Standing to Appeal from the PTAB

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Who can appeal an inter partes review?  This webinar will answer questions about the rapidly evolving case law regarding this issue which, years after the passage of the AIA, remains partially unresolved.  Our panel of experts will also address strategies for obtaining, and opposing, appellate standing.

This year the Federal Circuit has already addressed standing on three occasions: Mylan v. Research Corp. Technologies, Momenta v. Bristol-Myers, and Amerigen v. UCB.  Cases appear to fall along a spectrum, with one end including cases where it appears clear that petitioners who were unsuccessful will not have standing and, on the other end, cases where it appears they surely will.  Many interesting cases fall in a complicated middle ground, and a number of those involve products that require a long and expensive development process, such as pharmaceuticals, biosimilars, or aircraft engines. For petitioners in those matters trying to establish appellate standing, the challenge of showing real and immediate injury in fact can difficult to navigate.

In addition to lessons learned from recent cases, our panelists will discuss:

  • The argument that injury from IPR estoppel in future district court litigation, after a losing challenge, is enough to create standing
  • The theory that standing is created after an unsuccessful challenge because a patent impedes research
  • Other strategies for making the case for and against standing
  • The recently argued U.S. Supreme Court case of Return Mail
  • The Court’s request for the Solicitor General’s views regarding the pending petition for writ of certiorari in RPX Corp. v. ChanBond LLC
  • Procedural details for appeals related to standing

Speakers:  

  • Neal Dahiya, Bristol-Myers Squibb Company
  • Michael Flibbert, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Steven Parmelee, Wilson Sonsini Goodrich & Rosati

Neal Dahiya

Bristol-Myers Squibb Company

is an assistant general counsel at Bristol-Myers Squibb, handling global patent litigations as well as business development for the IP group. Prior to joining BMS in 2012, Neal was in private practice for nine years at major law firms in New York.

Michael Flibbert

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. As a patent litigator, Mike serves as lead counsel in inter partes review (IPR) proceedings before the PTAB, district court litigations, and Federal Circuit appeals. He served as lead counsel in a successful recent Federal Circuit appeal from an IPR proceeding, resulting in reversal of the PTAB’s decision and invalidation of all challenged claims. Mike also served as a law clerk to the Honorable Alan Lourie of the Federal Circuit.

Steve Parmelee

Wilson Sonsini Goodrich & Rosati

is of counsel at Wilson Sonsini Goodrich and Rosati.  Steve is a member of the firm’s post-grant review practice representing clients before the PTAB.  Previously, Steve was managing partner of the Seattle office of Townsend & Townsend and an in-house counsel at two pharma companies.  Steve has represented both petitioners and patent owners before the Board, and in related appeals to the Federal Circuit.  He recently represented a client in an appeal of an IPR in which the Federal Circuit clarified the rights of parties joined to a petition.

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Standing to Appeal from the PTAB
04/04/2019 at 2:00 PM (EDT)   |  60 minutes
04/04/2019 at 2:00 PM (EDT)   |  60 minutes
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