12 September 2017
Dublin
Reporter: Barney Dixon

Allergan transfers patents to Native tribe


Dublin-based pharmaceutical giant Allergan has transferred all Orange Book-listed patents for its Restasis dry eye treatment to a Native American tribe, granting the patents immunity from inter partes review (IPR) at the US Patent Trial and Appeal Board (PTAB).

The Saint Regis Mohawk Tribe holds sovereign immunity against IPR challenges and has since filed a motion to dismiss the multiple IPR challenges against Restasis.

Allergan says the agreement will have no impact on its patent litigation against the manufacturers of proposed generic versions of the drug.

The tribe will receive $13.75 million upon execution of the agreement and $15 million in annual royalties.

Bob Bailey, chief legal officer at Allergan, said: “The Saint Regis Mohawk Tribe and its counsel approached Allergan with a sophisticated opportunity to strengthen the defense of our Restasis intellectual property in the upcoming IPR proceedings before the PTAB.”

He added: "Allergan evaluated this approach closely, with expert counsel in patent and sovereign immunity law … We are impressed with the Tribe's thoughtful and enterprising approach, which will allow them to achieve their goals of self-reliance and help them address the most urgent needs in their community."

According to Bailey, the company thoroughly reviewed recent case law in which the PTAB denied IPR proceedings against universities based on claims of sovereign immunity.

In a joint statement with Allergan, the Saint Regis Mohawk Tribal Council said: “This is a viable and sound opportunity for the Saint Regis Mohawk Tribe to enter into the patent, technology and research sector as part of our overall economic diversification strategy.”

It added: “We realize that we cannot depend solely on casino revenues and, in order for us to be self-reliant, we must enter into diverse business sectors to address the chronically unmet needs of the Akwesasne community; such as housing, employment, education, healthcare, cultural and language preservation."

More news
The latest news from IPPro Patents
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Ex-Oblon attorneys start own patent firm
22 September 2017 | Virginia | Reporter: Barney Dixon
Ex-Oblon attorneys Kirsten Grüneberg and Eric Myers have launched their own patent boutique law firm in Virginia
Red Hat expands Patent Promise
22 September 2017 | Raleigh | Reporter: Barney Dixon
Open-source software provider Red Hat has revised its Patent Promise, which was initially intended to discourage patent aggression against free and open-source software
Google and HTC sign $1.1 billion deal
21 September 2017 | California | Reporter: Barney Dixon
Google and HTC have signed a $1.1 billion agreement that will net Google a portion of HTC’s smartphone research and development team and a separate non-exclusive intellectual property license
IP Awareness Summit to be held in November
20 September 2017 | Chicago | Reporter: Barney Dixon
The Centre for Intellectual Property Understanding, alongside the Chicago-Kent College of Law, will be holding the first Intellectual Property Awareness Summit in Chicago on 6 November
Motorola wins direct infringement challenge
20 September 2017 | Washington DC | Reporter: Barney Dixon
Motorola has won its direct patent infringement appeal against Intellectual Ventures, but failed to secure an invalidity ruling
Dali and Fiplex settle down
19 September 2017 | California | Reporter: Barney Dixon
Dali Wireless has settled with Fiplex Communications over patents for its Public Safety distributed antenna systems (DAS) products
Nokia and LG complete arbitration
18 September 2017 | Espoo | Reporter: Barney Dixon
Nokia and LG Electronics have finally settled their patent licence dispute at the International Court of Arbitration