WORKSHOP B: Working Group on IPR Strategies and Parallel Proceedings: Devising Winning Strategies for IPR Best Practices and Navigating Dual Forums in Hatch-Waxman Litigation

Oct 8, 2020 12:30pm – 4:00pm

Parallel litigation in the District Court and PTAB in a Hatch-Waxman proceeding has become a way of life for life sciences patent litigators, adding to the “no-holds barred” atmosphere of this high stakes type of litigation. The art of navigating proceedings between to these two forums has been described as akin to walking a tightrope.

In navigating these dual forums, even the most seasoned of District Court litigators are still learning the evolving art of appearing before the PTAB. In this very interactive session, we will illustrate the “ins and outs” of IPR practice and appearing in dual proceedings in both the District Court and PTAB with a special focus on IPR practice.

  • 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
  • Ensuring all RPIs are properly named
  • Assessing split petition strategies
  • Understanding when requests for joinder can be made and when they should be made
  • Analyzing secondary considerations
  • 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
  • Best practices for simultaneous trials
  • Appealing decisions in both forums
  • Addressing settlement in both forums
  • Managing desire and expectations of parties to settle despite PTAB’s insistence on moving the petition forward