Allergan/Mohawk deal may open possibility for alternative patent-challenge routes but SCOTUS case may throw IPR issue into question – lawyers

22 Sep 2017

Allergan/Mohawk deal may open possibility for alternative patent-challenge routes but SCOTUS case may throw IPR issue into question – lawyers

Allergan’s (NASDAQ:AGN) efforts to have inter partes review (IPR) disputes dismissed through transferring Restasis (cyclosporine ophthalmic emulsion) patents to a Native American tribe may uncover alternative nonlitigious patent-invalidation procedures for generic companies, experts said.

One potential mechanism is ex parte review, while manufacturing generics of patented drugs on tribal lands is another, experts explained. Additionally, an energy-industry dispute to appear before the Supreme Court may render the Allergan/Saint Regis Mohawk Tribe deal moot if it finds IPRs unconstitutional, they said.

Analysts note the two precedent cases, whereby IPR proceedings were thrown out after transfer of patents to state universities and said the Allergan/Mohawk deal could lead to similar deals in the future. This news service reported 21 September that Allergan’s efforts to get the generic companies’ IPRs dismissed by selling its Restasis patents to the tribe would hinge on the extent of sovereign immunity.

Allergan announced the deal with the tribe in an 8 September press release, transferring its patents to the tribe and then in-licensing it for an upfront fee and annual royalties. Citing tribal sovereignty, the tribe filed to dismiss IPR proceedings before the Patent Trial and Appeal Board (PTAB) by Teva Pharmaceutical Industries (NYSE:TEVA), Mylan (NASDAQ:MYL), Akorn(NASDAQ:AKRX), New York-based Argentum Pharmaceuticals and Mumbai-based Famy Care.

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