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.”

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