PTAB Denies Saint Regis Mohawk Tribe’s Motion to Terminate IPRs Based on Tribal Immunity
A panel of the Patent Trial and Appeal Board (PTAB) denied the Saint Regis Mohawk Tribe’s motion to terminate six instituted inter partes review (IPR) trials, holding that Native American tribal immunity does not apply to IPR proceedings. The Mohawk Tribe filed its motion to terminate after acquiring the challenged patents from Allergan, Inc. The challenged patents cover Allergan’s successful Restasisâ product for treating dry eyes.
Background
In a September 8, 2017 press release, Allergan announced that it had transferred ownership of "all Orange Book-listed patents for Restasisâ" to the Mohawk Tribe to defeat the IPR challenges based on the Mohawk Tribe’s "immunity from IPR challenges."The Mohawk Tribe received $13.75 million upon execution of the agreement, and is eligible to receive $15 million in annual royalties, while Allergan was granted an exclusive license in the six patents challenged in the IPR trials. In the press release, Allergan indicated that it entered into the agreement after reviewing prior decisions in which PTAB panels dismissed IPR proceedings, including Covidien LP v. University of Florida Research Foundation Inc. and Neochord, Inc. v. University of Maryland, Baltimore, where state universities successfully asserted the defense of sovereign immunity under the Eleventh Amendment to obtain dismissal of the IPR proceedings.