Litigation Waiver Now Threatens Tribal Immunity Dispute

As I pointed out before the holidays, given the practical need to litigate patents in today’s monetization environment, the Board’s litigation waiver decision in Ericsson v. Regents of the University of Minnesota effectively unravels the value of sovereign immunity defenses at the PTAB.

On the heels of the Ericsson decision, further briefing on the waiver issue was recently authorized in Mylan Pharmaceuticals Inc., et al. v. Saint Regis Mohawk Tribe. In response, the Tribe has sought discovery on the Board’s expanded panel practice as well as its internal policy deliberations on sovereign immunity.

After the Tribe’s request for discovery was denied by the Board in email correspondence, it filed the email correspondence as an exhibit (here) along with an outline of its desired discovery (here), which seeks:

• The makeup of the merits panel in these proceedings,

• The date each APJ was added to the panel in these proceedings,

• How the makeup of our merits panel was decided,

• Who determined the makeup of our merits panel,

• When that decision was made,

• The disclosure of all ex parte communications concerning our case, the Allergan/Tribe transactions, or sovereign immunity with any member of our merits panel, both before and after they were added to our merits panel,

• All communications members of our merits panel have had with Congress or the Executive Branch concerning our case or sovereign immunity,

• Communications our merits panel members have had with anyone concerning sovereign immunity or this proceeding prior to their addition to the panel,

• The assignment of Tina H. Hulse, Christopher Paulraj, Sheridan Snedden, David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller to other IPR proceedings involving the Petitioners,

• The dates David Rushcke, Scott Boalick, Jacqueline Bonilla, and Scott Wedenfeller were added to the panels of IPR2017-01068 and IPR2017-01186,

• Ex parte communications with the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or those proceedings,

• Communications David Ruschke, Scott Boalick, Jacqueline Bonilla, and Scott Weidenfeller had prior to joining the merits panel in IPR2017-01068 and IPR2017-01186 concerning sovereign immunity or that proceeding,

• Any communications concerning the opinions filed in IPR2017-01068 and IPR2017-01186, including the concurrence,

• Communications between Jacqueline Harlow and Jennifer Bisk concerning sovereign immunity or the motions to dismiss based on sovereign immunity in IPR2017-01068 and IPR2017-01186,

• Any policy determinations made by the USPTO or PTAB concerning sovereign immunity,

• The methodology used to determine the annual bonuses (or other merits based compensation) for each member of our merits panel,

• The annual reviews of all members of our merits panel, including the identification of the person who performs the review, the criteria used for the review, and the outcome of the review, and

• Materials related to any PTAB projections or predictions for IPR fees in 2018, including any potential for reductions in fee income if sovereign immunity were respected by PTAB or upheld on appeal.

Of course, additional discovery may be obtained between IPR litigants — when in the interests of justice. The Board appears to point out in the email correspondence that discovery from the agency is not authorized by Rule 42.51. The Tribe alternatively argues that the Freedom of Information Act (FOIA) authorizes the discovery from the agency. In this regard, perhaps a formal FOIA request has been separately submitted (or is forthcoming), but there would appear to be a significant amount of intra-agency correspondence and personnel matters that would be exempt under FOIA in any event.

In the short term, the Ericsson dispute may force the litigation waiver issue to the CAFC on mandamus. Setting aside the waiver debate, it is far from certain whether the Federal Circuit will even endorse sovereign immunity as being applicable to PTAB proceedings in the first instance.

Scott A. McKeown is an author of the Patents Post Grant.