Native American tribe aims to dismiss Allergan patent IPRs
The Saint Regis Mohawk Tribe has attempted to dismiss inter partes reviews (IPR) brought by Mylan.
Earlier this month, Allergan announced that it had transferred its patent rights for a dry eye treatment to the Native American tribe.
The tribe was paid $13.75 million to acquire Restasis (cyclosporine ophthalmic emulsion) and has granted Allergan an exclusive licence to the treatment.
The patents transferred to the tribe include US numbers 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930; and 9,248,191.
Almost immediately, there was a backlash, with commentators questioning whether the deal was a misuse of sovereign immunity.
Mylan, the company that had requested six IPRs of the patents, claimed it was a “desperate” and “transparent” delay tactic, in a filing at the US District Court for the Eastern District of Texas, Marshall Division.
On Friday, September 22, the tribe filed a motion dismiss (pdf) IPR of the patents, based on the tribe’s sovereign immunity from IPR challenges.
“The tribe is a sovereign government that cannot be sued unless US Congress unequivocally abrogates its immunity or the tribe expressly waives it. Neither of these exceptions apply here,” said the motion.
In order to overcome economic disadvantages, the tribe took “steps to diversify its economy with investments in innovative businesses and various enterprises to foster jobs and entrepreneurship”.
The tribe, in a previous press release, said US universities have successfully employed this strategy.
In May this year, LSIPR reported that the Patent Trial and Appeal Board held that a heart valve patent owned by the University of Maryland, Baltimore was immune to IPR.
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