FREQUENTLY ASKED QUESTIONS ABOUT NEW RESEARCH AND TECHNOLOGY
`(PATENT) BUSINESS
`Q-The Tribe has entered into a “Patent” business. Can you
`explain what type of business this is?
`A-It involves (at least from the start) patents. Patents are
`licenses issued by the US government giving the right or
`ownership for a set period of time, the sole right, to prevent
`others from making, using, or selling an invention.
`Q—What does the Tribe do in this business?
`A—There is a huge advantage for patents to be owned (through
`assignments) by entities that have sovereign immunity (like
`states, state-owned universities and of course tribes). The
`Tribe is acquiring patents from companies (primarily in the
`technology and pharmaceutical industry). The Tribe will own
`patents and obtain revenue through assignment agreements with
`companies.
`The Tribe will be entering into Assignment and Licensing
`Agreements wherein the companies will assign their patents (for
`technical, medical and other inventions) to pay the tribe for
`holding the patents and protecting them from patent trolls or
`infringers.
`The Tribe is not seeking to completely avoid review of the
`validity of the patents. The issue is the Inter Partes Review
`(IPR) panel that has been set up by Congress for review. This
`IPR panel is very unfair to companies with valid patents and
`allows patent trolls and other infringers to void valid patents.
`The Tribe will file to have its patents review, instead, in
`federal court where a patent company will be able to use the
`patent validity rules that have existed for many years to obtain
`a fair hearing on its patent rights.
`Q—Isn’t this risky? Can’t the Tribe end up losing these patent
`cases and have to pay the infringers?
`A—First, the Tribe is not investing any money in this business.
`Its only role is to hold the patents, get assignments, and make
`sure that the patent status with the US Patent Office is kept up
`to date. The Tribe will have an office that is in charge of
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`1
`MYLAN - EXHIBIT 1145
`Mylan Pharmaceuticals Inc. et al. v. Allergan, Inc.
`IPR2016-01127, -01128, -01129, -01130, -01131, -01132
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`maintaining the patents, but that will not involve significant
`monetary investment.
`So, the Tribe will not be at risk to lose any of its own money.
`Second, the patents that the Tribe will acquire will be “vetted”
`by the Shore, Chan DePumpo law firm that it is working with (and
`the Tribe also) to make sure that the patents are “ironclad,”
`very solidly based so that they will be confirmed in federal
`court.
`Of course, there is always a slight chance that an infringer
`could win one of these cases. In that event, the Tribe will be
`protected through agreements with the company making the
`assignment and the Shore firm.
`Q—Who is paying for all the U.S. Patent office work and the
`lawsuits against infringers?
`A—These are being handled on a contingent fee basis. The Shore
`firm work will be paid only when and if the court cases are
`successful. When that happens, the Tribe will get a share of
`the proceeds and a share will go to Shore.
`CURRENT PROJECTS TO DATE
`Q—Has the Tribe entered in any patent agreements so far?
`A—The Tribe has only been involved in this business since April
`of this year, and so far, has entered into two agreements and
`will be executing another soon.
`The first agreement was with a company that holds computer
`technology patents. The Tribe owns 40 of this company’s patents
`through assignments and expects that it will earn a significant
`amount of money through the Shore firm’s enforcement of the
`patents in federal court. Right now a federal court case is
`being prepared for filing. These cases take a year or more so
`the money judgment would not be expected until the case is
`finished— at least 18 months from now.
`The second agreement is with Allergan Pharmaceutical and
`involves that company’s 5 patents for RESTASIS eye drops (dry
`eye relief). This case is different, as the Tribe through the
`Shore firm, contacted Allergan while its patents were being
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`challenged in IPR proceedings. Allergan learned of the
`sovereign immunity defense so it approached the Tribe about
`assignment of its patents. Allergan wants its patents to be
`enforced against infringers, (makers of generic eye drops) but
`in federal court, not in the IPR proceedings.
`Through an agreement that was closed on Friday, September 8,
`2017, Allergan agreed to pay the Tribe $13.75 upfront to acquire
`the patents and move to dismiss the IPR case. If the motion is
`successful and the RESTASIS patents are protected and remain
`valid, Allergan will pay the Tribe $15M in royalties per year
`throughout the life of the patents (that expire in 7 years).
`Q—Does the Tribe expect more deals like Allergan and other
`patent clients?
`A—Yes, when other big technology and pharmaceutical companies
`learn about this patent protection development through the media
`(which has been very active since the Press Release September 8,
`2017) they will contact either the Tribe or the Shore firm.
`Q—If the Tribe earns millions of dollars through this business
`how does it plan on spending it?
`A—This first payment of $13.75M is great but the Tribe is going
`to be very careful and conservative on how it is spent. It is
`possible (but not very likely) that IPR or some court could rule
`that the Tribe’s immunity does not apply so the Tribe must
`consider that the revenues may be short term.
`But, in any event, the Tribal Council has indicated that it
`would allocate the money to benefit tribal members through
`enhancing government services (health, welfare, education,
`housing and other services).
`Q—I understand there is a Tribal Office that is being set up to
`administer these patents?
`A-Yes, the Tribe has created an office to be housed within the
`SRMT Economic Development Division that is called “Office of
`Technology, Research and Patents”. This will be a small office
`that manages the Tribe’s patent business and also will diversify
`to other research, science and technology areas.
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