Share on LinkedInShare on LinkedIn

ARTICLE · 16 FEBRUARY 2024

IPR v. Ex Parte Reexam Strategy Considerations

Axinn
Axinn
Contributor
Axinn

Axinn

Incisive. Inclusive. Invested. We’re Axinn. Experienced, tenacious, and always trial-ready, we are...

View firm profile
Explore more from Axinn

Looking forward to presenting at the AIPLA IP Practice in Japan Mid-Winter Program in Houston, TX next week!

United StatesIntellectual Property
Jeannine Sano
Jeannine Sano

I will be discussing the strategic considerations for Inter Partes Review (IPR) versus Ex Parte Reexamination, including:

  • The procedural differences between IPR and Ex Parte Reexamination and associated statistics
  • The circumstances when one may be preferable over the other
  • The effects of timing and estoppel in parallel litigations

My colleague, Jason Murata, another partner in Axinn's Intellectual Property group, will be covering, "Recent Developments in the Generic Pharma Industry in the U.S."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

View source

Related Articles

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

BMS And Ono File BPCIA Suit Against Amgen For Nivolumab Biosimilar

Bristol-Myers Squibb and Ono Pharmaceutical have filed a patent infringement lawsuit against Amgen over its proposed nivolumab biosimilar ABP 206, asserting seven patents related to OPDIVO. The complaint follows earlier inter partes review challenges and patent dance negotiations that narrowed the dispute to specific claims covering the antibody sequence, cancer treatment methods, and dosing regimens.
United StatesIntellectual Property
Goodwin Procter LLP
Goodwin Procter LLP
Article

Courts Expand The DTSA’s Reach To Foreign Trade Secret Misappropriation Following Motorola v. Hytera

The Seventh Circuit's 2024 decision in Motorola Solutions v. Hytera Communications established that the Defend Trade Secrets Act can reach conduct outside the United States and permit recovery of damages based on worldwide sales. District courts have begun applying this precedent, expanding the potential scope of liability for cross-border trade secret disputes. The ruling raises important questions about how minimal a US connection may be before federal trade secret protection no longer applies.
WorldwideIntellectual Property
Goodwin Procter LLP
Goodwin Procter LLP
Article

PTAB/USPTO Update - September 2026

The USPTO has released its latest economic impact report on IP-intensive industries, announced a new community engagement office in North Carolina, and issued several administrative updates including relief for Japanese applicants affected by a severe earthquake. The Patent Trial and Appeal Board has also designated new precedential and informative decisions addressing obviousness-type double patenting and Markush groupings.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

U.S. Government Backs Fair Use For AI Training In OpenAI Copyright Litigation

The U.S. government has filed a Statement of Interest of the United States of America under 28 U.S.C. § 517 in the Southern District of New York multidistrict litigation over OpenAI’s use of copyrighted works to train large language models. The filing appears to be the federal government’s first direct intervention in the wave of artificial intelligence (AI) training copyright cases, and it advises the court to treat model training (separate from use of AI to generate outputs) on copyrighted text standing alone as a highly transformative fair use under current law.
United StatesIntellectual Property
Lowenstein Sandler LLP
Lowenstein Sandler LLP
Article

The Ninth Circuit Affirms Dismissal Of DMCA CMI Removal Claim Against AI Code Generator – Output Is A New Work Not A Copy Of Training Data

There was a significant ruling in the Doe v. Github case involving training of AI code generator models on open source. The United States Court of Appeals for The Ninth Circuit affirmed the district court ruling dismissing part of an action brought under the Digital Millennium Copyright Act (“DMCA”) by programmers against GitHub, Inc., and other defendants. The issues centered on whether defendants removed copyright management information (CMI) from content used to train the AI code generator models.
United StatesIntellectual Property
Sheppard
Sheppard
Article

Right To Repair Alert: Deere & Company Reaches Settlement With FTC, States

The Federal Trade Commission and five State Attorneys General have reached a landmark settlement with Deere & Company in a year-and-a-half antitrust litigation over the agricultural equipment manufacturer's restrictions on repair resources. The stipulated order, if approved, will require Deere to provide farmers and independent repair providers with the same repair tools and technical resources available to authorized dealers for a period of ten years.
United StatesAntitrust/Competition Law
Axinn
Axinn
Article

A New Era For EU And UK Deals? The EC’s Draft Merger Guidelines And The CMA’s Growth Approach (Video)

The European Commission's draft new EU Merger Guidelines and the UK's evolving approach signal a shift in how mergers are analyzed amid changing geopolitical dynamics. Partner James K. Hunsberger joins Brunswick's Stuart Hudson and Matthew Hall to explore what these regulatory changes mean for merger control, examining potential EU/UK convergence or divergence and the growing risk of politicization in competition reviews.
United StatesAntitrust/Competition Law
Axinn
Axinn
Article

“Old Crime, New Code” – DOJ Outlines Its Views On When Software And AI Can Facilitate Collusion

The Department of Justice's Criminal Deputy outlines how antitrust enforcement applies to algorithmic pricing tools, distinguishing between legitimate software use and illegal collusion. When do pricing algorithms cross the line from benign business tools into criminal price-fixing conspiracies, and what evidence will prosecutors seek to prove competitors knowingly coordinated through shared data and common models?
United StatesAntitrust/Competition Law
Axinn
Axinn