The Interplay of Co-Pending IPR Proceedings: Winning Strategies for Navigating the District Court and Inter Partes Review

September 22, 2022 10:45am

Scott Weidenfeller
Partner
Covington & Burling LLP

Cary Miller
Partner
Jones Day

Hon. Teresa “Terry” Stanek Rea
Partner
Crowell & Moring LLP (Washington, DC)
(Former Deputy Director, U.S. Patent and Trademark Office)

Arlene Chow
Partner
Latham & Watkins LLP

  • Developing new strategies for parallel proceedings in the District Courts and PTAB in view of a single standard
    • Weighing the future of parallel proceedings in view of a single standard adoption
  • Considering the takeaways from the patent challenger’s perspective in addition to the patentee perspective
  • Devising strategies relative to the filing of an IPR or similar proceeding during the pendency of District Court litigation
  • Formulating strategies based on type of pharmaceutical patent
  • Establishing jurisdiction at the PTAB
    • Special considerations for ex-U.S. parties
  • Developing sound discovery strategies relative to dual proceedings
  • Evaluating chances of getting a stay granted in the District Court
  • Managing experts and use of experts in both forums
  • Appealing decisions in both forums