11 January 2018
Washington DC
Reporter: Barney Dixon

Allergan moves to withdraw from Restasis IPR


Allergan has moved to withdraw from pending inter-partes review (IPR) proceedings against its old Restasis patents.

The pharmaceutical company transferred all Orange Book-listed patents for its Restasis dry eye treatment to the Saint Regis Mohawk tribe last year, in an attempt to grant the patents immunity from IPR.

In a motion to withdraw, filed with the US Patent and Trademark Office on 9 January, Allergan moved to dismiss six IPR petitions from Mylan Pharmaceuticals, stating that it had “ceased to be an owner of the six patents involved in these IPR proceedings”.

Allergan said it had assigned all six patents to the Saint Regis Mohawk tribe and was concurrently granted back an exclusive limited field-of-use licence.

Allergan paid the tribe $13.75 million for the agreement and annual royalties of $15 million.

The deal faced criticism from US senators and drug manufacturers who claimed it was anti-competitive.

In December 2017, the US Patent Trial and Appeal Board stripped the University of Minnesota of its sovereign immunity in an IPR challenge, casting a shadow on Allergan’s Restasis deal.

The panel said that “allowing [the] patent owner to assert its Eleventh Amendment immunity in this proceeding selectively so as to bar petitioner from obtaining the benefits of an IPR of the asserted patent would result in substantial unfairness and inconsistency.”

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
Nokia in deep waters at USITC
22 January 2018 | Washington DC | Reporter: Barney Dixon
The USITC will investigate Nokia over alleged infringement of Neptune Subsea Acquisitions and Xtera’s subsea telecommunication systems patents
Google and Tencent sign patent agreement
22 January 2018 | Shenzhen | Reporter: Barney Dixon
Google and Tencent have signed a long-term patent cross-licensing agreement, covering a range of products and technologies
Qualcomm NXP merger approved
19 January 2018 | Brussels | Reporter: Barney Dixon
The European Commission has approved Qualcomm’s acquisition of NXP, subject to full compliance with a series of commitments made by Qualcomm
Brinks, Gilson & Lione elects new president
19 January 2018 | Chicago | Reporter: Barney Dixon
Brinks, Gilson & Lione has elected a new president to succeed James Sobieraj
G&E launches IP practice
18 January 2018 | Wilmington | Reporter: Barney Dixon
Grant & Eisenhofer has launched an intellectual property practice, led by patent-trade secrets trial lawyer, Eric Evain
SCOTUS to hear extraterritorial damages question
17 January 2018 | Washington DC | Reporter: Barney Dixon
The US Supreme Court is to hear a case that considers whether patent owners should be able to recover lost profits from infringement outside of the US
Microsoft expands IP protection to Azure Stack
16 January 2018 | Redmond | Reporter: Barney Dixon
Microsoft has expanded its Azure intellectual property risk protection programme to cover its Azure Stack hybrid cloud platform