Allergan, Inc. v. TWi Pharmaceuticals, Inc. et al DC

The US Supreme Court has declined to grant certiorari in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals (2018-0899), ending a controversial patent-shielding strategy first used in late 2017 by a Native American tribe and its counsel. Under that strategy, the Saint Regis Mohawk Tribe acquired certain patents from pharmaceutical company Allergan and NPE SRC Labs, LLC, hoping to shield those assets from inter partes review (IPR) using the tribe’s sovereign immunity. However, in February and July 2018, the Patent Trial and Appeal Board (PTAB) and Federal Circuit each ruled that the tribe could not assert its immunity against IPR, although they each reached that conclusion on markedly different grounds from one another.

In July 2018, the Patent Trial and Appeal Board (PTAB) saw the first new petition for inter partes review (IPR) filed against a Native American tribe since the Board’s March ruling that IPRs against tribes are not barred by sovereign immunity, a decision that was upheld by the Federal Circuit on July 20. Institution decisions were also issued by the Board in July for IPRs against Uniloc Corporation Pty. Limited and Sound View Innovations, LLC, among other notable plaintiffs. In addition, the PTAB issued final decisions throughout July for IPRs against a variety of other NPEs, from Intellectual Ventures LLC (which has continued to pursue its existing campaigns but has seemingly stopped filing new US litigation) to smaller entities like Andrea Electronics Corporation and XPRT Ventures LLC as well as individual inventor Daniel L. Flamm.

The Patent Trial and Appeal Board (PTAB) has rejected a motion to dismiss filed in several inter partes reviews (IPRs) by the Saint Regis Mohawk Tribe, declining to hold that the tribe’s sovereign immunity protects it from IPR. The February 23 ruling is just the latest setback for Allergan, the original owner of the patents challenged in those IPRs, which in September 2017 announced a controversial agreement under which it would assign the patents to the Mohawk tribe to shield the patents from PTAB challenges—only to see the same patents invalidated in district court. Meanwhile, shortly after the Board’s decision in the Allergan IPRs, Apple cited the same arguments in its opposition to a similar motion to dismiss in its IPR against MEC Resources, LLC, an entity owned by another Native American tribe seeking to leverage sovereign immunity.

Early last month, Allergan and the Saint Regis Mohawk Tribe announced a controversial arrangement under which the tribe would acquire the patents for Allergan’s dry eye treatment Restasis and license them back to Allergan. While the deal was intended to shield the patents from inter partes review (IPR) under the tribe’s sovereign immunity, that protection does not protect the patents from district court validity challenges, since the filing of suit waives immunity for such proceedings. As a result, Allergan’s deal with the tribe did not prevent District Judge William C. Bryson from ruling, on October 16, that all of the asserted claims from the six Restasis patents at issue are invalid as obvious over prior art (2:15-cv-01455). That order comes shortly after the September assignment of an additional 59 Restasis patent assets, from Allergan to the Saint Regis Mohawks, was made public by the USPTO. Meanwhile, the tribe has started a new campaign with coplaintiff SRC Labs, LLC under a similar licensing arrangement; the two entities have accused Amazon (2:17-cv-00547) and Microsoft (1:17-cv-01172) of infringing several computing patents.