ACI's Paragraph IV Disputes Master Symposium

Intellectual property partner Jeffrey R. Gargano will present in a pre-conference workshop, “Parallel Proceedings Master Class: Strategies for Balancing and Streamlining Dual Proceedings Before the District Courts and PTAB in Pharmaceutical Patent Litigation” at the American Conference Institute (ACI)’s Paragraph IV Disputes Master Symposium.

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 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, the “ins and outs” of IPR practice and appearing in related proceedings in both the District Court and PTAB will be illustrated.

Topics to be covered include:

• 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
• 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