October 17, 2017

Paul Keller Responds to Restatis Ruling, Tribal Patent Pacts

In an article published today by Law360, Metro-Detroit patent attorney Paul Keller helped shed some light on a pair of rulings from an East Texas federal judge that admitted a Native American tribe in a district court action and then invalidated claims in four patents for a pharmaceutical drug.

Allergan, a pharmaceutical company based in Dublin, had previously paid the Saint Regis Mohawk Tribe to take ownership of the patents for its Restasis drug in an attempt to shield them — by invoking the tribe’s sovereign immunity rights — from Inter Partes Review proceedings.  Although the patents were ultimately invalidated, some patent owners may use the lesson to hone a better strategy to shield their patents under sovereign immunity deals.

The rulings brought the larger issue of the legitimacy of tribal patent pacts into the national spotlight.  Senior U.S. Circuit Judge William Bryson called the strategy a “ploy” and stated that sovereign immunity is not a commodity that businesses can purchase to help avoid legal responsibility.  Some may view the ruling as a warning to patent owners not to pursue similar strategies in the future.

For Allergan, this also means that generic versions of its drug may soon enter the market.

Paul Keller suggests, however, that if the PTAB issues a case specific ruling on Allergan’s motion to dismiss the IPRs based on sovereign immunity, companies may continue to make agreements with Native American tribes that are better-suited to fit the ruling.  Unless a broad ruling comes out that ends tribal pacts under any scenario, he surmises, “companies are going to take whatever decision the PTAB might make and tweak their agreements with Native American tribes in order to take advantage of the tribes’ sovereign immunity for as long as they can.”

Harness Dickey will continue to monitor this ongoing.  For the latest patent law updates, please subscribe to the Harness Dickey blog.

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