As we’ve reported on previously, Allergan, Inc. assigned its rights to patents covering its Restasis® dry eye treatment to the St. Regis Mohawk Tribe (“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 (“Board”). On September 22, 2017, the Tribe moved the Board to terminate the IPRs based on its tribal sovereign immunity. The Board then invited amicus curiae briefs from parties interested in addressing the issues raised in the Tribe’s motions to terminate.
On February 23, 2018, in a per curiam opinion, the Board denied the Tribe’s motion to terminate the IPRs and found that “the Tribe has not established that the doctrine of tribal sovereign immunity should be applied to these proceedings” and that the IPR “proceedings can continue even without the Tribe’s participation in view of Allergan’s retained ownership interests in the challenged patents.” The Board “conclude[d] that reconsideration of the patentability of issued claims via inter partes review is appropriate without regard to the identity of the patent owner” and therefore “the Tribe’s assertion of its tribal immunity does not serve as a basis to terminate these proceedings.” The Board also concluded that the IPRs could proceed without the Tribe’s participation because “[b]ased on the terms of the License between Allergan and the Tribe, [the Board] determine[d] that the License transferred ‘all substantial rights’ in the challenged patents back to Allergan.”
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