Posts Tagged: "St. Regis Mohawk Tribe"

What’s abundantly clear – and disastrous for both the patent system and the public – is that the PTAB’s Kafkaesque rules for complaining about anything outside of what an expert stated in a submitted declaration, including allegations of judicial misconduct, is undermining the public’s already marginal confidence in the entire IPR process. Even Franz Kafka himself would be bewildered by a process which requires one to seek permission to complain – from the very body about whom a litigant is complaining.

Notice what APJ Harlow wrote relating to IPR2017-01068 is word for word identical to what APJ Bisk wrote relating to IPR2017-01186. Indeed, the entirety of the concurring opinions are word for word identical. Obviously, the concurring opinions were shared internally in some form or fashion prior to being issued by the PTAB. But why? It seems perfectly reasonable for the St. Regis Mohawk Tribe to want to know who actually wrote these two concurring opinions. Did APJ Harlow and APJ Bisk cooperate and jointly write a single concurring opinion filed in two separate cases? Why would two APJs not assigned to the same case take it upon themselves to collaborate in writing a single concurring opinion? Are APJs not assigned to a case typically consulted? Did someone else write those opinions for APJ Harlow and APJ Bisk to make sure this particular viewpoint was incorporated into the decisions? How did APJ Harlow and APJ Bisk have access to the concurring opinions each would file?

Apple raised concerns of due process implications of ex parte communications and their impact on its trial. Apple’s motion demonstrates that PTAB does not publish ex parte communications into the administrative record as required by the APA, which is the exact issue Saint Regis requested discovery on and was denied… The PTAB’s decision to largely prevent the Saint Regis tribe from filing any additional papers in the case to which they are a party seems remarkable given the fact that the PTAB has opened up the proceedings of the Saint Regis trials to allow amicus briefings from third parties with an interest in the case. So, it would seem that the PTAB seems more interested in giving the agency’s supporters a say in these cases than the actual patent owner whose property rights are on the line, hardly the result one would anticipate if the PTAB were a court operating with any true sense of justice.

The St. Regis tribe is seeking discovery on due process concerns posed by the potential of political or third-party pressure asserted to “reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents.”… The St. Regis tribe is seeking the oral hearing to push for discovery in a total of 18 topics. These topics include the makeup of the panels in the St. Regis proceedings, the date each APJ was added to the panel, how the makeup of the panel was decided, who determined the makeup of the merits panel, when the decision on the panel’s makeup was made as well as the disclosure of all ex parte communications concerning the St. Regis case. St. Regis is also seeking communications made on the sovereign immunity issue between specific APJs, including APJs Jacqueline Harlow and Jennifer Bisk.

As we mark the close of yet another year, we’re provided with a perfect opportunity to look back on the previous twelve months and see what has transpired. No one could call it a good year for patent owners (except those with the largest pockets, of course) starting with the United States’ 10th-place ranking among national patent systems in the U.S. Chamber of Commerce’s IP Index, and it didn’t appear as though any weaknesses in uncertain patentability across the U.S. technological landscape were addressed in a positive manner this year. It’s inevitable that the ball will drop on New Year’s Eve and calendars everywhere will turn from 2017 to 2018. Whether the U.S. federal government will be able to stop the death knell sounding doom for our nation’s patent system, however, is still anyone’s guess and it seems far from likely.

It is that time once again when we look back on the previous year in preparation to close the final chapter of 2017 in order move fresh into the year ahead. 2017 was a busy year in the patent world, although change was not as cataclysmic as it had been in past years, such as 2012 when the PTAB and post grant challenges began, in 2013 when AIA first to file rules went into effect, or in 2014 when the Supreme Court decided Alice v. CLS Bank. It was, nevertheless, still an interesting year… To come up with the list below I’ve reviewed all of our patent articles, and have come up with these top 10 patent stories for 2017. They appear in chronological order as they happened throughout the year.

These IP deals were not necessarily selected for their size, but for their indicative nature of a set of circumstances that exist in current markets that made these deals not only possible, but essential… The three trends highlighted by these patent deals: acquisitions by foreign buyers, Unicorns and other well-funded startups looking for assets, and various strategies to avoid the burden imposed by the PTAB, are likely to continue well into 2018. None of these deals would have been entered into if the parties involved did not deem U.S. patents valuable and critical for their relative business, and that is one positive message that all of us involved in the IP marketplace can take with us into the new year.

An expanded panel of the PTAB, in a majority opinion authored by Chief Judge David Ruschke, agreed with the University of Minnesota that an IPR proceeding is an adjudicatory proceeding of a federal agency from which state entities may be immune. Nevertheless, the PTAB ruled that the University of Minnesota had “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.”

Unfortunately, there’s every indication that today’s event at Brookings will feature more of the same kind of misguided rhetoric on perceived issues with the patent system which don’t truly exist. The evidence for this starts with the moderator for the day’s final roundtable discussion, titled Realigning Incentives to Increase Patent Quality. The moderator for this discussion will be Tim Lee, senior reporter of tech policy for Ars Technica. Lee has written in the past on the effects of “ridiculous patent litigation” and has given space to viewpoints which want to limit patentability in certain sectors, such as in business methods. Lee has also been very critical of appellate court decisions in patent cases in recent years to the point that assertions he’s made on case law regarding the patentability of software inventions border on the ridiculously absurd. This individual, who has a clearly anti-patent viewpoint, will be controlling the discussion during the final panel roundtable on patent policy.

Native American tribes possess and exercise inherent sovereign immunity. It is also undisputable that such power may be abrogated, limited or qualified only by the express and unequivocal action of Congress. In Kiowa Tribe of Oklahoma v Manufacturing Technologies, Inc., the U.S. Supreme Court explicitly affirmed that no court or administrative agency may interfere with that power absent Congressional legislation… The Court again in Bay Mills reiterated that absent congressional limitations, tribes exercise unqualified immunity. The Court even went so far as to note that “a fundamental commitment of Indian law is judicial respect for Congress’s primary role in defining the contours of tribal sovereignty.”

The motion of the St. Regis Mohawk Tribe (“the Tribe”) is based on the misplaced theory that Tribal Sovereign Immunity is applicable to administrative proceedings before the PTAB. While the Supreme Court has repeatedly confirmed that, as a matter of judicial construct, Native American Tribes (like the Tribe) can be immune from “suits” in a court absent abrogation or waiver (see Paper 81, at 8), 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). In this regard, a PTAB proceeding is not a “suit” in court, but instead an administrative proceeding in which the Office (through the PTAB) takes “a second look at an earlier administrative grant of a patent.” Cuozzo Speed Techs. v. Lee, 136 S. Ct. 2131, 2144 (2016) (“Cuozzo”).

Tribal sovereignty is not a “sham” or a “contrivance,” even when it produces results Petitioners do not like. There is no dispute that the St. Regis Mohawk Tribe is what the Supreme Court has termed a “domestic dependent nation[]” entitled to tribal sovereign immunity and that its agreement with Allergan is a legitimate contract… Moreover, Petitioners’ objections are being raised in the wrong forum. Congress – rather than the Board, the Article II executive, or even the Article III courts – controls the availability of tribal sovereign immunity.