Allergan transferred its patents for its Restasis dry eye treatment to the tribe earlier this month, granting the patents immunity from IPR at the US Patent Trial and Appeal Board because Native American tribes hold sovereign immunity against any IPR challenges.
In its motion to dismiss the IPR review, filed on 22 September, the tribe said that the US Supreme Court had previously been asked to limit the scope of tribal immunity in the commercial context, but declined the do so and later reaffirmed the holding when asked to scale back tribal immunity on policy grounds.
The court stated that only Congress can “determine whether or how to limit tribal immunity”.
Allergan had previously said that its agreement with the tribe would have no impact on its patent litigation against the manufacturers of proposed generic versions of the drug.
Bob Bailey, chief legal officer at Allergan, explained that the tribe had come to it with a “sophisticated opportunity to strengthen the defense of our Restasis intellectual property in the upcoming IPR proceedings before the Patent Trial and Appeal Board”.
Bailey 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."
The tribe said this was an important step towards diversifying its economic strategy and ensuring it remains self-reliant.