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2 March 2018Americas

Allergan and tribe to appeal PTAB’s immunity decision

The Saint Regis Mohawk Tribe and Allergan are planning to appeal against the Patent Trial and Appeal Board’s (PTAB) decision rejecting tribal sovereign immunity.

Late last week, the board rejected the Native American tribe’s attempt to dismiss inter partes reviews (IPRs) based on the tribe’s sovereign immunity claims.

In September last year, Allergan paid the tribe $13.75 million to acquire Restasis (cyclosporine ophthalmic emulsion). Allergan was then granted an exclusive licence to the treatment.

The tribe then filed a motion to dismiss the IPRs of the patents, but this failed, with the PTAB finding that sovereign tribal immunity doesn’t apply in IPR proceedings.

And, according to the PTAB, the proceedings can continue without the tribe’s participation in view of “Allergan’s retained ownership interests in the challenged patents”.

The PTAB noted that on the terms of the licence between Allergan and the tribe, the licence transferred “all substantial rights” in the challenged patents back to Allergan.

On Wednesday, February 28 Allergan and the tribe filed a formal notice of appeal with the PTAB, announcing plans to take the decision to the US Court of Appeals for the Federal Circuit.

“The board erred as a matter of law in holding that the tribe’s assertion of its sovereign immunity does not serve as a basis to terminate the proceedings and that Allergan can adequately represent the tribe in the proceedings in the tribe’s absence,” said the notice.

The tribe, in a response to the decision, claimed that the PTAB’s ruling contradicts other PTAB panels’ decisions from last year which held that state sovereigns do enjoy such immunity.

In May last year, LSIPR reported that a heart valve patent owned by the University of Maryland, Baltimore was immune to IPR.

The Saint Regis Mohawk Tribe went on to say that the decision also contradicts longstanding Federal Circuit and Supreme Court precedents which hold that sovereign immunity does apply to these exact types of proceedings.

“By ignoring these precedents, this administrative panel places sovereign governments on the same footing as private corporations,” it concluded.

LSIPR looked at the impact of this decision on other similar deals involving patent licences and sovereign immunity yesterday, March 1.

If the Federal Circuit chooses to affirm the PTAB’s finding that Allergan is the effective patent owner, then other companies may try to use different contractual terms to try to achieve immunity for hire, noted Tina McKeon, partner at Kilpatrick Townsend & Stockton.

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More on this story

Americas
20 April 2018   The Saint Regis Mohawk Tribe and Allergan have filed a brief in a dispute over whether tribal sovereign immunity can protect patents from the inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB).
Americas
20 July 2018   Allergan and the Saint Regis Mohawk Tribe suffered a blow today as the US Court of Appeals for the Federal Circuit affirmed a decision rejecting use of tribal sovereign immunity in the inter partes review.
Americas
10 September 2018   Seven states have urged the US Court of Appeals for the Federal Circuit to rehear a decision rejecting the use of tribal sovereign immunity in the inter partes review process.

More on this story

Americas
20 April 2018   The Saint Regis Mohawk Tribe and Allergan have filed a brief in a dispute over whether tribal sovereign immunity can protect patents from the inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB).
Americas
20 July 2018   Allergan and the Saint Regis Mohawk Tribe suffered a blow today as the US Court of Appeals for the Federal Circuit affirmed a decision rejecting use of tribal sovereign immunity in the inter partes review.
Americas
10 September 2018   Seven states have urged the US Court of Appeals for the Federal Circuit to rehear a decision rejecting the use of tribal sovereign immunity in the inter partes review process.