We're Ready To Review Your Legal Matter

We Work With Clients Locally And Globally

Sovereign Immunity and Patent Challenges, Part II

Over the last several months, the USPTO's Patent Trial & Appeal Board (PTAB) has dismissed multiple petitions for Inter Partes Review (IPR) challenging the validity of a patents owned by university entities, including the University of Minnesota, the University of Maryland, Baltimore, and the University of Florida Research Foundation. These dismissals were each based on the fact that these entities are state institutions, and as such they are protected by Sovereign Immunity under the Eleventh Amendment.

Over the last several months, the USPTO's Patent Trial & Appeal Board (PTAB) has dismissed multiple petitions for Inter Partes Review (IPR) challenging the validity of a patents owned by university entities, including the University of Minnesota, the University of Maryland, Baltimore, and the University of Florida Research Foundation. These dismissals were each based on the fact that these entities are state institutions, and as such they are protected by Sovereign Immunity under the Eleventh Amendment.

Adding a new twist to this issue, the pharma company Allergan recently transferred six of its patents directed to the successful Restasis product to the St. Regis Mohawk Tribe, while reserving an exclusive license for itself to continue using the patented technology. It has been reported that the tribe received $13.5 million up front and is scheduled to receive $15 million annually, so long as the patents remain valid. Notably, the St. Regis Mohawk Tribe is a sovereign nation for purposes of the Eleventh Amendment, and thus Allergan has argued that the IPR challenges against these patents should now be dismissed on grounds similar to the challenges against the university-held patents.

On Monday, Federal Circuit Judge William Bryson (sitting in the Eastern District of Texas "by designation") held in the district court proceedings that the Restasis patents are invalid as being obvious in view of prior art, which will likely render the IPR challenge moot. However, Judge Bryson expressed concern regarding Allergan's legal strategy and its implications for the IPR process moving forward, noting in his opinion:

"If [Allergan] succeeds, any patentee facing IPR proceedings would presumably be able to defeat those proceedings by employing the same [approach]. In short, Allergan's tactic, if successful, could spell the end of the PTO's IPR program, which was a central component of the America Invents Act of 2011."

Since the announcement of the Allergan patent transfer, other patent owners have reportedly entered negotiations with sovereign tribes looking to use a similar strategy to maintain patent rights. It remains to be seen what long-term effects this approach will have on the IPR program.

No Comments

Leave a comment
Comment Information

Questions?

Bold labels are required.

Contact Information
disclaimer.

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

close

Privacy Policy

Email Us For A Response

10801 Mastin Boulevard
Suite 1000
Overland Park, KS 66210

Toll Free: 888-483-2697
Fax: 913-647-9057
Map & Directions