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.

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