September 20, 2017

September 20, 2017

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September 19, 2017

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September 18, 2017

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Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review

As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution (“Sovereign Immunity of State Universities:  Can It Shield Them From AIA Patent Challenges?”).  Now, a pharmaceutical company announced that it has assigned certain Orange Book listed patents to a native American Indian tribe, which licensed the patents back to the pharmaceutical company, in an effort to obtain dismissal of the pending IPRs against those patents.  The Indian tribe will receive a significant up-front fee and annual royalties during the life of the patents. Motions to dismiss in the IPRs have not yet been filed based on the transfer of ownership, but the article reports that the new assignee intends to file such motions in the IPRs.  We will report again after the PTAB rules in these cases.

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About this Author

Stephen B. Maebius, Foley Lardner, Intellectual Property Lawyer,
Partner

Stephen (Steve) B. Maebius is a partner and intellectual property lawyer with Foley & Lardner LLP. He has led teams within Foley handling a variety of different kinds of IP work, including IP due diligence reviews, infringement and validity opinions, international portfolio management, licensing, litigation with parallel inter partes reviews, reexaminations and interferences, and pharmaceutical patent term extensions. Two IP transactions in which Mr. Maebius has participated were awarded "Deal of Distinction" status by the Licensing Executives Society. He is a former...

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