Broadcast Date: Wednesday, August 05, 2020
from 12:00 pm to 1:30 pm (ET)


Inter partes review (IPR) proceedings have been an attractive ground for drug companies seeking to challenge the patentability of pharmaceutical products. The IPR allows challengers to maximize the streamlined process of the Patent Trial and Appeal Board (PTAB) while also taking advantage of the benefits provided by the Hatch-Waxman Act. Given this backdrop, the number of challenges utilizing the IPR process is predicted to continuously climb this year and beyond.

Practitioners must, therefore, ensure that they are prepared in this rapidly evolving climate. The need to stay on top of the recent legal developments to devise effective litigation strategies is more crucial than ever. Some of the 2019 rulings which lawyers should consider in developing strategies this 2020 include Return Mail v. U.S. Postal Service, Regents of the Univ. of Minn. v. LSI Corp., and AVX Corp. v. Presidio Components Inc.

Join patent litigators Tony V. Pezzano (DLA Piper) and Aaron L.J. Pereira (Panitch Schwarze Belisario & Nadel LLP) as they delve into an in-depth analysis of the significant issues resulting from the interaction between  IPR proceedings and the Hatch-Waxman Act. Speakers will also provide practical strategies in bringing out the best in these lawsuits in light of the current trends and recent court rulings.

Key topics include:

  • The Unique Interplay Between Hatch-Waxman and IPR
  • Recent Case Decisions
  • Current and Emerging Issues
  • Effective Litigation Strategies
  • Outlook


Course Level:



Advance Preparation:

Print and review course materials


Method of Presentation:

On-demand Webcast (CLE)



General knowledge of patent infringement litigation


Course Code:



NY Category of CLE Credit:

Areas of Professional Practice


Total Credits:

1.5 CLE

Speaker Panel:

Tony V. Pezzano, Partner
DLA Piper

Tony Pezzano is a partner in the New York offices of DLA Piper LLP (US). Tony has successfully tried numerous cases in federal district courts and the ITC involving technology innovation across a diverse range of industries.  Tony has been lead counsel for brand pharmaceutical companies in over two dozen filed Hatch-Waxman cases during the past ten years involving antibiotic, antiviral, antifungal, anticoagulant, and anti-organ transplant rejection drug products.  Tony has also represented both Complainants and Respondents in ITC Section 337 investigations involving biologics, SeaDoos/WaveRunners, wireless communication devices, including mobile phones and tablets, computer routers and Segways/hoverboards.  Few attorneys, if any, can match Tony’s record of obtaining both injunctions in Hatch-Waxman cases as well as exclusion and cease and desist orders in ITC Section 337 investigations. Tony is Past President (2009) of the ITC Trial Lawyers Association.

Aaron L.J. Pereira, Counsel
Panitch Schwarze Belisario & Nadel LLP

Aaron Pereira is a litigator and patent attorney, with a background in chemical & biomolecular engineering.

Aaron has several years of experience litigating and counseling in the life sciences space, with a special focus on Hatch-Waxman and BPCIA matters. He has managed large parallel litigation in federal district court and at the Patent Office, and has developed a deep understanding of the procedural and substantive interplay between such proceedings. He has been counsel to some of the world’s largest and most sophisticated companies, and regularly advises clients on matters of global patent strategy, market entry, and product competition. As a registered patent attorney, Aaron has prosecuted patents and rendered opinions in the life sciences space. He also has experience running large patent diligence reviews in support of acquisitions and financing.

Aaron is active in professional and affinity groups, and currently chairs the Patents Committee at the NYC Bar Association.



Aaron L.J. Pereira, Counsel

Panitch Schwarze Belisario & Nadel LLP

  • Trends and outcomes for Orange Book and biologic patents in AIA proceedings at the PTAB
  • Recent decisions designated precedential or informative by the PTAB, and their impact on parallel Hatch-Waxman litigation
  • Strategies and considerations for producing district court discovery in AIA proceedings
  • Managing parallel proceedings in Hatch-Waxman cases, and strategies for leveraging PTAB decisions in district court, and vice versa, for branded innovators and generic challengers


Tony V. Pezzano, Partner

DLA Piper

  • Considerations  for Not Proceeding With an IPR Proceeding Prior to or in Parallel With a Hatch-Waxman Action
    • Reasons to reconsider filing an IPR Proceeding
    • There are persuasive reasons a Federal District Court Judge will not stay a Hatch-Waxman action
    • Beware of petitioner estoppel under 35 U.S.C. §315(e)
    • The broadest reasonable claim construction is no longer the standard in PTAB
    • Live witness testimony is rare in an IPR proceeding
    • Avoiding brand forum shopping is no longer in play post TC Heartland

Date & Time:

Wednesday, August 05, 2020

12:00 pm to 1:30 pm (ET)

Who Should Attend:

  • Patent Lawyers and Agents
  • Biotech/Pharma Industry Lawyers
  • Litigators
  • In–House Counsels
  • Intellectual Property Specialists and Managers
  • Chief Compliance Officers
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Tony V. PezzanoPartner
DLA Piper
Aaron L.J. PereiraCounsel
Panitch Schwarze Belisario & Nadel LLP



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