Discovery in U.S. Patent Litigation & Managing its Potential Impact in Related Foreign Cases
Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates Webinar Report
January 16, 2023
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Webinar Report
January 20, 2023
Overview
◆Date: January 18th, 2023
◆Time: 8:00 - 9:00 PM (ET)
◆Format: Zoom Webinar
◆Fee: Free
※We only accept registrations with company email addresses.
◆Summary:
※We only accept registrations with company email addresses.
◆Summary:
Understanding the key mechanisms of discovery in U.S. patent litigation is important to putting your case in the best position to win. In the world of business where litigation is often in many international venues, understanding how to manage those venues and the use of U.S. discovery therein is vital to a global litigation strategy.
In this webinar, the presenters will provide an overview of important discovery mechanisms in U.S. patent litigation. The presenters will also discuss important considerations when managing global patent litigation and the potential cross use of U.S. discovery in foreign proceedings. The presenters will use hypothetical and real-world examples of U.S. discovery issues, global patent litigation strategies, and cross-use possibilities, followed by a question-answer session to answer questions related to the same.
In this webinar, the presenters will provide an overview of important discovery mechanisms in U.S. patent litigation. The presenters will also discuss important considerations when managing global patent litigation and the potential cross use of U.S. discovery in foreign proceedings. The presenters will use hypothetical and real-world examples of U.S. discovery issues, global patent litigation strategies, and cross-use possibilities, followed by a question-answer session to answer questions related to the same.
◆Agenda:
1. Panelist Introduction
1. Panelist Introduction
8:00 - 8:05 PM (ET) | 10:00 - 10:05 AM (JST)
2. Speakers ‘Lecture
2. Speakers ‘Lecture
"Discovery in U.S. Patent Litigation & Managing its Potential Impact in Related Foreign Cases"
8:05 - 8:35 PM (ET) | 10:05 - 10:35 AM (JST)
3. Moderated Discussion
8:05 - 8:35 PM (ET) | 10:05 - 10:35 AM (JST)
3. Moderated Discussion
8:35 - 8:50 PM (ET) | 10:35 - 10:50 AM (JST)
4. Audience Q&A
8:50 - 9:00 PM (ET) | 10:50 - 11:00 AM (JST)
8:50 - 9:00 PM (ET) | 10:50 - 11:00 AM (JST)
※The webinar will be conducted in English.
◆Speakers:
John D. Livingstone
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
John Livingstone, managing partner of the firm’s Atlanta office, is a first-chair trial lawyer focusing on complex pharmaceutical, chemical, and biotechnology patent litigation before U.S. district courts, the U.S. International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit. He also serves as lead counsel in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). John was a resident in Finnegan’s Tokyo office for four years and frequently helps global clients with U.S. patent issues.
John also advises clients on a variety of patent matters, including strategic portfolio management and due diligence assessments in connection with mergers and acquisitions and in-licensing opportunities.
John routinely lectures about patent law and has written numerous legal and scientific articles. In addition, John regularly
presents to national and international audiences, including the International Association for the Protection of Intellectual Property (AIPPI) in Singapore and Seoul; LexisNexis in Shenzhen; Japan Licensing Executive Society (JLES) in Tokyo; Japan Patent Attorneys Association (JPAA) in Tokyo, Osaka, and Shikoku; American Intellectual Property Law Association’s (AIPLA) Chemical Prosecution Bootcamp in Minneapolis and Houston, and Chemical Practice Group meeting in Houston; and Managing Intellectual Property ’s roundtable in Tokyo.
John has been recognized as an IP Star in Georgia by Managing Intellectual Property since 2013. He has ranked among the top U.S. patent lawyers in Legal Media Groups Guide to the World’s Leading Patent Law Practitioners since 2016. John is recognized by LMG Life Sciences as General Patent Litigator of the Year South, as an Intellectual Property: Life Sciences Star, and for his contributions to “Hatch-Waxman Patent Litigation”. He also led the litigation teams responsible for the firm’s appellate victory in Kaken Pharmaceutical Co., Ltd.; Bausch Health Care v. Andrei Iancu and district court win in AstraZeneca AB v. Aurobindo Ltd et al., both of which were selected as Impact Cases of the Year at the LMG Life Sciences Awards.
John also advises clients on a variety of patent matters, including strategic portfolio management and due diligence assessments in connection with mergers and acquisitions and in-licensing opportunities.
John routinely lectures about patent law and has written numerous legal and scientific articles. In addition, John regularly
presents to national and international audiences, including the International Association for the Protection of Intellectual Property (AIPPI) in Singapore and Seoul; LexisNexis in Shenzhen; Japan Licensing Executive Society (JLES) in Tokyo; Japan Patent Attorneys Association (JPAA) in Tokyo, Osaka, and Shikoku; American Intellectual Property Law Association’s (AIPLA) Chemical Prosecution Bootcamp in Minneapolis and Houston, and Chemical Practice Group meeting in Houston; and Managing Intellectual Property ’s roundtable in Tokyo.
John has been recognized as an IP Star in Georgia by Managing Intellectual Property since 2013. He has ranked among the top U.S. patent lawyers in Legal Media Groups Guide to the World’s Leading Patent Law Practitioners since 2016. John is recognized by LMG Life Sciences as General Patent Litigator of the Year South, as an Intellectual Property: Life Sciences Star, and for his contributions to “Hatch-Waxman Patent Litigation”. He also led the litigation teams responsible for the firm’s appellate victory in Kaken Pharmaceutical Co., Ltd.; Bausch Health Care v. Andrei Iancu and district court win in AstraZeneca AB v. Aurobindo Ltd et al., both of which were selected as Impact Cases of the Year at the LMG Life Sciences Awards.
M. David Weingarten, Ph.D.
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
David Weingarten, Ph.D., has a diverse chemistry and life sciences practice focusing on patent litigation before U.S. district courts and the U.S. International Trade Commission (ITC), post-grant trial proceedings at the U.S. Patent and Trademark Office (USPTO), patent prosecution, and strategic portfolio management. David also has extensive experience preparing and prosecuting U.S. patent applications, coordinating and managing foreign prosecution, developing strategies for portfolio management and planning, and participating in diligence projects on behalf of domestic and foreign clients. In addition, he drafts opinions on patent infringement, validity, and enforceability, and prepares intellectual property agreements, such as those relating to license and supply.
David is currently serving as Chair of the Food and Drug committee of the American Intellectual Property Law Association (AIPLA), a national bar association of intellectual property professionals. David has been recognized on Best Lawyers’ “Ones to Watch” list for 2020 and 2021 and elected Fellow of the American Bar Foundation in 2021. He was also recognized by Intellectual Asset Management in 2022 as a compelling advocate in the context of major pharmaceutical and biotechnology litigation. David has spoken at numerous national trade and bar association meetings such as American Chemical Society (ACS), American Bar Association (ABA), and New Jersey Intellectual Property Law Association (NJIPLA), He is also a frequent lecturer on diverse patent law topics for Strafford.
Prior to practicing law, David spent more than a decade in the pharmaceutical industry developing drugs across a wide range of therapeutic areas, including cardiovascular, metabolic, respiratory, and inflammation. As a member of senior management, he was responsible for leading research and development efforts in drug discovery, process research and development, and manufacturing. He also prepared New Drug Application (NDA) submissions, conducted due diligence, and managed technology transfers.
While at Emory University School of Law, David was a Robert W. Woodruff Fellow; a Dean’s teaching Fellow; received awards for outstanding academic achievement in contract drafting, negotiations, deal skills, and patents and global health; and was awarded first place, Emory University School of Law Transactional Negotiation Meet. David was also an Achievement Rewards for College Scientists (ARCS) scholar; a Northern Telecom Scholar; a Department of Education graduate fellow; and an American Chemical Society, Organic Division graduate fellow at Emory University.
David is currently serving as Chair of the Food and Drug committee of the American Intellectual Property Law Association (AIPLA), a national bar association of intellectual property professionals. David has been recognized on Best Lawyers’ “Ones to Watch” list for 2020 and 2021 and elected Fellow of the American Bar Foundation in 2021. He was also recognized by Intellectual Asset Management in 2022 as a compelling advocate in the context of major pharmaceutical and biotechnology litigation. David has spoken at numerous national trade and bar association meetings such as American Chemical Society (ACS), American Bar Association (ABA), and New Jersey Intellectual Property Law Association (NJIPLA), He is also a frequent lecturer on diverse patent law topics for Strafford.
Prior to practicing law, David spent more than a decade in the pharmaceutical industry developing drugs across a wide range of therapeutic areas, including cardiovascular, metabolic, respiratory, and inflammation. As a member of senior management, he was responsible for leading research and development efforts in drug discovery, process research and development, and manufacturing. He also prepared New Drug Application (NDA) submissions, conducted due diligence, and managed technology transfers.
While at Emory University School of Law, David was a Robert W. Woodruff Fellow; a Dean’s teaching Fellow; received awards for outstanding academic achievement in contract drafting, negotiations, deal skills, and patents and global health; and was awarded first place, Emory University School of Law Transactional Negotiation Meet. David was also an Achievement Rewards for College Scientists (ARCS) scholar; a Northern Telecom Scholar; a Department of Education graduate fellow; and an American Chemical Society, Organic Division graduate fellow at Emory University.
Paul Townsend
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
(Finnegan, Henderson, Farabow, Garrett & Dunner, LLP)
Paul Townsend’s patent practice encompasses litigation, prosecution, and client counseling. He assists companies primarily in industries involving polymer compositions and manufacturing, specialty chemicals, catalysts, coating technologies, pharmaceuticals, and energy technologies.
Paul represents clients in litigation in district court, in Section 337 investigations at the International Trade Commission (ITC), and in inter partes reviews (IPRs) before the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He has experience at all stages of litigation, including drafting pleadings; developing claim construction; handling all aspects of discovery; working with expert witnesses to develop infringement, validity, and invalidity positions; working with expert witnesses to prepare expert reports and declarations; drafting and responding to motions; conducting legal research; handling day-to-day litigation activities; and preparing for and attending trial.
Paul has extensive prosecution and client counseling experience. He develops and drafts intellectual property policies, drafts and prosecutes patent applications, coordinates foreign prosecution, and assists in both licensing and pre-litigation related due-diligence analyses. He also prepares invalidity, validity, infringement, non-infringement, and freedom to operate opinions in various chemical-related technology areas.
Paul has a particular interest in energy-related technologies. Prior to law school, Paul interned with various oil and gas companies in both upstream and downstream operations, as well as with a nuclear power company. While at Queen’s University completing his chemical engineering degree, Paul was involved in multiple projects relating to renewable and alternative energy sources, such as bio-fuel and solar technologies. Paul’s attention to energy and other climate technologies has led him to present on numerous occasions at the Chemical Engineering and the Law Forum at the Annual and Spring Meetings for the American Institute of Chemical Engineers.
Paul regularly participates in Finnegan’s various pro bono programs. He has represented several disabled military veterans before the U.S. Court of Appeals for Veteran Claims in appeals related to denial of benefits as well as tenants in landlord-tenant disputes for the D.C. Bar Pro Bono Center. He helped prepare an amicus brief submitted to the Connecticut Supreme Court relating to expert testimony on forensic science evidence in criminal cases. Paul has been named to the Capital Pro Bono Honor Role for several consecutive years.
Paul represents clients in litigation in district court, in Section 337 investigations at the International Trade Commission (ITC), and in inter partes reviews (IPRs) before the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). He has experience at all stages of litigation, including drafting pleadings; developing claim construction; handling all aspects of discovery; working with expert witnesses to develop infringement, validity, and invalidity positions; working with expert witnesses to prepare expert reports and declarations; drafting and responding to motions; conducting legal research; handling day-to-day litigation activities; and preparing for and attending trial.
Paul has extensive prosecution and client counseling experience. He develops and drafts intellectual property policies, drafts and prosecutes patent applications, coordinates foreign prosecution, and assists in both licensing and pre-litigation related due-diligence analyses. He also prepares invalidity, validity, infringement, non-infringement, and freedom to operate opinions in various chemical-related technology areas.
Paul has a particular interest in energy-related technologies. Prior to law school, Paul interned with various oil and gas companies in both upstream and downstream operations, as well as with a nuclear power company. While at Queen’s University completing his chemical engineering degree, Paul was involved in multiple projects relating to renewable and alternative energy sources, such as bio-fuel and solar technologies. Paul’s attention to energy and other climate technologies has led him to present on numerous occasions at the Chemical Engineering and the Law Forum at the Annual and Spring Meetings for the American Institute of Chemical Engineers.
Paul regularly participates in Finnegan’s various pro bono programs. He has represented several disabled military veterans before the U.S. Court of Appeals for Veteran Claims in appeals related to denial of benefits as well as tenants in landlord-tenant disputes for the D.C. Bar Pro Bono Center. He helped prepare an amicus brief submitted to the Connecticut Supreme Court relating to expert testimony on forensic science evidence in criminal cases. Paul has been named to the Capital Pro Bono Honor Role for several consecutive years.
Vlad Lobatchev
Director of Engagement Management and Data Science
(FRONTEO USA)
As an Engagement Manager and a Director of Data Science and Strategy, Vlad Lobatchev is responsible for ensuring that our clients always receive top-tier customer experience and best-in-breed technology to enhance their e-Discovery workflows. He draws on his extensive professional experience and legal background to guide development and implementation of innovative technological solutions and workflows on client engagements. Prior to joining FRONTEO, he was an attorney for two years specializing in general corporate and finance law – taxation, contracts, corporate formation, and administration.
(FRONTEO USA)
As an Engagement Manager and a Director of Data Science and Strategy, Vlad Lobatchev is responsible for ensuring that our clients always receive top-tier customer experience and best-in-breed technology to enhance their e-Discovery workflows. He draws on his extensive professional experience and legal background to guide development and implementation of innovative technological solutions and workflows on client engagements. Prior to joining FRONTEO, he was an attorney for two years specializing in general corporate and finance law – taxation, contracts, corporate formation, and administration.
◆Moderator:
Shiho TanakaSVP, Discovery Consulting Division (FRONTEO USA)
