Tech companies have their say on Allergan-tribe deal at PTAB

The Computer & Communications Industry Association (CCIA) and the Association for Accessible Medicines (AAM) have urged the Patent Trial and Appeal Board (PTAB) to dismiss a Native American tribe’s attempt to shut down a series of inter partes reviews (IPRs).

After Allergan transferred its patent rights for a dry eye treatment to the Saint Regis Mohawk Tribe, the tribe attempted to dismiss IPRs brought by Mylan over the treatment.

The tribe was paid $13.75 million to acquire Restasis (cyclosporine ophthalmic emulsion).

On September 22, the tribe filed its motion to dismiss IPRs of the patents, based on its sovereign immunity from IPR challenges.

Mylan claimed the deal was a “desperate” and “transparent” delay tactic, in a filing at the US District Court for the Eastern District of Texas, Marshall Division.

In October, the court invalidated several Allergan patent claims at the centre of dispute, with Circuit Judge William Bryson claiming that Allergan’s licensing deal could spell the end for IPRs.

The Native American tribe responded to Mylan’s attempts to stop dismissal of the IPRs, claiming that Mylan has not “articulated any coherent legal theory to support their oft repeated allegation that this transaction is a sham”.

On Friday, December 1, a series of amicus curia briefs were filed at the PTAB.

The AAM, a generic drugs industry trade group, advised the board to deny the tribe’s motion and “finish the work it started nearly a year ago” when it instituted the IPRs.

“Tribes suffer no harm to their sovereign dignity when the federal government corrects its own error by cancelling a patent that never should have issued,” said the AAM.

It went on to say that the PTAB should re-examine the challenged claims to “maintain the integrity” of the patent system and discourage the use of “sham patent transfers”.

In a separate brief, the CCIA, along with the High Tech Inventors Alliance and the Internet Association, provided similar advice.

The associations explained that the PTAB’s authority to review the patents shouldn’t depend on the identity of the patent owner and that IPRs are not barred by tribal immunity.

The CCIA, a lobbying group that represents major technology companies including Google, Amazon and Samsung, stated that an IPR is unlike a judicial proceeding in which a state or a private party might sue a tribe without its consent.

“The tribe cannot reasonably complain that this situation offends its dignity. By stepping into Allergan’s shoes and taking ownership of the patent, the tribe accepted a federal monopoly allowing it to abridge the economic liberty of the general public,” said the brief.

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