Friday, August 15, 2014

Litigation Counsel Not Barred from Participating in IPR as to Overlapping Issues

The court granted in part plaintiff's motion to allow its litigation counsel to participate in inter partes review filed by defendants involving the same claims and defenses, but litigation counsel could not participate in claim amendment or share defendants' confidential information with plaintiff's IPR counsel. "[E]ven if the protective orders did bar [plaintiff's litigation counsel] from participating in the inter partes review proceedings, the court would make an exception. . . . [Litigation counsel's] participation is limited to the issues before this court — questions of obviousness and prior art. Those issues need not implicate competitive decisionmaking or claim amendment. . . . [Plaintiff] would be at a significant disadvantage if [its litigation counsel] is not permitted to assist in the defense of [plaintiff's] patents against the same prior art raised in this litigation. . . . [Counsel] has developed extensive knowledge and expertise regarding those challenges. . . . Forcing [plaintiff's IPR counsel] to prepare from scratch the defense that [litigation counsel] has already prepared would be a waste of time and resources."

Endo Pharmaceuticals, Inc. et al v. Teva Pharmaceuticals USA, Inc. et al, 1-12-cv-08060 (NYSD August 13, 2014, Order) (Griesa, J.)

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