Allergan (NYSE:AGN) and the St. Regis Mohawk Tribe asked the Federal Circuit last week to stop the U.S. Patent Trial and Appeal Board from reviewing the IP for Allergan’s blockbuster eye drug, Restasis.
The move comes in response to the board’s February decision that sovereign immunity does not shield tribes from patent challenges.
The board’s ruling last month was a loss for Allergan; the pharmaceutical company transferred patent rights for its blockbuster eye drug to the St. Regis Mohawk Tribe last year to avoid inter partes review by generic pharma companies.
Allergan previously hedged its bets on sovereign immunity, arguing that the tribe’s status exempted them from review by the board and that the IPR challenges brought by Mylan (NSDQ:MYL), Teva Pharmaceuticals (NYSE:TEVA) and other companies should be dismissed.
But in its 42-page opinion, the board wrote that “reconsideration of the patentability of issued claims via inter parters review is appropriate without regard to the identity of the patent owner.”
The controversial patent deal between Allergan and the St. Regis Mohawk Tribe struck a nerve around the industry and among lawmakers. Earlier this month, Sens. Tom Cotton (R-Ar), Claire McCaskill (D-Mo) David Perdue (R-Ga), Joni Ernst (R-Ia) and Pat Toomey (R-Pa) introduced a bill this month that would prevent patent owners from claiming sovereign immunity as a means to shield IP from review by the U.S. Patent and Trademark Office.