Workshop A – IPR Strategies and Parallel Proceedings Master Class: Devising Strategies for IPR Best Practices and Navigating Dual Forums in Hatch-Waxman Litigation

Apr 26, 2017 8:30am - 12:00pm



Vishal C. Gupta
Steptoe & Johnson LLP (New York, NY)

Laura A. Vogel
Barclay Damon LLP (Boston, MA)

Ha Kung Wong
Fitzpatrick, Cella, Harper & Scinto (New York, NY)

Alyson L. Wooten PharmD
Kilpatrick Townsend & Stockton LLP (Atlanta, GA)

What is it about?

Parallel litigation in the District Court and PTAB in a Hatch-Waxman setting is becoming more and more commonplace and adds 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 is only now learning the art of appearing before the PTAB. They are developing best practices and also becoming aware of certain things to avoid in these procedures. 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.


  • 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
    • stay pros and cons
  • Understanding claim construction dichotomy in both forums and devising tactics to address both simultaneously
  • 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