10/13/2017
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`SEPTEMBER 8, 2017 / 11:50 AM / A MONTH AGO
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`Allergan pays Mohawk Tribe to protect patents from
`challenges
`
`Deena Beasley
`
`3 M I N R E A D
`
`(Reuters) - Allergan Plc will transfer to the Saint Regis Mohawk Tribe the rights to its blockbuster Restasis dry-eye treatment,
`the drugmaker said on Friday, in an unusual deal to protect it from patent challenges.
`
`File Photo: A trader works at the post that trades Parsley Energy Inc. and Allergan Plc., on the floor of the New York Stock
`Exchange (NYSE) April 5, 2016. REUTERS/Brendan McDermid
`
`The tribe, which has sovereign immunity from such challenges, will receive a one-time payment of $13.75 million and annual
`royalties of around $15 million under the arrangement proposed by the Saint Regis, Allergan said in a statement.
`MYLAN - EXHIBIT 1153
`Mylan Pharmaceuticals Inc. et al. v. Allergan, Inc.
`IPR2016-01127, -01128, -01129, -01130, -01131, -01132
`
`https://www.reuters.com/article/us-allergan-patents-mohawk/allergan-pays-mohawk-tribe-to-protect-patents-from-challenges-idUSKCN1BJ2DK
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`10/13/2017
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`Allergan pays Mohawk Tribe to protect patents from challenges
`
`Sales of Restasis, which totaled over $1.5 billion last year, account for about 15 percent of Allergan’s profits, according to
`AllianceBernstein.
`
`“If this maneuver is successful, we will probably see multiple branded (drug) companies housing their patents with Indian
`tribes,” AllianceBernstein analyst Ronny Gal said in a video statement. “It could be the next big Indian tribe industry after
`gaming.”
`
`Other analysts and legal experts said they expect legal challenges to the tactic, including possible action by lawmakers at the
`state and federal levels.
`
`The Saint Regis Mohawk Tribe, which originated in the northeastern region of what is now New York State, operates casinos
`in upstate New York.
`
`Allergan said it entered into the deal after reviewing recent case law showing it was harder to challenge patents held by certain
`entities.
`
`These include a February ruling by the U.S. Patent and Trademark Office’s trial and appeal board that patents owned by the
`University of Florida could not be challenged by Medtronic Plc’s Covidien unit because the university enjoyed sovereign
`immunity.
`
`A different panel of patent and trial appeal board judges reached a similar conclusion in May in a dispute over patents owned
`by the University of Maryland. Those rulings will be appealed in the U.S. Court of Appeals for the Federal Circuit.
`
`Allergan said the patent agreement had no impact on litigation involving applications for generic versions of Restasis which
`recently went to trial in Federal District Court in Marshall, Texas.
`
`A decision in that case, brought by Teva Pharmaceuticals Industries Ltd and other generic drugmakers, is expected in a few
`months.
`
`“Today’s news from Allergan is a new and unusual way for a company to try to delay access to high-quality and affordable
`generic alternatives,” Teva said in an emailed statement.
`
`The generic drugmaker said it will continue to pursue its application with the Food and Drug Administration for a generic
`version of Restasis “and also will be interested to see what comments are made about this tactic by regulatory agencies.”
`
`According to Allergan, the six transferred patents are due to expire in August 2024.
`
`Additional reporting by Jan Wolfe; Editing by Richard Chang and Paul Simao
`
`Our Standards: The Thomson Reuters Trust Principles.
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`https://www.reuters.com/article/us-allergan-patents-mohawk/allergan-pays-mohawk-tribe-to-protect-patents-from-challenges-idUSKCN1BJ2DK
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