by Dennis Crouch
It appears that Allergan’s attorneys have been working overtime. In a bold move, Allergan has transferred title to all of its Restasis patents to the Saint Regis Mohawk Tribe. I don’t know if I’m laughing or crying, but there’s not a dry eye in the house.
The move is designed to prop the patents up against challenge via a tribal sovereign immunity claim. (Several of the transferred patents are being challenged before the PTAB in AIA Trials). Parallel claims have been quite successful for public universities in fending of both IPR and declaratory judgment lawsuits – even when the patents are exclusively licensed to commercial entities. In fact, this is one reason why public universities almost never sell their patent assets, but instead merely license them. Of course, a major difference with the university situation is that the university patents are the outcome of original university research. In Allergan’s case one question will be whether the ownership structure creates a sham that can be pierced as if a fraudulent corporate veil. I’m confident, however, that Allergan’s lawyers worked through the analysis. One element of the potential sham – the Tribe reports that it is being paid $13.75 million to buy the patents and will receive up to $15 million in annual royalties.
Allergan is a frequent player of jurisdictional games. Its corporate “headquarters” is in Dublin for the tax benefits, although it is “actually” sited in New Jersey.
Patents involved: United States Patent Nos. 8,629,111; 8,633,162; 8,642,556; 8,648,048; 8,685,930 and 9,248,191.