news January 2, 2019

ATU Arguments Prevail Again in One of the “Biggest Patent Cases of 2018”

Law360 recently named the Federal Circuit’s July ruling in St. Regis Mohawk Tribe, et al. v. Mylan Pharmaceuticals Inc., et al., an appeal from the United States Patent Trial and Appeal Board, as one of the five Biggest Patent Cases of 2018.  Amin Talati Upadhye LLP attorneys submitted Comments of Amici Curiae to the PTAB on behalf of client Deva Holding A.S., opposing the Tribe and Allergan, Inc.’s motion to terminate a pending inter partes review of patents covering the dry-eye drug Restasis® on grounds of tribal sovereign immunity.  Allergan, the original owner of the Restasis® patents, had, controversially, paid the Tribe to take ownership of its patents during the pendency of the IPR.

The arguments presented in ATU’s amicus brief, among others, were successful before the PTAB and affirmed by the Federal Circuit, which ultimately agreed that tribal immunity cannot be asserted in IPRs.  The Federal Circuit reasoned, in part, that an IPR is more like to a government agency enforcement action, than a civil suit brought by a private party, where tribal immunity traditionally applies.

ATU attorneys Shashank Upadhye, Joe Cwik, Erin Conway and Adam Sussman represent Deva in this case.