Mylan opposes Allergan’s attempted withdrawal from Restasis IPRs
Generics company Mylan Pharmaceuticals has resisted Allergan’s attempt to withdraw itself from a series of inter partes reviews (IPRs) relating to patents covering dry-eye medication Restasis (cyclosporine ophthalmic emulsion).
Mylan, Teva, and Akorn filed a petitioners’ opposition to Allergan’s motion to withdraw at the US Patent Trial and Appeal Board (PTAB) on Thursday, January 18.
Mylan had requested IPRs of the patents relating to Restasis, including US numbers 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930; and 9,248,191.
In January, Allergan claimed it didn’t have authority to respond to the IPRs in question, as it had transferred the Restasis patents to the Saint Regis Mohawk Tribe, LSIPR reported.
After acquiring the rights to Restasis, the tribe granted Allergan an exclusive licence to the treatment, in an agreement that saw the tribe receive $13.75 million.
The tribe claimed it has sovereign immunity from IPR challenges and requested a dismissal of the reviews.
Mylan’s opposition centres on the contention that Allergan’s request to withdraw relies upon “erroneous facts”.
Mylan alleged that, as the PTAB has not yet considered the tribe’s motion to dismiss, the granting of Allergan’s motion would prejudice the petitioners by prejudging the question of ownership.
The petitioners’ opposition asserts that the assignment of the patents to the tribe is a “sham” and doesn’t invalidate Allergan’s status as the patent owner.
The opposition went on to add that Allergan’s withdrawal would “constitute abandonment of the IPRs” and is an attempt to “prevent a decision on the merits” of the case by depriving the board of its jurisdiction.
“Allowing Allergan to contract its way out of IPR proceedings would essentially render IPRs a nullity” and undermine the “integrity of the patent system”, the document continued.
The petitioners requested that Allergan’s motion be denied or be decided on alongside the tribe’s motion to dismiss. Alternatively, Mylan argued that adverse judgment should be entered against Allergan.
Prior to Allergan’s request, the Saint Regis Mohawk Tribe was denied an information request relating to the “identity and impartiality” of the panel in this matter, as the PTAB deemed it improper.
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