Skip to Content

More on the Mighty Mohawk Maneuver

So now that Allergan has pioneered the technique of avoiding patent challenges by selling said patent rights to an Indian tribe, where do we go from here? There’s no way to take that one back; we’re now an industry where people do such things, lucky us. But is this going to be a feature of the patent landscape from now on?

Good question. Steve Usdin at Biocentury has what is the most comprehensive look at the issue I’ve seen, and there are several issues in play here. What Allergan is dodging, using the Mohawks as a shield, is the inter partes review process. This is not, as the Latin name might indicate, an ancient tradition in intellectual property law. It’s a process that’s only been around since 2012, and it’s a way to challenge the patentability of an issued patent. The scope is tightly defined – it’s only for challenges under Section 102 (novelty) and Section 103 (obviousness), and it specifically addresses published prior art (which are the grounds under which such challenges are often made, anyway). The first thing to ask is whether an Indian tribe has the sovereign immunity to do such a thing, and there opinion seems pretty firm: they do.

As Usdin points out, we actually have the University of Florida to thank for the beginnings of that idea. In Covidien LP v. University of Florida Research Foundation Inc., the university, as part of the state of Florida, successfully argued that its sovereign immunity protected it, under the Eleventh Amendment, from an IPR patent challenge. This move was then used by the University of Maryland, and no one outside the world of patent law batted an eye. The Indian tribe almost certainly has similar sovereign immunity, and if Maryland and Florida can get out of IPR, then so can they.

But that brings up the second question: can a sovereign entity sell such immunity to customers who want a piece of it? That seems a bit murkier, and may well be the subject of a challenge. I have no idea of the odds of success there, but I can only assume that Allergan’s lawyers (and the tribe’s) have thought about this issue already and written things in a manner that don’t make it obviously dismissible as a sham transaction. On the one hand, patent holders can sell their rights to whomever they please, on what terms they can get. But selling it to a sovereign entity because it’s a sovereign entity somehow seems different. “Somehow seems”, though, is no basis for law. Congress could, in theory, just pass a law to the effect that patents are exempt from sovereign immunity considerations, but Congress is having trouble tying its shoes these days (not necessarily a complaint), so that seems unlikely. And any such law would surely head up for an eventual Supreme Court hearing as well, to be honest.

But (in one of the most interesting parts of the Biocentury article) it appears that you can lose or waive such immunity:

. . .in 2002 the Supreme Court ruled in Lapides v. Board of Regents of University System of Georgia that “sovereign immunity can be waived when parties are consciously trying to manipulate litigation outcomes.”

In Lapides the Supreme Court was asked to consider a suit against the Georgia Board of Regents alleging that university officials violated state law when they placed allegations of sexual harassment in an employee’s personnel file. The state successfully petitioned to have the case transferred from state to federal court and then argued that the federal case should be dismissed because the state had sovereign immunity from such cases.

The Supreme Court ruled that when Georgia moved a case from state court to federal court it voluntarily invoked the federal court’s jurisdiction and, in the process, waived its sovereign immunity.

Did the St. Regis Mohawks step into the same trap when they asked the USPTO to dismiss the IPR? That argument will probably be tried out as well, and lawyers will be well paid to thrash that one out, you can be sure.

The widest question is the whole inter partes review process itself. The review is conducted not in a court, but by the Patent Trial and Appeal Board. And that’s where the arguing starts, because the worry is that the PTAB may not consider patent claims in the same way that courts do – how broadly do you interpret their language? The whole idea of having a non-judicial review of patent validity which cannot be in turn challenged in court is also an issue – and as it turns out, these very issues have been working their way through the courts themselves. There is a case coming before the Supreme Court (Oil States Energy Services LLC v. Greene’s Energy Group LLC) that argues that the entire IPR system is unconstitutional. (There are other issues with a case in Texas, which I won’t go into, but Biocentury has more).

It’s fair to say that the biopharma industry in general hates IPR, for the same reason that the generic companies love it: it makes patent challenges easier and more frequent. But you don’t see anyone poking their head up to defend Allergan in this one, either, because everyone also knows just how bad it looks to pull a maneuver like this. There’s a huge range of possible outcomes here, all the way from “IPR disappears from existence” to “everyone sells everything to Indian tribes at every opportunity”. Where we land on that scale is yet to be seen.

Update: Allergan’s whole argument is that IPR is such an affront to decency that they’re justified in doing whatever they can to avoid it. But it turns out that they’re not above using it themselves, when it suits them. . .

 

Note: All opinions, choices of topic, etc. are strictly my own – I don’t in any way speak for my employer

40 comments on “More on the Mighty Mohawk Maneuver”

  1. drsnowboard says:

    Repetition of “This is not, as the Latin name might indicate, an ancient tradition in intellectual property law. It’s a process that’s only been around since 2012, and it’s a way to challenge the patentability of an issued patent. The scope is tightly defined – it’s only for challenges under Section 102 (novelty) and Section 103 (obviousness), and it specifically addresses published prior art (which are the grounds under which such challenges are often made, anyway).”
    You may have meant to do it, but if not please feel free to delete this comment?

    1. Derek Lowe says:

      Nope, that’s an editing mistake that got left in – thanks!

  2. anon says:

    I know it’s been a little while, but thanks to the typeface switch (I think from Benton Sans to Roboto Condensed), we can finally tell our ,’s from our .’s.

    1. Medium is the Message says:

      Seconded! The content of an article is never truly separable from how it’s presented, and I think that the presentation has definitely gone in the right direction 🙂

    2. Derek Lowe says:

      Glad it’s better, too!

    3. tangent says:

      Thanks for the old font’s name, I had fun examining its comma. If anyone else would like to have fun, try “Hello, sailor.” at 14 pixels (and scroll down to the “Regular”), versus at a larger size:
      https://typekit.com/fonts/benton-sans
      and compare another font that has a similar “rectangle with a tail” kind of comma:
      https://typekit.com/fonts/nimbus-sans
      and for comparison one that does not have a distinct tail:
      https://typekit.com/fonts/open-sans

      This kind of comma is super-sensitive to the weight of its tail, go figure.

  3. Uncle Al says:

    novelty…obviousness” That something is facile and obvious now does not contradict it having been impossible and obscure in the past: linear ethylene polymerization, olefin metathesis, palladium couplings; click chemistry-coupled alt-poly-co-nucleosides.

    1. Derek Lowe says:

      Yep – and eventually, patent standards will evolve to fit as well. Just because something is novel and nonobvious now, etc. . .

  4. Paul R. Jones says:

    Derek Lowe: This assumption in this single sentence makes this article a fraud upon the Constitution:
    “The first thing to ask is whether an Indian tribe has the sovereign immunity to do such a thing, and there opinion seems pretty firm: they do.”

    You did not do your journalist homework on the topic of Title 25-INDIANS!
    Derek, your first look is to the United States Constitution itself to provide the Article which makes “Indian sovereignty” post true? While you are looking the Constitution’s source of authority to make your article true, here is my full reply to your aricle:
    This article is an astonishing piece of a deplorable lack of journalist curiosity regarding U.S./State citizens with “Indian ancestry/race” since The Indian Citizenship Act of 1924! That single Indian Citizenship Act of 1924, made null all previous common law-state and federal-including Presidential Executive Orders, Commerce Clause and Treaty Clause alleged Indian Treaties (if any U.S. Senate confirmed Indian treaties actually existed pre-1924 Citizenship) regarding U.S./State citizens with “Indian ancestry/race” so often touted by politicians and Indian advocates as being legitimate law.
    And yet, politicians and MSM continue to perpetuate willful blindness to the Constitutional absurdity that Congress, Presidents/Governors, Initiatives and Referendums can make distinguishable the capacities, metes and boundaries of a select group of U.S./State citizens with “Indian ancestry/race” post citizenship. There is nothing in U.S.C. Title 25-INDIANS that speaks to the Constitution’s mandate that common law must be for “We, The People, By The People and For The People’s” health, welfare, safety and benefits for a specific geographic area of a State or the Union.
    The United States Constitution makes for no provisions for:
    1. Indian sovereign nations. None of the asserted tribes possess any of the attributes of being a ‘sovereign nation:’ a. No U.S. Constitution recognition b. No international recognition c. No fixed borders d. No military e. No currency f. No postal system g. No passports h. et al
    2. Treaties with its own constituency
    3. Indian reservations whereby a select group of U.S./State citizens with “Indian ancestry/race” reside exclusively and to the exclusion of all others, on land-with rare exception-that is owned by the People of the United States according to federal documents readily available on-line that notes rights of renters as ‘occupancy and use’ by these distinguished U.S./State citizens with “Indian ancestry/race” only with the land owned by the People of the United States.
    4. Recognition of ‘Indian citizenship’ asserted by various tribes. There is no international/U.S. Constitution recognition of “Indian citizenship” as there is no ‘nation-state’ from which citizenship is derived.
    A simple question for politicians and MSM to answer…a question so simple, it is hard:
    “Where is the proclamation ratified by the voters of the United States that amends the Constitution to make the health, welfare, safety and benefits of a select group of U.S./State citizens distinguishable because of their “Indian ancestry/race?”

    Once again, the non-Indian U.S./Connecticut citizens of the State of Connecticut are being dumb-down as gullible by politicians-state and federal-that they-politicians-can pass common law that makes the health, welfare, safety and benefits of a select group of U.S./Connecticut citizen with “Indian ancestry/race” distinguishable from all non-Indian U.S./Connecticut citizens because of their “Indian ancestry/race” in their attempt to extort $610-million dollars for events more than 300-years old where the Indians lost the wars and the land with it!

    This article is an astonishing piece of a deplorable lack by journalist at every news media within the State of Connecticut curiosity on the magnitude of ‘U.S. Constitution fence-post stupidity’ regarding U.S./State citizens with “Indian ancestry/race” since The Indian Citizenship Act of 1924!

    That single Indian Citizenship Act of 1924, made null all previous common law-state and federal-including Presidential Executive Orders, Commerce Clause and Treaty Clause alleged Indian Treaties (if any U.S. Senate confirmed Indian treaties actually existed pre-1924 Citizenship) regarding U.S./State citizens with “Indian ancestry/race” so often touted by politicians and Indian advocates as being legitimate law.

    And yet, politicians and MSM continue to perpetuate willful blindness to the Constitutional absurdity that Congress, Presidents/Governors, Initiatives and Referendums can make distinguishable the capacities, metes and boundaries of a select group of U.S./State citizens with “Indian ancestry/race” post citizenship.

    The United States Constitution makes for no provisions for:

    1. Indian sovereign nations. None of the asserted tribes possess any of the attributes of being a ‘sovereign nation:’ a. No U.S. Constitution recognition b. No international recognition c. No fixed borders d. No military e. No currency f. No postal system g. No passports h. et al

    2. Treaties with its own constituency

    3. Indian reservations whereby a select group of U.S./State citizens with “Indian
    ancestry/race” reside exclusively and to the exclusion of all others, on land-with rare exception-that is owned by the People of the United States according to federal documents readily available on-line that notes rights of renters as ‘occupancy and use’ by these distinguished U.S./State citizens with “Indian
    ancestry/race” only with the land owned by the People of the United States.

    4. Recognition of ‘Indian citizenship’ asserted by various tribes. There is no international/U.S. Constitution recognition of “Indian citizenship” as there is no ‘nation-state’ from which citizenship is derived.

    A simple question for politicians and MSM to answer…a question so simple, it is hard:

    “Where is the proclamation ratified by the voters of the United States that amends the Constitution to make the health, welfare, safety and benefits of a select group of U.S./State citizens distinguishable because of their “Indian ancestry/race?”

    1. MTK says:

      Article 1, section 8 where Congress is given the power to tax and “To regulate Commerce with foreign Nations, and among the several States, and with the Indian Tribes”.

      The Founding Honchos considered Indian Tribes separate from the federal government and that they were separate entities on similar footing as foreign nations and individual states.

      That interpretation was confirmed in Worcester v. Georgia in 1832 when the Supreme Court ruled that since the Cherokee Nation was a separate political entity that they could not be regulated by the state of Georgia and only the federal government had that power. In short, the Cherokee Nation was exactly that, a nation in terms of it’s relation to the federal and state governments. As Chief Justice Marshall wrote in his 1832 opinion, “The Indian nations had always been considered as distinct, independent political communities retaining their original natural rights as undisputed possessors of the soil, from time immemorial”

      So to answer your question at the end: June 21, 1788, when New Hampshire became the 9th state to ratify the Constitution thereby making Article 1, Section 8 the law of the land and giving the Supreme Court power to interpret that law.

      1. Paul R. Jones says:

        MTK. You missed the part about the Indian Citizenship Act of 1924 making Constitutional references to “Indians” moot. They are U.S./State citizens and there in nothing you have provided from the Constitution whereby common law-state and federal-can regulate from womb to tomb the capacities, metes and boundaries of a U.S./State citizen to make them ‘distinguishable’ because of their “Indian ancestry/race!”
        These SCOTUS decisions succinctly defining one’s U.S./State citizenship under the Constitution debunks your post:
        1. United States Supreme Court
        ADARAND CONSTRUCTORS, INC. v. PENA, (1995) No. 93-1841 Argued: January 17, 1995 Decided: June 12, 1995:

        JUSTICE SCALIA, concurring in part and concurring in the judgment.
        I join the opinion of the Court, except Part III-C, and except insofar as it may be inconsistent with the following: In my view, government can never have a “compelling interest” in discriminating on the basis of race in order to “make up” for past racial discrimination in the opposite direction. See Richmond v. J. A. Croson Co., 488 U.S. 469, 520 (1989) (SCALIA, J., concurring in judgment). Individuals who have been wronged by unlawful racial discrimination should be made whole; but under our Constitution there can be no such thing as either a creditor or a debtor race. That concept is alien to the Constitution’s focus upon the individual, see Amdt. 14, 1 (“[N]or shall any State . . . deny to any person” the equal protection of the laws) (emphasis added), and its rejection of dispositions based on race, see Amdt. 15, 1 (prohibiting abridgment of the right to vote “on account of race”) or based on blood, see Art. III, 3 (“[N]o Attainder of Treason shall work Corruption of Blood”); Art. I, 9 (“No Title of Nobility shall be granted by the United States”). To pursue the concept of racial entitlement – even for the most admirable and benign of purposes – is to reinforce and preserve for future [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 2] mischief the way of thinking that produced race slavery, race privilege and race hatred. In the eyes of government, we are just one race here. It is American.
        It is unlikely, if not impossible, that the challenged program would survive under this understanding of strict scrutiny, but I am content to leave that to be decided on remand. [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 1]
        JUSTICE THOMAS, concurring in part and concurring in the judgment.
        I agree with the majority’s conclusion that strict scrutiny applies to all government classifications based on race. I write separately, however, to express my disagreement with the premise underlying JUSTICE STEVENS’ and JUSTICE GINSBURG’S dissents: that there is a racial paternalism exception to the principle of equal protection. I believe that there is a “moral [and] constitutional equivalence,” post, at 3, (STEVENS, J., dissenting), between laws designed to subjugate a race and those that distribute benefits on the basis of race in order to foster some current notion of equality. Government cannot make us equal; it can only recognize, respect, and protect us as equal before the law.
        That these programs may have been motivated, in part, by good intentions cannot provide refuge from the principle that under our Constitution, the government may not make distinctions on the basis of race. As far as the Constitution is concerned, it is irrelevant whether a government’s racial classifications are drawn by those who wish to oppress a race or by those who have a sincere desire to help those thought to be disadvantaged. There can be no doubt that the paternalism that [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 2] appears to lie at the heart of this program is at war with the principle of inherent equality that underlies and infuses our Constitution. See Declaration of Independence (“We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty, and the pursuit of Happiness”).
        These programs not only raise grave constitutional questions, they also undermine the moral basis of the equal protection principle. Purchased at the price of immeasurable human suffering, the equal protection principle reflects our Nation’s understanding that such classifications ultimately have a destructive impact on the individual and our society. Unquestionably, “[i]nvidious [racial] discrimination is an engine of oppression,” post, at 3. It is also true that “[r]emedial” racial preferences may reflect “a desire to foster equality in society,” ibid. But there can be no doubt that racial paternalism and its unintended consequences can be as poisonous and pernicious as any other form of discrimination. So-called “benign” discrimination teaches many that because of chronic and apparently immutable handicaps, minorities cannot compete with them without their patronizing indulgence. Inevitably, such programs engender attitudes of superiority or, alternatively, provoke resentment among those who believe that they have been wronged by the government’s use of race. These programs stamp minorities with a badge of inferiority and may cause them to develop dependencies or to adopt an attitude that they are “entitled” to preferences. Indeed, JUSTICE STEVENS once recognized the real harms stemming from seemingly “benign” discrimination. See Fullilove v. Klutznick, 448 U.S. 448, 545 (1980) (STEVENS, J., dissenting) (noting that “remedial” race legislation “is perceived by many as resting on an assumption that those who are granted this special [ ADARAND CONSTRUCTORS, INC. v. PENA, ___ U.S. ___ (1995) , 3] preference are less qualified in some respect that is identified purely by their race”).
        In my mind, government-sponsored racial discrimination based on benign prejudice is just as noxious as discrimination inspired by malicious prejudice. * In each instance, it is racial discrimination, plain and simple.

        2. United States Supreme Court AFROYIM v. RUSK, (1967) No. 456 Argued: February 20, 1967 Decided: May 29, 1967
        “(a) Congress has no express power under the Constitution to strip a person of citizenship, and no such power can be sustained as an implied attribute of sovereignty, as was recognized by Congress before the passage of the Fourteenth Amendment; and a mature and well-considered dictum in Osborn v. Bank of the United States, 9 Wheat. 738, 827, is to the same effect. Pp. 257-261.
        (b) The Fourteenth Amendment’s provision that “All persons born or naturalized in the United States . . . are citizens of the United States . . .” completely controls the status of citizenship and prevents the cancellation of petitioner’s citizenship. Pp. 262-268”

        3. United States Supreme Court OSBORN v. BANK OF U.S., (1824) No. 80
        Argued: Decided: March 19, 1824
        “A naturalized citizen is indeed made a citizen under an act of Congress, but the act does not proceed to give, to regulate, or to prescribe his capacities. He becomes a member of the society, possessing all the rights of a native citizen, and standing, in the view of the constitution, on the footing of a native. The constitution does not authorize Congress to enlarge or abridge those rights. The simple power of the national Legislature, is to prescribe a uniform rule of naturalization, and the exercise of this power exhausts it, so far as respects the individual. The constitution then takes him up, and, among other rights, extends to him the capacity of suing in the Courts of the United States, precisely under the same circumstances under which a native might sue. He is [22 U.S. 738, 828] distinguishable in nothing from a native citizen, except so far as the constitution makes the distinction. The law makes none.”

        4. “An unconstitutional act is not a law; it confers no rights; it imposes no duties; it affords no protection; it creates no office; it is in legal contemplation, as inoperative as though it had never been passed.” [Norton v. Shelby County, 118 US 425 (1885)]”

        “The general rule is that an unconstitutional statute, though having the form and the name of law, is in reality no law, but is wholly void and ineffective for any purpose since unconstitutionality dates from the time of its enactment and not merely from the date of the decision so branding it; an unconstitutional law, in legal contemplation, is as inoperative as if it had never been passed … An unconstitutional law is void. (16 Am. Jur. 2d, Sec. 178)”

        1. Andrew Dalke says:

          The US recognizes internal forms of sovereignty. As our host pointed out, “In Covidien LP v. University of Florida Research Foundation Inc., the university, as part of the state of Florida, successfully argued that its sovereign immunity protected it, under the Eleventh Amendment, from an IPR patent challenge.”

          This is because sovereignty can apply to an organization, independent of the citizenship of the people. If the US decided to make all Bahamians US citizens, that does not mean that The Bahamas loses its sovereignty. Instead, Bahamians would have dual citizenship. The Sovereign Military Order of Malta is a sovereign subject. Its two citizens are also, I believe, German and Italian. That does not detract from its sovereignty.

          Your referenced “an excerpted academic essay on ‘treaties’”. It’s a self-published book from the 1970s, and I found a similar book by the same author from the 1960s. It is an amateur work, and lacks the sorts of cross-comparisons to other viewpoints that I would expect from a serious academic essay. It also contains Needless Capitalization that I’ve grown to Expect from Cranks. Its treatment of equality completely ignores women and the women’s suffrage movement. It mentions state’s rights, but gives no historical context connecting that term with the Lost Cause movement. Its discussion on God doesn’t distinguish between Christianity and Deism. I have found no reviews of the book, and very few people who have cited it.

          You reference Adarand Constructors, Inc. v. Peña, which established that federal racial classifications must be analyzed under a standard of strict scrutiny. As the US does have compelling governmental interests in preserving its treaty obligations, this decision is irrelevant to the question of tribal sovereignty. Furthermore, you quoted from a concurring opinion, and not the majority opinion.

          Finally, Adarand v. Peña was in 1995. The Supreme Court in United States v. Lara (2004) affirmed that tribes have sovereign authority independent of the federal government. See also US v. Wheeler (1978) which, among other things, states out that “tribal and federal prosecutions are brought by separate sovereigns”.

        2. Me says:

          “You missed the part about the Indian Citizenship Act of 1924 making Constitutional references to “Indians” moot. ”

          The ICA is not a constitutional amendment and cannot alter constitutional law.
          Also, dual-citizenship is a thing. Just because indians are extended all the rights and privileges of US citizenship does not mean the tribes are not still independent nations.

    2. John Wayne says:

      You have to be pulling our collective leg – there have been a lot of laws added since the constitution was drafted. Relying on the oldest US legal document possible is a bit embarrassing for your position.

      1. Paul R. Jones says:

        John Wayne: The Constitution has been amended 27-times since the original date including the first 10-Amendments. Once U.S./State citizenship is achieved, the Constitution is now controlling over that citizenship. There is nothing in the Constitution that makes a select group of U.S./State citizens with “Indian ancestry/race” post their 1924 Citizenship distinguishable from all other non-Indian U.S./State citizens because of their “Indian ancestry/race” notwithstanding how old the Constitution is.

  5. Sympa says:

    Strange (and not such a good idea) to have this asymmetrical. Which throws up the question: can’t the IPR not apply when the patent is used to attack outside the Mohawk jurisdiction?

  6. MoMo says:

    Perhaps a law should be passed that such drugs owned by sovereign Indian Nations can only be used by such Nations.

    1. Paul R. Jones says:

      Sorry to inform you, but the United States Constitution makes for no provisions for ‘sovereign Indian nations!!” The notion that politicians-state and federal-can pass common law that regulates from womb to tomb a select group of U.S./State citizens to make their health, welfare, safety and benefits ‘distinguishable’ from all other non-Indian U.S./State citizen because of their “Indian ancestry/race” is a fraud being foisted off to dumb down gullible non-Indian U.S./State citizens that such common law passes Constitutional muster absent an Amendment to do so.

  7. Wallace Grommet says:

    Treaty trumps all national law…it is an agreement between nations that can only be altered by a succeeding mutual treaty

    1. Paul R. Jones says:

      Where in the Constitution is the authority for a treaties with constituency? There are no ‘sovereign Indian nations” in the United States. Period. If you believe there are ‘sovereign Indian nations,” provide that Article from the Constitution post The Indian Citizenship Act of 1924…an Act that made moot all Constitutional references to “Indians” as there are no more “Indians” within the original meaning of the Constitution…only U.S./State citizens entitle to no more and no less than every other non-Indian U.S./State citizen. Suggest you brush up on our Constitution by reading this excerpted academic essay on ‘treaties’ and re-evaluate your post:
      http://lexrex.com/enlightened/AmericanIdeal/aspects/limited_gov_treaty.htm
      “The object of treaties is the regulation of intercourse with foreign nations, and is external.
      An especially interesting piece of evidence supporting the conclusion that the Treaty Clause was intended and understood by the Framing and Ratifying Conventions not to authorize the President and Senate, by a treaty, either (a) to override the Constitution, in whole or in part, or (b) to make domestic law (as distinguished from governance of relations with foreign governments),
      [Section 52.] “Treaties are legislative acts. A treaty is a law of the land. It differs from other laws only as it must have the consent of a foreign nation, being but a contract with respect to that nation . . . 2. By the general power to make treaties, the Constitution must have intended to comprehend only those objects which are usually regulated by treaty, and cannot be otherwise regulated. 3. It must have meant to except out of these the rights reserved to the States; for surely the President and Senate cannot do by treaty what the whole Government is interdicted from doing in any way.”

      Another fallacious statement is that a treaty “can override the Constitution;” which defies historical truth, as we have seen. A related and most preposterous allegation is that a treaty “can cut across the rights given the people by the constitutional Bill of Rights”–than which nothing could be further from the truth, partly for two reasons: the Constitution does not authorize any such treaty and, secondly, the people are, of course, given their rights by God and not by themselves through their own creation: the Constitution (including its Bill of Rights, or Bill of Prohibitions, Amendments). The quoted statement is farcical.

    2. The Lunatic says:

      Actually, direct, on-point, US court precedent establishes that treaties are no more and no less entrenched than ordinary Federal laws, and accordingly can be unilaterally superseded by passing a statute, just like any other federal law.

  8. Pennpenn says:

    Well regardless of the text walls that Mr Jones likes to paste in at a moments notice Allergan and St. Regis Mowhawks must think they’re on to something and are doubtless willing to sink millions in the defence of it so there might be more to it than can easily be shot down by quoting the Indian Citizenship Act (of 1924).

    Oh well, I suppose at least the object of this legal farce isn’t some mechanism for controlling oxidative stress in Alzheimers sufferers otherwise the servers would have exploded by now.

  9. Derek Freyberg says:

    @Sympa:
    The patents involved are not completely free from attack because they are owned by an arguably sovereign (I’m not going to get into that fight – I don’t know that kind of law) Indian tribe: if the tribe were to sue a patent infringer, the infringer could defend on the ground that the patents were invalid. The aim of Allergan here was to immunize the patents from attack in an inter partes review (IPR) before the Patent Trial and Appeal Board.
    An IPR differs from an invalidity attack in infringement litigation in two very significant ways. First, in infringement litigation, there is a statutory presumption that the patent is valid, and that presumption is overcome only by clear and convincing proof to the contrary, whereas in an IPR there is no presumption of validity, so the lower more likely than not standard of proof applies. Second, in infringement litigation, the claim terms are given “the meaning that [a] term would have to a person of ordinary skill in the art in question at the time of the invention” (plain meaning), whereas in IPR they are given the “broadest reasonable interpretation” (BRI), just as in patent prosecution.
    So, while in infringement litigation there are other ways to invalidate claims, such as for indefiniteness, the lack of a presumption of validity and the use of BRI – which is necessarily at least as broad as plain meaning – makes it a lot easier for a challenger to attack patent validity on prior art grounds in an IPR than to defend infringement litigation by asserting invalidity.
    And that’s what makes this exercise worthwhile from Allergan’s point of view.
    As the original post points out, there is a pending constitutional challenge to IPR in the Oil States case; and if the Supreme Court holds the IPR provisions invalid, this all becomes moot.
    And maybe Congress will act.

  10. GradSchoolTip says:

    Most grad schools legally operate as regular employers. They are not legally required to provide letters of rec for you, and many times employers are advised not to by their attorneys in case something goes wrong and they are sued by a future employers. Therefore, make absolutely sure you have a legally binding requirement that your PI has signed that assures references will be provided in the future. Because of the prevailing environment that is hostile to grad students, you could be left out in the cold simply because an attorney you dont know says you should be.

    1. tangent says:

      Demand that your PI sign an agreement to provide you with a future letter of reference? I don’t know why somebody is spamming with “grad student self-defense” tips, but this tip is entertainingly terrible on multiple levels.

      1) If you have this problem, you most assuredly have other problems.
      2) What is your leverage when your PI lacks interest in signing such a thing?
      3) My dear, do you suppose this is a way to get a favorable letter of reference?
      4) Or a good way to get your work done and graduate?

      If I were the PI I’d sit down right then and write one for the file folder. “StudentName has worked in this lab from 2003 through _____. He is insistent that I enter into a contract to write him a letter of reference. I am pleased to write this note even without any such contractual obligation. Sincerely, ProfessorName.”

      1. Bryan Lanning says:

        I generated a Nature paper for my institution and brought in 20k+ worth of grants. My PI will not now write a reference and I am unemployed because of lawyers. You dont know what you are talking about so shut up until you do.

        1. johnnyboy says:

          Oh, I thought (from your comments on a prior post) that it was “stupid evil Pfizer” who stole your PhD ? Now it’s lawyers and your PI. One piece of advice (that you’ll undoubtedly ignore): when every single person around you appears to be a total a$$holes, you need to ask yourself if the problem is not actually you.

        2. me says:

          I am sure posting inflammatory internet comments under your real name will be very helpful.

          If this is fair sampling of your judgement I would hazard a guess that there are good reasons why someone would not want to write a letter for you.

          1. Hap says:

            Without further data it’s not possible to know if the person with that name is actually writing comments under that name.

        3. tangent says:

          I’m going to restate “If you have this problem, you most assuredly have other problems.” Best wishes with the root cause.

        4. tangent says:

          Look, I don’t know you, for all I know your PI is an evil dick and you’re a great colleague. Let’s say that’s exactly how it is. So you go to Dr. Evil Dick and ask him to sign this agreement to provide a reference.

          These still apply just as much as ever: First, he won’t sign it, because how can you make him. Second, if he ever does write a latter, the last person you want a future employer to call up is an evil dick who wants to hurt you.

    2. Isidore says:

      Any HR person with minimal experience will be able to discern whether a seemingly inoffensive reference letter (written to satisfy contractual obligations) indicates that the letter writer does not think particularly highly of the person being recommended (a concluding phrase like “please feel free to call me if you require additional information” is a good indication also) and will either pass on the candidate or pick up the phone and call to discuss. Verba Volant.

  11. TRSI alumni says:

    If your PI is using foul language or angry words to induce you to work OT and/or if gossip is common in your lab, please know that that is harrassment–a criminal offense in most states. Keep diligently records documenting this, and they should be used to neutralize that behavior if needed. Since you are a PhD student, you are very smart and capable, and dont let your PI tell you otherwise. He/she likely does not have your interests in mind.

  12. MoMo says:

    Paul
    So the tribes protect Allergan from IPR. Smooth move by the Chiefs. But hypothesize what happens in real Pharma life. Say Allergan makes a drug that makes mens scrotums enlarge to the size of small melons, and we know these things happen all the time in Pharma-undeclared side effects that keep legions of product liability lawyers employed. By the tribe linking would they not be held liable and sued like any other defendant? Did these treaties protect them from co-liabilities? So the Chiefs put their tribes at financial gain, albeit short term while exposing them to product liabilities.. Most reservations Ive been to are impovershed and cant afford such attacks, unless they are indemnified ad nauseum. And do you think a big Pharma is going to defend these tribes if it happens? Thats sad and a bad scenario waiting to occur.
    You seem to know more than the average on such matters.
    Fill us in, as if they are spared the Chiefs could have a new line of business.

  13. BCGrad says:

    This just in
    “Democrats Maggie Hassan, Sherrod Brown, Bob Casey and Richard Blumenthal in the letter to Judiciary Committee Chairman Chuck Grassley and Ranking Member Dianne Feinstein on Wednesday called Allergan’s deal “a blatantly anti-competitive attempt to shield its patents from review and keep drug prices high.”

    Momo was right. Both parties will be investigated and spend $$$ on defense. One can afford it, and the tribe can not.

  14. Jon says:

    I went around this the last time, and I think my point has not been made.

    If the patent is not arguable in the sovereign nation in which it was issued (as in, it has become another nation’s patent) then it is not enforceable in the issuing nation either, because it’s not their nation’s patent anymore.

    Yes, a foreign nation can own all sorts of US patents. But if a foreign nation starts issuing their own patents, they’re not US patents anymore. If a patent is sovereign from the USA, it’s not a US patent anymore, and thus unenforceable in the USA.

    Jon

  15. Barry says:

    “Members of Congress want answers about a multinational drug company’s deal to save its patents by handing them off to a Native American tribe.”
    “The unconventional maneuver has received considerable criticism from the generic competitors challenging the drug’s patents under the process Congress created to enable timelier review of such challenges,” write the four congressmen who signed the letter. “The sovereign status of Native American tribes adds time and complexity to contesting the status of the patents in question, because tribes may be immune from the legal claims generic drug makers use to challenge patents and bring less costly drugs to market more quickly.”
    “The committee is concerned about competition in the drug industry and goes on to request several types of documents related to the Restasis deal:

    1. All agreements and communications between officials at Allergan and the
    Saint Regis Mohawk tribe referring or relating to the Restasis patents,
    including but not limited to legal expenses.
    2. All analyses conducted in preparation for or relating to any agreements
    regarding the Restasis patents, including but not limited to all analyses
    relating to past or future trends or projections for market share.

    3. All documents and communications referring or relating to the amount of
    money received by your company from sales of Restasis through federal
    health care programs, including state programs that receive federal funding.

    4. All documents presented to the Board of Directors concerning any agreements
    regarding the Restasis patents.

    5. All documents and communications referring or relating to considerations for
    a similar arrangement and transaction for other products.
    The letter is signed by committee chairman Rep. Trey Gowdy (R-S.C.) and ranking member Rep. Elijah Cummings (D-Md.), as well as Rep. Dennis Ross (R-Fla.) and Rep. Peter Welch (D-Vt.)

    Allergan has been asked to provide the documents by October 17.”

    https://arstechnica.com/tech-policy/2017/10/congress-will-investigate-drug-company-that-gave-its-patents-to-mohawk-tribe/

  16. Barry says:

    Allergan’s maneuver has raised eyebrows in Congress. Claire McCaskill has already introduced a bill to block such games

    https://abovethelaw.com/2017/10/why-assigning-patents-to-native-american-tribes-to-avoid-inter-partes-review-is-bad-medicine/

  17. Barry says:

    “[JURIST] The US House of Representatives Courts, Intellectual Property, and the Internet Subcommittee [official website] announced [press release] Thursday they will be holding a hearing on November 7 that will examine “the issue of intellectual property rights owned by entities that claim sovereign immunity on the basis of the 11th Amendment or Native American tribal immunity.” The hearing will be titled “Sovereign Immunity and the Intellectual Property System.”

    The hearing has become necessary after a drug company named Allergan [corporate website] entered into a contract with the St. Regis Mohawk Tribe [official website] in which Allergan transferred a number of patents to the tribe in exchange for an exclusive license for the patents. The tribe then claimed that due to its sovereign immunity, the US Patent & Trademark Office [official website] has no jurisdiction to hold inter partes review (IPR) hearings against the patents. The IPR hearings are used to invalidate patents. Allergan is also filing lawsuits against competitors for violating the same patents that cannot be invalidated by the IPR hearings. SRC Labs LLC has also transferred patents to the same tribe and are suing Amazon and Microsoft for violating those patents.”

    http://www.jurist.org/paperchase/2017/11/house-committee-to-hold-hearing-on-patent-rights-for-native-american-tribes.php

  18. Scott says:

    I’m honestly hoping that this gets thrown under the bus with extreme prejudice.

    After all, even if the Tribe does enjoy Sovereign Immunity in general, I’d argue that by getting a US Patent the Tribe has waived their immunity as regards that patent. Same as happened with the case where a State entity applied for Federal court review (and then tried to get the case tossed due to Sovereign Immunity).

    Also, isn’t the Tribe the group that has to fund the patent defense at the IPR, and not Allegran’s deep pockets? That seems a false economy to me. I’d want the deepest possible pockets funding the Patent Defense!

Leave a Reply

Your email address will not be published. Required fields are marked *

Time limit is exhausted. Please reload CAPTCHA.