Amicus Curiae Briefs Authorized on Tribal Sovereign Immunity in Iprs of Restasis Patents

The Saint Regis Mohawk Tribe’s recent motion to terminate pending IPRs on patents purported to cover Allergan’s Restasis® product has spurred two parties to seek authorization from the PTAB to file amicus briefs.  Earlier this year, Allergan transferred ownership of its patents to the Tribe in an effort to take advantage of the Tribe’s sovereign immunity status and to terminate IPRs challenging the patents. The PTAB has now issued an order permitting amicus curiae to file briefing in these IPRs.  See IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131 and IPR2016-01132, Paper 96 (P.T.A.B. Nov. 3, 2017).

On October 25, 2017, the High Tech Inventor’s Alliance (HTIA) requested permission to file an amicus brief. HTIA is a non-profit corporation which includes technology companies such as Adobe, Amazon, Cisco, Dell, Google, and others.  In light of this request, Petitioners told the PTAB that they do not object to HTIA’s briefing request, but the Tribe opposed the request.  On November 3, 2017, the PTAB authorized HTIA to file a 15 page amicus brief by December 1, 2017. 

In granting the amicus briefing, the PTAB stated, “[g]iven that the Tribe’s motion presents an issue of first impression for the Board and that the parties’ briefing on the motion is complete, we are persuaded that briefing from interested amici curiae is now warranted in these proceedings.”  IPR2016-01127, Paper 96, at 3.  The PTAB had previously denied a request from the Association for Accessible Medicines (AAM) to file an amicus brief.  Id., Paper 85 at 5.  However, the PTAB’s November 3 order authorized the AAM and any other amicus curiae to file a brief, so long as it is no longer than 15 pages, and is filed no later than December 1, 2017.  Id., Paper 96 at 3.

The Board further authorized the parties to the proceedings to file 15 page responses to the amicus briefs.  The parties’ responses are due December 15, 2017.  The Board’s order further clarified that, since there were joined petitioners in the proceedings, the date by which the final written decision is to be issued is extended to April 6, 2018.

It is not clear whether HTIA will support or oppose the Tribe’s motion to terminate.  It will be interesting going forward to see who files amicus briefs and what positions they will take.

Written By: Peter Law and Kerry S. Taylor Ph.D.