More on the controversy that erupted in September

By Walter Olson

By ruling the patent invalid due to obviousness, a federal judge may have mooted Allergan’s innovative move to transfer its patent over a successful dry-eye drug, Restasis, to the St. Regis Mohawk tribe.

Allergan: we’ve transferred the patents for our dry-eye drug Restasis to the St. Regis Mohawk tribe, so now the Patent Trial and Appeal Board and our competitors can just go take a hike. The move follows a January decision by the PTAB to drop “a case against the University of Florida citing its sovereign immunity as a state institution. After that ruling, Michael Shore, a lawyer at Shore Chan DePumpo LLP in Dallas that represented the university, said the firm began looking for an Indian tribe that was interested in taking advantage of the ‘arbitrage opportunity.’” Rivals can still challenge the patents’ continuing validity in federal court, but that is a more cumbersome process. [Jonathan D. Rockoff, WSJ]

“The Restasis patents are at the center of a novel legal strategy that involves using Native American sovereignty rights to avoid certain types of patent reviews, called inter partes reviews, or IPRs….But this ruling won’t be the last time sovereign immunity is used to defend patents.” [Joe Mullin, ArsTechnica] And for something contrarian, Joanna Shepherd at Truth on the Market offers context on the bypassing of inter partes reviews, saying IPR is a process itself unbalanced in favor of patent challengers.

 

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