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Sovereign Immunity

Amicus Curiae Briefs Authorized on Tribal Sovereign Immunity in IPRs of Restasis® Patents

by Knobbe Martens on

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

PTAB Permits Amicus Briefing in Connection with the St. Regis Mohawk Tribe’s Motions to Terminate IPRs Based on Tribal Sovereign...

by Goodwin on

In a move that has attracted attention from industry, the judiciary, and Congress, Allergan, Inc. assigned its rights to patents covering its Restasis® dry eye treatment to the St. Regis Mohawk Tribe (“Tribe”) and...more

More Instances of Tribal Sovereign Immunity Shielding Patents from PTAB Invalidation

Late this summer, Allergan entered into an agreement with the St. Regis Mohawk Nation to assign its rights in several Orange Book-listed patents involved in inter partes review proceedings, with the aim of having those...more

With Sovereign Immunity, the McCaskill Bill, and Oil States, Big Changes Might Be in Store for Inter Partes Review

When the American Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by...more

Missouri Senator Introduces Bill to Abrogate Native American Sovereignty for Inter Partes Review Petitions

by Orrick - IP Landscape on

S.1948 – A bill to abrogate the sovereign immunity of Indian tribes as a defense in inter partes review of patents. Allergan, Inc. and The Saint Regis Mohawk Tribe v. Teva Pharmaceuticals USA, Inc., Mylan Pharmaceuticals,...more

Can Patent Owners Buy Sovereign Immunity?

by Weintraub Tobin on

The latest issue in the patent world is one no one would have expected – sovereign immunity. How did this issue arise? Allergan, the company that makes the dry-eye drug Restasis, has employed an aggressive strategy in...more

Senators and court complain of ‘anti-competitive’ transfer of patent rights to American Indian tribe

We have previously discussed antitrust implications of pharmaceutical companies’ efforts to maximize patent protection for their drugs. Consumers and generic drug makers, for instance, have alleged antitrust violations based...more

Sovereign Immunity and Inter Partes Review

by Knobbe Martens on

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

Patents for Billion Dollar Restasis Drug Under Siege

Using an innovative strategy, pharmaceutical company Allergan recently transferred the patents associated with the eye drug, Restasis, to the Saint Regis Mohawk Tribe, in exchange for an exclusive license back. The tribe...more

District Court Allows Mohawk Tribe to Join ANDA Litigation, Finds Patents at Issue Invalid

In something of an anticlimax, Federal Circuit Judge William Bryson, sitting by designation on the bench of the U.S. District Court for the Eastern District of Texas, granted Allergan's motion to join the St. Regis Mohawk...more

Court Permits St. Regis Mohawk Tribe to Join Restasis® Litigation, but Nixes Allergan’s Patents

by Goodwin on

Today, Judge Bryson, a Federal Circuit judge sitting by designation in the U.S. District Court for the Eastern District of Texas, Marshall Division, issued an Opinion and Order granting Allergan’s motion to join the St. Regis...more

The Restasis Patents and Tribal Sovereign Immunity: New Developments

by Polsinelli on

The battle between Mylan and Allergan over the six Orange Book patents covering Restasis has taken a next formal step. On Sept. 22, the new patent-owner, the Saint Regis Mohawk Tribe, moved to dismiss Mylan’s requests for...more

Issue Eight: PTAB Trial Tracker

by Goodwin on

A Surprise Move Designed to Shield Patents from IPR - On September 8, 2017, Allergan announced that it had assigned its patents covering Restasis®, a dry eye treatment with a reported $1.4B in sales last year, to the Saint...more

Schwabe Defends Tribal Sovereignty

The trial team of Brien Flanagan, Aukjen Ingraham and Sarah Lawson successfully stood up to outside parties attempting to interfere in the Navajo Nation’s economic activity. Federal Judge Steven Logan granted the Navajo...more

Mohawk Nation Exercises Sovereign Immunity in Inter Partes Review

Not unexpectedly, on Friday, the Saint Regis Mohawk Tribe (SRMT) filed a motion before the Patent Trial and Appeal Board (PTAB) to have inter partes review Nos. IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130,...more

Pharmaceutical Company Seeks to Use Tribal Sovereign Immunity to Avoid Inter Partes Review

by Snell & Wilmer on

Allergan announced on September 8, 2017, that it had transferred its patents covering the drug Restasis to the Saint Regis Mohawk Tribe and will pay the tribe $13.75 million. The tribe is also eligible to receive $15 million...more

Podcast Episode 8 – When the Government Decides to Flood Your Property, Is There a Claim? With Derrick Carson of Locke Lord LLP,...

by Locke Lord LLP on

Locke Lord LLP’s Eminent Domain team hosts an original podcast series. Derrick Carson, Partner in Locke Lord's Houston office, joins us in Episode 8 to discuss Hurricane Harvey, the flooding in Houston and southeast...more

Allergan and the Saint Regis Mohawk Tribe Enter Patent Agreement to Defend Against IPR of RESTASIS® Patents

by Knobbe Martens on

In a creative move to take advantage of recent PTAB decisions regarding Sovereign Immunity, (see e.g., Covidien LP v. University of Florida Research Foundation, IPR2016-01274 and Neochord, Inc. v. University of Maryland,...more

Allergan Avails Itself of Sovereign Immunity

The 11th amendment to the Constitution reads: The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of...more

Mohawks To The Rescue? Can You Immunize Patents From PTAB Review By Assigning To A Native American Tribe?

by Pepper Hamilton LLP on

In an unusual move to combat the perceived bias in favor of patent challengers at the U.S. Patent Office’s Patent Trial and Appeal Board (PTAB), the Irish drug company Allergan has decided to warehouse its key patents on the...more

Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review

by Foley & Lardner LLP on

As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution (“Sovereign Immunity of State...more

Transfer of Patents to Tribe May Preclude PTAB Scrutiny

by Morgan Lewis on

Sovereign immunity is being invoked in an effort to halt inter partes reviews. In two separate opinions earlier this year, the Patent Trial and Appeal Board (PTAB) held that an inter partes review (IPR) proceeding is a...more

Best Practices for Wastewater Utilities in Light of Virginia Inverse Condemnation Decision

by McGuireWoods LLP on

The Virginia Supreme Court recently expanded the potential liability of Virginia localities and public authorities for backups and overflows from sewage collection and treatment systems. The court allowed insurers who paid...more

Eighth Circuit Rejects Sovereign Immunity Defense to FCA Qui Tam Action

by Dorsey & Whitney LLP on

Last month the Eighth Circuit considered and rejected an Eleventh Amendment sovereign immunity defense to a qui tam action under the False Claims Act. In United States ex rel. Fields v. Bi-State Development Agency, No....more

Sovereign Immunity Cannot Protect Patent Co-Owned by Private Party

by McDermott Will & Emery on

Addressing for the first time the issue of whether an inter partes review (IPR) may proceed where one of the co-owners was entitled to sovereign immunity under the 11th Amendment, the Patent Trial and Appeal Board (PTAB) held...more

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