Saint Regis Mohawk Tribe Seeks Discovery Into PTAB in Ongoing Battle Over Restasis

On January 2, counsel for the Saint Regis Mohawk Tribe filed a motion for discovery and requested an oral hearing concerning which judges will sit on the Patent Trial and Appeal Board (PTAB) panel that oversees its case.
Kelly Davio
January 04, 2018
On January 2, counsel for the Saint Regis Mohawk Tribe filed a motion for discovery and requested an oral hearing concerning which judges will sit on the Patent Trial and Appeal Board (PTAB) panel that oversees its case. The move comes after months of controversy over drug maker Allergan’s transfer of its patents for dry-eye drug Restasis to the Tribe in an effort to protect patents from inter partes review (IPR). Under Allergan’s deal, the Tribe invoked sovereign immunity from IPR proceedings in exchange for payment, drawing ire from Congress and industry alike.

Tuesday’s motion suggests that the Tribe may have concerns that backlash against the deal could affect its case; the motion states that the Tribe seeks information on the impartiality of the panel of judges, and on “whether political or third-party pressure has been asserted to reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents.”

The Tribe notes that Congress has taken an interest in the proceedings, and implies that political entities could seek to influence the case’s outcome. It also suggests that the impartiality of the panel could be marred by inclusion of judges such as Chief Judge David Ruschke, “a person who has made prior public comments on the issue of sovereign immunity and this case.” (Ruschke previously ruled in an unrelated case that a sovereign entity had waived its right to immunity by having asserted its patents in a federal district court litigation.)

The motion goes on to claim that the United States Patent and Trademark Office has “a direct pecuniary interest in the outcome of this case” because the PTAB collects fees for IPR proceedings.  

The motion requests discovery on a number of matters, including the makeup of the merits panel, the dates on which parties were added to the panel, and how the panel’s membership was determined. It also requests disclosure of all ex parte communication that the panel may have had about the case; all communications with Congress, the Executive Branch, or any other parties concerning either the case itself or sovereign immunity in general; information regarding the assignment of judges to other IPR proceedings involving the petitioners; information about the communications of specific judges on the topic of sovereign immunity, and policy determinations covering sovereign immunity.

Finally, the tribe asked for details about the way in which annual bonuses for merits panel members are determined, the annual reviews of all members of the panel, and information on the PTAB’s projections for IPR fees to be collected in 2018 (including the potential for reductions in fees should the Tribe’s sovereign immunity against IPR proceedings be “respected by PTAB”).
 

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