found that sovereign immunity did not apply to a bankruptcy court’s in rem jurisdiction because “a nonparticipating creditor cannot be subjected to personal liability.”  Id. at 447–48.  This was true even though a discharge order would apply to a nonparticipating sovereign creditor.  Thus, even though estoppel may apply to the patent holder, such estoppel is still not personal liability, and thus does not undermine this Board’s in rem jurisdiction over a patent.

To the contrary, as the Court recently recognized, an inter partes review “does not make any binding determination regarding ‘the liability of [Patent Owner] to [Petitioner] under the law as defined.’”  Oil States, slip op. at 16 (quoting Crowell, 285 U.S. at 51).

Where, like the AIA, Congress adopts “a general statute in terms applying to all persons [it] includes Indians and their property interests.”  Fed. Power Comm’n v. Tuscarora Indian Nation, 362 U.S. 99, 116 (1960) (“FPC”).  FPC held “that Congress, by the broad general terms of § 21 of the Federal Power Act, has authorized the Federal Power Commission’s licensees to take lands owned by Indians, as well as those of all other citizens, when needed for a licensed project, upon the payment of just compensation . . . .”  Id. at 123.

The PTAB correctly held that like FPC, “[h]ere Congress has enacted a generally applicable statute providing that any patent (regardless of ownership) is ‘subject to the conditions and requirements of (the Patent Act).’”  Appx11 (quoting 35 U.S.C. § 101 and citing 35 U.S.C. § 261); see also Oil States, slip op. at 2.  Indeed, the AIA allows any “person who is not a patent owner” to be a Petitioner (35 U.S.C. § 311(a))[Cuozzo, 136 S. Ct. at 2150 (“any third party can ask the agency to institute inter partes review of a claim”) (emphasis added); see also Oil States, slip op. at 2 (accord).], subject to meeting the other requirements of Sections 311–319, and offers no restriction on which Patent Owners are authorized to respond (35 U.S.C. § 313) or waive a right to respond (e.g., 37 C.F.R. § 42.107(a)).  As the PTAB correctly stated “a patent owner’s participation is not required and inter partes reviews have proceeded to a final written decision under 35 U.S.C. § 318(a) even where the patent owner has chosen not to participate.”  (Appx17 (citing Microsoft Corp. v. Global Techs., Inc., IPR2016-00663 (PTAB June 2, 2017) (Paper 35); Republic Gen. Ins. Group, Inc. v. Owner of U.S. Patent No. 6,519,581, IPR2015-01956, (PTAB Apr. 18, 2017) (Paper 39)).  The Petitioner need not even have constitutional standing.  Cuozzo, 136 S. Ct.. at 2143–44; see also 35 U.S.C. § 311(a) (“a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of a patent.”).

The Author

Charles R. Macedo

Charles R. Macedo is a Partner at Amster, Rothstein & Ebenstein LLP, where he advises and litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation. He also assists clients in obtaining, maintaining and enforcing patent and trademark portfolios. He has successfully recovered domain names registered to others using clients’ trademarks.
Mr. Macedo is also the author of the book, The Corporate Insider’s Guide to U.S. Patent Practice, originally published by Oxford University Press.

For more information or to contact Mr. Macedo, please visit his Firm Profile Page.

Charles R. Macedo

Mark Berkowitz is Senior Counsel with Amster, Rothstein & Ebbenstein. His practice focuses on all aspects of intellectual property, with an emphasis on patent litigation. He litigates patents covering a wide variety of technologies including consumer electronics, semiconductors, e-commerce, power distribution and medical devices. He has assisted in all phases of patent cases from pre-suit investigations through appeal, including discovery, Markman briefing and dispositive motions.

For more information or to contact Mr. Berkowitz, please visit his Firm Profile Page.

Charles R. Macedo

Sandra Hudak is an Associate with Amster Rothstein & Ebenstein LLP. Ms. Hudak works in all areas of intellectual property law, including patents, trademarks, copyrights, and unfair competition. She has been involved in numerous ARE litigation matters with responsibilities including developing strategies and defenses, analyzing prior art, managing document review, and drafting motions and pleadings. Her areas of focus in patent law include subject matter eligibility under 35 U.S.C. § 101, invalidity based on prior knowledge or use, and divided infringement. She prepares and prosecutes patent applications in a wide range of technologies, including financial services, internet marketing, consumer products, and therapeutic agents. She also assists clients in post-grant proceedings before the U.S. Patent and Trademark Office, such as, inter partes reviews and covered business method reviews.

For more information or to contact Ms. Hudak, please visit her Firm Profile Page.

Charles R. Macedo

Jim Howard is Associate General Counsel of Askeladden L.L.C., where he supports all of Askeladden’s Patent Quality Initiative efforts, and Vice President and Associate General Counsel of The Clearing House Payments Company. Before joining The Clearing House, Jim was in private practice where he represented a variety of companies, including technology and financial services companies, in patent litigation and patent prosecution matters.

ABOUT THE PATENT QUALITY INITIATIVE
Askeladden is an education, information and advocacy organization with the goal of improving the understanding, use and reliability of patents in financial services and other industries. As part of its Patent Quality Initiative, Askeladden strives to promote better patents and patent holder behaviors by regularly filing amicus briefs, Inter Partes Reviews (IPRs) and engaging in educational activities.

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 8 Comments comments. Join the discussion.

  1. Joachim Martillo May 22, 2018 7:49 am

    IANAL, but during my half-year of vertigo, I read a lot of case documents. I have not read the full amicus brief yet, but this excerpt has the appearance of gobbledygook that really does not address the main point.

    The limits of tribal sovereign immunity are determined legislatively by Congress.

    I also must mention in side note that SCOTUS did not explain what it meant by public franchise in the context of letters patent. In normal usage water service, power service, and natural gas service companies have public franchises.

    How are letters patent like supplying gas? — especially when 35 USC § 261 explicitly states the following.

    Subject to the provisions of this title, patents shall have the attributes of personal property.

    The attorneys for Oil States blundered badly, and SCOTUS decided as best as it could when it must deal with an argument so illogically posed.

    Congress sets the limits of tribal sovereignty and will probably at some point address tribal sovereignty in the context of post-grant review.

    There is no obvious reason to cobble together a lot of ill-fitting arguments and case law when Congress is perfectly capable of explicitly settling the issue by legislation.

    I could certainly cobble together a lot of ill-fitting arguments and case law to take the opposite position. I have done it before, and the attorneys at the firms, where I consult, have told me that I am good at so doing and gave me the moniker Dr. Evil because I effectively have a PhD in making gobbledygook seem plausible in the context of law as well as in my actual technological areas of expertise.

  2. Joachim Martillo May 22, 2018 8:08 am

    I should add the following.

    Although one can argue that a court may have in rem jurisdiction over personal property, a patent to an invention is several orders more personal than other personal property. Just as Athena is a child of Zeus’s mind, the invention is the child of the inventor’s mind, and common usage makes this point when the inventor asserts about his creation, “It’s my baby!”

    SCOTUS can assert that an inventor would exchange his baby for a public franchise that can be administratively canceled only because the Oil States attorneys argued so illogically.

  3. Anon May 22, 2018 9:14 am

    Notwithstanding Oil States and the unavoidable fallout of that mess of a decision, one (of many) weak points in the amicus brief is the attempted (but unsuccessful) distinguishment between State sovereign immunity and Tribal sovereign immunity.

    All of the (main) arguments against Tribal immunity apply full force to the States (given the Federal nature of patents).

  4. Kevin E Noona May 22, 2018 10:20 am

    For the record, Mr. Macedo wrote the brief

  5. Brian Keith Buchheit May 22, 2018 1:09 pm

    I’m always a bit annoyed when Askeladden files an amicus brief. I was involved in IPR2015-00122 filed by Askeladden, who was determined to really be (real party of interest) the Clearing House (public records from referenced IPR will confirm). I challenge you to find a single dedicated employee of Askeladden, which is paid for or actually employed by that alleged entity. Since my involvement in the above IPR, I have noticed Askeladden continues to file briefs without admitting this connection. I guess the Clearing House doesn’t want its advocacy to be transparent ? It is possible something has changed within Askeladden since my IPR (but I’m skeptical).

  6. Joachim Martillo May 22, 2018 2:11 pm

    BTW, Allergan patents are all pre-AIA. The Supreme Court has explicitly left the door open to challenges of the IPR, PGR, and CBMR on due process grounds.

    The amicus brief glosses over the possibility that SCOTUS would find post-grant review of the Allergan patents to be unconstitutional despite the Oil States decision, which the brief mentions multiple times.

    If any patent application in the family trust, whose IP portion I manage becomes an issued patent and then is challenged in a post-grant review proceeding, which is appealed to the CAFC, on whose decision a writ of certiorari is granted, I will certainly request the lawyers to argue for unconstitutionality on due process grounds.

    I believe there may also be a valid challenge to post-grant proceedings (including ex parte reexamination) on the basis of equal protection.

    If it’s possible, I would also recommend that the trust’s attorneys reargue logically and sanely the unconstitutionality of canceling letters patent to an invention in an administrative tribunal.

    There simply is no logical basis to view the staking out of a knowledge claim to be fundamentally different from staking out a land or mining claim.

    By trying to equate a knowledge monopoly or monopoly over an invention to a natural (business) monopoly like providing public natural gas, electricity, water, (pre-breakup) POTS telephone, or sundry transport service, SCOTUS seems to evince misunderstanding of market domination.

    A claim to knowledge no more dominates a market than a mining claim does. A patented invention that becomes profitable creates incentive to find alternative non-infringing better ways to make or to do the same thing just as one successful mine encourages prospectors.

    Maybe a large slothful corporation can’t create a non-infringing competitive invention. Is the US government really supposed to protect such a corporation?

    If the US needs the equivalent of opposition procedure before the European Patent Office (EPO), Congress could legislate a patent claim ejectment proceeding in federal district courts. Such an ejectment proceeding would be compatible with the Anglo-American legal system.

    De Tocqueville pointed out clearly that Anglo-American law serves free men while European continental law is a system for slaves.

    USPTO post-grant proceedings make inventors slaves. Why then should an inventor invent?

    USPTO post-grant proceedings will eventually kill the US economy.

  7. Anon May 22, 2018 2:27 pm

    Mr. Buchheit,

    Your post intrigued me, and a quick Google search reveals much:

    PQI and The Clearing House

    Askeladden’s Patent Quality Initiative is a product of thought leadership provided by The Clearing House Payments Company. The Clearing House has a 161-year tradition of furthering the interests of the commercial banking industry in the United States and helping chart the course of America’s financial industry.
    http://www.patentqualityinitiative.com/about%20pqi/team

    and a related link on the same site:
    Established in 1853, The Clearing House is the oldest banking association and payments company in the United States. It is owned by the world’s largest commercial banks, which hold more than half of all U.S. deposits….

    Its affiliate, The Clearing House Payments Company L.L.C., provides payment, clearing and settlement services to its member banks and other financial institutions, clearing almost $2 trillion daily, which represents nearly half of the automated clearing-house, funds transfer, and check-image payments made in the United States.

    These last two statements are also available directly on the USPTO’s servers (page 2):

    https://www.uspto.gov/sites/default/files/documents/2014ig_a_askeladden_2015mar16.pdf

    Hmm, Big Corp, transnational style looking after “patent quality” – the veritable fox guarding the henhouse here….

  8. Brian Keith Buchheit May 22, 2018 4:17 pm

    Anon,

    I’m glad I intrigued you. If you look deeper, you’ll find the people listed for the PQI are all able to be cross referenced with people employed by the Clearing House (the “company” that processes $2 Trillion a day – and has every major bank in the United States as a member) .

    You’ll notice from the article that Jim Howard is Associate General Counsel of Askeladden L.L.C. and is concurrently Vice President and Associate General Counsel of The Clearing House Payments Company.

    Mr. Howard, could you tell us how a “Chinese Firewall” is maintained between your two different roles for the two different companies? I suspect your IRS declared pay for being Associate GC of Askeladden is $0 – and all the time spent in that role is donated by the Clearing House, which likely pays your salary. I’d be happy if I was incorrect and would welcome such a correction.

    Further, could ANY PQI member confirm that they received a single dollar ($1) or more in salary from Askeladden for the time you spent on the PQI? If not, could ANY PQI member confirm that they spent a single hour working for the PQI that was not compensated for by the Clearing House (or one of its affiliate banks)?

    I have honestly been curious about this for a while (since being on the receiving end of an IPR from an apparently “fictitious” company of Askeladden).

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