Alert November 06, 2017

PTAB Permits Amicus Briefing in Connection With the St. Regis Mohawk Tribe’s Motions to Terminate IPR Based on Tribal Sovereign Immunity

Summary

In a move that has attracted widespread attention, Allergan, Inc. assigned its patent rights to the St. Regis Mohawk Tribe, in a bid to leverage the Tribe’s sovereign immunity to protect the patents from IPR review. The PTAB is now accepting amicus curiae briefs from parties interested in addressing the issues raised in the St. Regis Mohawk Tribe’s motions to terminate the IPRs based on tribal sovereign immunity.

In a move that has attracted attention from industry, the judiciary and Congress, Allergan, Inc. assigned its rights to patents covering its Restasis® dry eye treatment to the St. Regis Mohawk Tribe (the Tribe) and simultaneously licensed back those patents in exchange for the Tribe’s agreement to invoke tribal sovereign immunity in inter partes review (IPR) proceedings before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the PTAB). At the time of the assignments, these patents were the subject of both district court litigation and IPR proceedings. Allergan announced the assignments in a press release, which explained that the transfer was a bid to shield the patents from IPR by leveraging the Tribe’s sovereign immunity.

While the district court has since ruled that the patents are invalid as obvious, the Tribe’s motions to terminate the IPR proceedings based on its tribal sovereign immunity remain pending at the PTAB. The PTAB is now accepting amicus curiae briefs from parties interested in addressing the issues raised in the Tribe’s motions to terminate. Briefs shall be filed no later than December 1, 2017, and shall be no longer than 15 pages. The PTAB has requested that to the extent possible, interested amici who wish to present similar arguments coordinate the filing of a joint amicus brief.

For more information, see Paper No. 98, entered November 3, 2017, in IPR2016-01127, -01128, -01129, -01130, -01131 and -01132.