On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR.
Allergan Pharmaceuticals owned patents that it had asserted in litigation against various generic...more
7/27/2018
/ Adjudicatory Process ,
Administrative Agencies ,
Administrative Proceedings ,
Allergan Inc ,
Appeals ,
Defense Strategies ,
Enforcement Actions ,
Generic Drugs ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Motion to Dismiss ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®. See The Saint Regis Mohawk Tribe is not entitled to...more
4/2/2018
/ Allergan Inc ,
Appeals ,
Dismissals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Interlocutory Appeals ,
IP Assignment Agreements ,
Jurisdiction ,
Motion To Stay ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Reversal ,
Sovereign Immunity ,
Stays ,
Tribal Governments
The University of Minnesota (UMinn) and Toyota Motor Corp. (Toyota) co-own U.S. Patent 8,394,618 (the ’618 patent). After Reactive Surfaces Ltd. filed a petition for IPR of the ’618 patent, UMinn and Toyota filed a motion to...more
The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. See Allergan and the Saint Regis Mohawk Tribe...more
3/8/2018
/ Allergan Inc ,
America Invents Act ,
Appeals ,
Co-Ownership ,
Congressional Intent ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Motion to Dismiss ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
A closely watched case on sovereign immunity, Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, has now been terminated by the patent owner’s request for adverse judgment....more
On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court. ...more
The Saint Regis Mohawk Tribe’s recent motion to terminate pending IPRs on patents purported to cover Allergan’s Restasis® product has spurred two parties to seek authorization from the PTAB to file amicus briefs. Earlier this...more
Sovereign immunity refers to the doctrine that the government cannot be sued without its consent. Specifically, the 11th Amendment precludes federal courts from exercising jurisdiction over states in suits brought by private...more
10/18/2017
/ Dismissals ,
Eleventh Amendment ,
Exclusive Licenses ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Joint Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
State Universities ,
Tribal Governments
September 16, 2017 marked five years since the Patent Trial and Appeal Board (PTAB) was created. Some of the notable statistics and trends of the previous 5 years are shown here....more
The PTAB has again addressed sovereign immunity in the context of an IPR. Reactive Surfaces, LTD. petitioned for IPR of U.S. Patents No. 8,394,618 and 8,252,571. The ’618 and ’571 patents are co-owned by Toyota Motor...more
On May 23, 2017, the PTAB granted the University of Maryland’s (UM) motion to terminate inter partes review based on UM’s sovereign immunity in Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc.,...more
On January 25, 2017, a panel of the Patent Trial and Appeal Board (PTAB) held that “Eleventh Amendment Immunity bars the institution of an inter partes review against an unconsenting state that has not waived sovereign...more