In the United States, the federal government as well as state and tribal governments generally enjoy sovereign immunity, from lawsuits. This can be found in 11th amendment of the U.S. Constitution and was carried over from the British common law doctrine that the King could do no wrong. In a nutshell these governments cannot be sued for monetary damages for violating other people’s patents or have their patent’s challenged in administrative proceedings.
Capitalizing on this, drug maker Allergen is now trying to avoid losing their patents by reaching a deal with the Saint Regis Mohawk Tribe. Allergen filed suit against a group of generic brand companies for patent infringement of their dry-eye drug Resatis in the US District Court for the Eastern District of Texas. The generic brand companies argued that the formulation was obvious based on earlier filed patents. Obviousness means that someone of ordinary skill in the art would look at the invention and consider it to be already known if one were to combine previous references or that if you use the teaching of previous references you would come up with the invention. The generic brand companies challenged the patent in the district court and in an inter partes review with the United States Patent and Trademark Office. Inter partes reviews provide a quicker method to challenging a patent but some believe that it ruins longstanding tradition of due process in the court system and can lead to “double jeopardy” providing multiple attacks to challenge a patent.
To protect the challenge to the patents from the inter partes review, Allergen reached a deal with the Mohawk Tribe where Allergen pays the tribe $13.75 million dollars and in exchange the Mohawk Tribe will claim sovereign immunity as grounds to dismiss a patent challenge by the United States Patent and Trademark office. The Mohawk Tribe also agreed to lease the patents to Allergen and will receive $15 million dollars in annual royalties for the patent’s term. The backlash was grand with Senator Claire McCaskill, a democrat from Missouri, introducing a bill that would prevent a tribe from asserting sovereign immunity as a defense in inter partes review stating “This is one of the most brazen and absurd loopholes I’ve ever seen, and it should be illegal.” The Mohawk Tribe argued that this deal does not affect the District court Ruling and the deal can help with the many unmet needs of the tribe and lead for a way for them to be more self reliant.
A month later US Circuit Judge William Bryson of the US District Court for the Eastern District of Texas ruled that Alergen’s patents were indeed invalid and commenting on the deal between Allergen and the Mohawk Tribe wrote: "Sovereign immunity should not be treated as a monetizable commodity that can be purchased by private entities as part of a scheme to evade their legal responsibilities." Allergen is appealing the decision. The ruling does not prohibit deals of this nature but companies will most likely have reservations using this method in the future.
Allergen and the Mohawk Tribe may find even more setbacks based on recent case law. The University of Minnesota, a patent owner, filed a lawsuit for patent infringement in Federal District court. The defendants requested an inter partes review of the asserted patent which must be done within one year of the service of the complaint or it is forever barred. The University of Minnesota argued that it can avoid inter partes review under sovereign immunity. The Patent Trials and Appeals board disagreed stating that University of Minnesota “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.” This means that University of Minnesota is entitled to sovereign immunity but waived this immunity by first filing for a lawsuit in Federal District court.
The Appeals board explained that much like counterclaims in a dispute it is reasonable that if a State files for patent infringement they have consented to inter partes review of the asserted patent. This will most likely apply to Native American Tribes, which will also affect Allergen and the Saint Regis Mohawk Tribe’s strategy.
Christopher Mayle is a patent attorney who loves creativity and helping inventors bring their ideas to life. Christopher received a degree in mechanical engineering and a minor in biomechanical engineering from the University of Florida as well as a Juris Doctorate from the University of Illinois.
During his time in law school, Christopher was a member in the Intellectual Property Society and Black Law Students Association. He also participated in Intellectual Property moot court. He worked at the University of Illinois General counsel, where he worked on various matters revolving trademark, copyright, and contracts. He also worked at a law firm drafting legal memoranda for trademark matters.
Christopher is a member of the Florida Bar and Hillsborough County Bar Association. He enjoys running in various 5ks and half marathons, playing tennis and racquetball and creating short stories.
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Torts 1-Year Experience
Intellectual Property Moot Court
Trademark and Copyright Cases at the University of Illinois
Trademark Infringement Cases
Juris Doctor (J.D.) from University of Illinois School of Law
Bachelor of Science in Mechanical Engineering, Minor in Biomechanical earned from University of Florida