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October 16, 2017


Hey Kevin,

Judge Bryson should be careful about characterizing this assignment by Allergan to the St. Regis Mohawk as a "ploy." It is just as much a "ploy" for PTAB, a non-Article III tribunal to be allowed to run rogue in IPRs to invalidate patent rights with nothing approaching "due process." We can only hope SCOTUS will see through the IPR "ploy" in Oil States.

"In a complicated prosecution history reviewed in the opinion, Allergan first conceded and then withdrew its concession that the RESTASIS® formulation would have been obvious over the '979 patent."

Conceded obviousness? Why? I suppose I can look up the prosecution history and see for myself, but I am having a hard time thinking of a reason that any sane applicant would concede on the record that the proposed claims are obvious over the applicant's own prior art.

Dear Greg:

Completely agree, and the opinion discusses this at some length. Seemed strange but seems it happened.

Thanks for the comment.

Greg: the concession is set forth on page 19 of the opinion

Thanks for the pin-cite, Kevin. Having read that portion, I am even more confused now than I was before. It scarcely matters at this point, but I just wonder what Allergan's people could possibly have been thinking when they wrote that? I cannot imagine what purpose they were trying to serve with that totally unnecessary concession.

And it is unlikely that we will ever know. But I admit it's curious; sometimes people use concessions as a way to get something allowed but this is a head-scratcher.

Would the tactic work if instead of being only about $, the assignment had been accompanied by health benefits for the tribe, e.g., the $ to be used for improving access to drugs for members? That would make the assignment less a pure commercial transaction and connect royalties to health benefits. Many of Judge Bryson's cogent arguments would be less compelling.

I'm impressed at how thorough his analysis is.

Well, B, Judge Bryson is clearly thinking about the issue coming before the Federal Circuit, and while sovereign immunity is one of those concepts that at the root of federalism there is a natural inclination to react strongly and in the negative to the appearance that it is being used improperly.

Not that I am convinced that this is what is happening here. I think your suggestion would perhaps go far in making it harder to disparage the agreement, but in the end it really is a fig leaf - the tribe will do what it thinks is best for its people.

Thanks for the comment.

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