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Journal of Intellectual Property Law

Sean P. Belding

Abstract

On September 8, 2017, Allergan announced the assignment of six of its patents to the St. Regis Mohawk Tribe. These six patents protected Allergan 's exclusivity over the blockbuster drug RESTASIS and were at risk of invalidity due to an inter partes review proceeding. In return for substantial monetary consideration, the Mohawk Tribe granted Allergan an exclusive license back and agreed to invoke its tribal sovereign immunity in an attempt to obtain a dismissal of the inter partes review proceedings against the RESTASIS patents. Allergan's strategy is an attempt to monetize sovereign immunity that raises significant concerns in patent law and reveals an institutional issue stemming from the Supreme Court's state sovereign immunity doctrine.

This article tracks and analyzes the rise of state sovereign immunity, its eventual dominance over patent law, and its inevitable undermining of inter partes review proceedings. Leveraging these state sovereign immunity principles in an attempt to avoid inter partes review proceedings, Allergan's strategy has revealed an institutional issue that has plagued the passage and development of flexible patent laws necessary to address an increasingly complex world. This article argues that Allergan 's attempt to monetize sovereign immunity is a direct result of the Supreme Court's doctrinal misstep in Seminole Tribe v. Florida. Taken to its extreme, it appears states have reached a level of Czarism that transcends Congress' hope of passing and implementing uniform, fair, and flexible patent legislation to promote and foster innovation, private rights, and liberty. The article concludes that without substantial alteration in the Supreme Court's state sovereign immunity doctrine, entities like Allergan will continue using the doctrine as a weapon in an attempt to circumvent patent law.

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