Native American tribe files brief in patent dispute

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).

In September 2017, Allergan paid the tribe $13.7 million in an agreement which saw the tribe acquired its patents for dry eye medication Restasis (cyclosporine ophthalmic emulsion). The agreement granted Allergan an exclusive licence to the treatment.

The North American tribe then sought to dismiss IPRs instigated by Mylan, Teva and Akorn, arguing that it had tribal immunity from IPR challenges.

However, in February, the PTAB denied tribal immunity in the IPRs. According to the tribe and Allergan’s brief, the board “offered conclusory assertions rather than reasoned analysis to support its decision”.

It said that the PTAB’s decision contradicted the US Supreme Court, which has repeatedly reaffirmed tribal immunity as settled law.

The brief argued that the board erred in its decision that it could proceed with the IPRs in the tribe’s absence because Allergan is the “effective patent owner” of the challenged patents.

It said that in fact, the tribe is the patent owner and the board did not have the authority to invoke the concept of “effective patent owner”.

According to the parties’ argument, the PTAB was also wrong in holding that the Saint Regis Mohawk Tribe is not an “indispensable party” and that the case could proceed without it.

It claimed that the board had failed to recognise an alleged significant prejudice to the tribe if the IPRs were permitted to continue in its absence.

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