Patent Trial and Appeal Board Issues Three Decisions in Disputes between Microsoft and St. Regis Mohawk Tribe


IPR2018-01594 FD

IPR2018-01601 Final Written Decision

IPR2018-01605 Final Written Decision

Briefs in one of the cases:

IPR2018-01594 – POs Preliminary Response

IPR2018-01594 Reply to Patent Owner_s Preliminary Response 2.28.19 FINAL

IPR2018-01594 – Patent Owners Sur-Reply

Allergan & St. Regis Mohawk Cert Petition on “Blocking Patent” Doctrine

Here is the petition in Allergan Inc. v. Teva Pharmaceuticals USA Inc.:

Allergan & SRMT Cert Petition

Questions presented:

Whether the Federal Circuit erred in this case, as it did in Acorda Therapeutics, Inc. v. Roxanne Laboratories, Inc., 903 F.3d 1310 (Fed. Cir. 2018), in holding that objective indicia of non-obviousness may be partially or entirely discounted where the development of the invention was allegedly “blocked” by the existence of a prior patent, and, if so, further erred by making an implicit finding that an invention was “blocked,” without requiring evidence of or making a finding of actual blocking, and in the face of evidence to the contrary.


Student Scholarship on the Allergan/Mohawk Case

Seth W. R. Brickey has published “Rent-A-Tribe: Using Tribal Immunity to Shield Patents from Administrative Review” in the Washington Law Review.

Here is the abstract:

 In 2017, Allergan Pharmaceuticals entered into an agreement with the Saint Regis Mohawk Tribe (SRMT). Allergan agreed to assign several patents to SRMT and to pay an initial sum of $13.75 million and annual royalties of approximately $15 million. SRMT, in exchange, licensed the rights to use the patents back to Allergan and agreed not to  waive its tribal immunity in any administrative proceeding challenging the patents. Two outcomes were expected as a result of this Allergan-Mohawk agreement. First, Allergan would retain the rights to manufacture and market a highly profitable drug while insulating the underlying patents from an unforgiving administrative inter partes review (IPR). Second, SRMT would embark on a new business venture of collecting and relicensing patents from third parties, effectively “renting out” its sovereign immunity. The response from lawmakers, the judiciary, the executive branch, and the public at large was acrimonious. The agreement was branded in public forums as a “sham” and the Patent Trial and Appeal Board held the patents assigned to SRMT were not shielded by tribal immunity. This Comment argues the Allergan-Mohawk agreement is a legally effective means of avoiding IPR. Absent an express waiver of tribal immunity by Congress or the tribe itself, a tribe may not be subject to a private claim. This rule extends to IPR proceedings which closely parallel private suits. Therefore, contracts like the Allergan-Mohawk agreement effectively shield patents from IPR.

Federal Court Joins Tribe in Patent Texas Matter

Here are the relevant materials in Allergan Inc. v. Teva Pharmaceuticals USA Inc. (E.D. Tex.):

503 DCT Order to Produce

510 Production of Documents

517 Unopposed Motion

520 Opposition

522 DCT Order

Haudenosaunee CCTA Defendant May Not Use Indian Law as a Defense to Cigarette Trafficking Charge

Here are the materials in United States v. Tarbell (N.D.N.Y.):

24 Motion in Limine re Indian Cigarettes

29 Response

47 DCT Order on Motions in Limine