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Native American Tribe Can't Use Sovereign Shield Against Patent Review

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By William Vogeler, Esq. on July 25, 2018 3:58 PM

Once upon a time, Native American Indians won big time.

It wasn't at the Battle of the Little Bighorn, where General George Armstrong Custer learned that the native people were serious about protecting their property. It was last year, when the Saint Regis Mohawk Tribe struck a deal with Allergan.

The pharma giant paid the tribe $17.75 million with a promise to pay $15 million annually for patent protection. The tribe was to use its sovereign immunity against inter partes reviews. It didn't work.

Battle of the IPR

The tribe got paid, but Allergan lost in its scheme to avoid patent challenges to its chronic dry eye treatments. A federal appeals court said the company can't use the tribal shield to stop the patent review process.

The U.S. Federal Circuit Court of Appeals said the United States Patent and Trademark Office acts for the United States as a "superior sovereign." It has the power to review its own grants of patents, the appeals court said in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals.

The battle really started in 2016, when Mylan petitioned for IPR. A week before the hearing was to begin in September 2017, however, Allergan transferred its Restasis patents to the tribe.

The tribe moved to terminate the proceedings, arguing its sovereign immunity. The board denied the motion, and the federal circuit agreed the immunity did not apply.

Sovereign Immunity for Rent?

The Electronic Frontier Foundation, which filed an amicus brief supporting Mylan in the case, said it was concerned that companies were attempting "to rent sovereign immunity."

"In this case, the tactic was part of an attempt to use bad patents to prop up drug prices for everyone," the advocacy organization posted on its blog. "We are glad the Federal Circuit has rejected the tactic."

The Saint Regis Mohawk Tribe, backed by Allergan, may appeal. But once upon a time, the U.S. Supreme Court had time to hear more cases.

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