Judge Griesa Orders Parties to Brief Whether a Patent Prosecution Bar Prevents Defense Counsel From Participating in an Inter Partes Review


Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Inter Partes Review.

Case Number: 1:12-cv-08060-GWG (Dkt. 68)

One of twelve defendants in patent suits brought by Endo petitioned the USPTO for inter partes review (“IPR”) of three patents at issue in the litigation. A protective order in the litigation instituted a patent prosecution bar. Plaintiff’s counsel asked the court to confirm that the bar did not apply to IPRs. Defendants Amneal and Sandoz opposed. The court said that neither side had addressed the relevant issues. It ordered defendants to address patentee’s claim that the bar does not apply to IPRs. And, citing In re Deutsche Bank Trust co, 605 F.3d 1371 (Fed. Cir. 2010), the court ordered patentee to address on a counsel-by-counsel basis the roles its attorneys would individually play in the IPR proceedings.


Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Robins Kaplan LLP | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.