United States: PTAB Revokes Filing Privileges For Repeated Rules Violations

Last Updated: January 25 2018
Article by Matthew W. Johnson

In September 2017, Saint Regis Mohawk Tribe moved to dismiss six instituted trials on petitions filed by Mylan Pharmaceuticals Inc.  Those petitions challenged six patents that, at the time the petitions were filed, belonged to Allergan, Inc.  The Tribe argued that on "September 8, 2017, Allergan, Inc. assigned all six Patents-at-Issue in this case to the Tribe."  And that the "Tribe concurrently granted back an exclusive limited field-of-use license."  The Motion argued that because Mylan "cannot show that Congress has 'unequivocally' authorized this suit or that the Tribe has clearly and expressly waived its immunity, th[e] action must be dismissed."  This Tribe's motion has been of significant interest to many, with fifteen amicus briefs having been filed on request of the Board.

Jones Day's PTAB Blog has previously discussed PTAB sovereign immunity decisions.  See  Covidien, Neochord, and LSI/Ericsson.  Following the mid-December expanded panel decisions in the LSI and Ericsson cases, the Tribe took interest in the PTAB's expanded panel procedures.  Via email on December 22, the Tribe requested permission to file a motion seeking additional discovery on:

(i) the process used by the PTAB to determine the makeup of the panels in the LSI and Ericsson decisions, (ii) identification of the judges on the panel who supported the decisions issued in those cases, (iii) how different judges filed identical dissents in the two cases, (iv) any policy decisions made by USPTO that may have influenced the outcome of those cases, (v) an identification of the Judge's currently sitting on this panel, (vi) the process used to choose those Judges, and (vii) any policy decisions made by USPTO that may influence the outcome of this case.

The PTAB responded on December 27th by email stating that the request was denied because the requested discovery was not within the scope of 37 C.F.R. §42.51.  The Tribe renewed its request for a Board call to discuss its discovery request via return email that same day.  And before the Board could respond, the Tribe followed up by filing a January 2nd Request for Oral Hearing into the PTAB's E2E docket.  That request included briefing regarding the discovery requested and contained further categories of discovery including:

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.

The PTAB did not appreciate the unauthorized filing, especially with the Tribe's December 27th request for a teleconference still pending.  The Board issued a sternly worded Order on January 4th denying the request for oral hearing and denying the renewed request to file a motion for additional discovery.  In that Order, the panel admonished "counsel for the Tribe ignor[ing] our rules (once again)" in preemptively filing its January 2nd request and brief.  The panel stated: "To assist the tribe in complying with our rules, the Tribe shall not file any further papers in these proceedings without prior authorization from the Board."  The Order concluded by stating, "[W]e caution counsel for the Tribe that failure to comply with an applicable rule or order, abuse of discovery, and abuse of process are all grounds for sanctions."

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