Presentations and Publications

Presentations

  • “Risk Evaluation and Mitigation Strategies (REMS): Update,” 7th Annual Pharma IPR Conference, Mumbai, India, March 2018.
  • “The US Supreme Court Ruling on Amgen vs. Sandoz Case and What Developers Need To Know?,” 2nd China Pharma IP Summit, December 2017.
  • “Paragraph IV Litigation Trends, Analysis and Future Predictions,” ACI’s Master Symposium on Hatch-Waxman, October 2017.
  • “Illusory Safe Harbors: Exploring Uncertainties in the Boundaries of 271 (e) (1) and the Scope of Divided and Induced Infringement,” ACI’s Paragraph Disputes Conference, April 2017.
  • “On Sale Bar – Round II: Understanding The Impact of Helsinn on Pharmaceutical Patents in a Post – AIA Setting,” ACI’s Paragraph Disputes Conference, April 2017.
  • “Streamlining Section 271(e) and the Safe Harbor,” ACI’s Master Symposium on Hatch-Waxman, September 2016.
  • “On Sale Bar in a Hatch-Waxman Setting: Analyzing Patent Impediments Caused by Contract Manufacturing and Its Impact on Pharmaceutical Product Market Access,” ACI’s Paragraph Disputes Conference, April 2016.
  • “In the Limelight: Examining Lily v. Teva and its Larger Implications for Divided and Induced Infringement in a Hatch-Waxman Setting,” ACI’s Paragraph Disputes Conference, April 2016.
  • “Paragraph IV Due Diligence Analysis: Economic Impact of Pharmaceutical Patent Wins and Losses at District Courts and PTAB,” ACI’s Paragraph Disputes Conference, September 2015.
  • “Exploring the Utilization of Reissue Applications to Cure Invalidity Findings at the PTAB and District Courts,” ACI’s Paragraph Disputes Conference, April 2015.
  • “Limelight vs. Akamai: Assessing its Impact on Method of Treatment Patents and Section viii Label Carve Outs,” ACI’s Paragraph Disputes Conference, April 2015.
  • “Biosimilars Litigation Spotlight: Immediate Action Plans for Innovators and Biosimilars to Prepare For the Battles to Come,” ACI’s Summit on U.S. Biosimilars, April 2015.
  • “Biosimilar Expert Panel,” William Blair & Company, February 2015.
  •  “The Legal Framework of Biosimilars: What do we know, what do we not?” December 2014.
  • “Taft’s October 2014 Update on U.S. Hatch-Waxman Issues,” October 2014.
  • “Predictions for the Future: Biopharmaceuticals and Exclusivity,” BIO International Convention, June 2014.
  • “Due Diligence and Risk Management,” Biotechnology Law and New Frontiers Seminar, Budapest, April 2014.
  • “Looking Beyond 180 Days: New Exclusivity Challenges for Brand Names and Generics and Related Implications for Paragraph IV Challenges,” ACI’s 8th Annual Paragraph IV Disputes Conference, New York, April 2014.
  • “Supremely Looking Forward in 2014 – U.S. Supreme Court Review,” SIU Law Intellectual Property Seminar, April 2014.
  • “Use of IPR and Other PTO Proceedings in a Paragraph IV Challenge,” Paragraph IV Disputes Master Symposium, Chicago, October 2013.
  • “Examining Branded-Generic Alliances that Maximize the Potential of Biosimilars and Minimize Investment Risks,” Legal and Regulatory Summit on Generic Drugs, NYC, July 2013.
  • “Analyzing How New Safe Harbor Controversies Will Impact Paragraph IV Disputes,” ACI’s 7th Annual P-IV Disputes Conference, NYC, May 2013.
  • “Biosimilars: Strategic Considerations for Regulatory Approval & Patents Under the BPCIA,” BIO International Convention, Chicago, April 2013.
  • “Discovery in Complex Litigation: Production of Source Code & Social Media,” Federal Circuit Bar Association’s Advanced Complex Litigation Series, Chicago, April 2013.
  • “A Conversation with Industry,” IIT Chicago-Kent College of Law’s PatCon3, Chicago, April 2013.
  • “How the America Invents Act Impacts Orange Book Patent Challenges,” ACI’s 6th Annual Paragraph IV Disputes Conference, NYC, April 2012.
  • “Northern District of Illinois Legal Update & Judicial Perspectives,” panel moderator with Chief Judge Holderman, Chicago Daily Law Bulletin’s 8th Annual Corporate IP Law Conference, Chicago, February 2013.
  • “Through the Looking Glass — Fine-tune Fundamentals of Hatch-Waxman and Anticipation of Future Developments in Patent Litigation,” CBI’s 4th Annual Life Sciences Congress, Washington DC, Oct. 2012.
  • “Legal and Patent Strategies for the Generics Industry,” World Generic Medicines Congress 2012, Washington D.C., November 2012.
  • “Lifecycle Management Under the Biosimilars Act,” ACI’s 12th Annual Maximizing Pharmaceutical Patent Life Cycles, NYC, Oct. 2011.
  • “Assessing the Changing Generics Market to Enhance Your Product Portfolio,” Marcus Evans’ 4th Annual Product & Pipeline, VA, July 2011.
  • “Scrutinizing the Financial Viability of Biosimilars,” ACI’s 2nd Annual Biosimilars Conference, NYC, June 2011.
  • “Comprehending the Newfound Significance of Inducement Actions in Paragraph IV Litigation,” ACI’s 5th Annual Paragraph IV Disputes, May 2011.
  • “Inter-Generic Legal & Regulatory Strategies,” CBI’s 3rd annual Congress of P-IV Disputes, Alexandria, October 2010.
  • “A Closer Look at Generic v. Generic Law Suits,” ACI’s 4th Annual Paragraph IV Disputes Conference, NYC, April 2010.
  • “Achieving Harmony: Branded & Generics Dual Identity,” DCAT’s 8th Annual Business Development Program, NYC, March 2010.
  • “How to Ensure Access, Management and Protection of IP,” World Generics Medicines Congress, Wash. D.C., November 2009.
  • “Developing a Risk-Balanced Patent Strategy to Mitigate Lawsuits,” Marcus Evans Product & Portfolio, VA, June 2009.
  • “Mastering the Interplay Between 180-Day Exclusivity, Forfeiture Provisions, and Citizen’s Petitions,” ACI’s Paragraph IV Disputes, NYC, April 2009.
  • “Hatch-Waxman First-to-File Marketing Exclusivity: Getting it, Keeping it & Avoiding Forfeiture,” World Generic Medicines Congress, NYC, November 2008.
  • “Mastering the Interplay Between 180-Day Exclusivity; Forfeiture Provisions and Paragraph IV Litigation,” ACI’s Paragraph IV Disputes, NYC, May 2008.
  • “Issues at the Intersection of Patent Law, FDA and Antitrust,” annual meeting of Intellectual Property Owners Association, NYC, September 2007.
  • “The Future of Antitrust Allegations in Patent Litigation,” 3rd Patent Strategies, NYC, March 2007.
  • “The Future of Follow-On Biologics: Trickle or Onslaught?  Contemplating Change After Omnitrope,” Pharma/Biotech Industry Forum on Patent Portfolio Management, NYC, February 2007.
  • “Overview of Recent, Important Cases and the Future Implications,” Pharmaceutical and Biotech Patent Strategies, Philadelphia, September 2006.

Publications

  • “Must Whole Patent Be Nixed to Forfeit 180-Day Exclusivity?,” July 2018.
  • “J&J Case Raises Estoppel Issue for Successful IPR Litigants,” April 2018.
  • “ALIMTA Anomaly (or maybe a pemetrexed paradox?),” September 2017.
  • “Isosulfan Blue Maps Equivalents in Chemical Cases,” August 2017.
  • “The Federal Circuit Vacates on VELCADE (or bounces on bortezomib),” July 2017.
  • “The ALOXI (Palonosetron) Patents are Regurgitated as Invalid,” May 2017.
  • “Sandoz/Momenta Can’t Coagulate an Antitrust Affirmance on Enoxaparin,” March 2017.
  • “Sandoz Loses Rhythm in MULTAQ Litigation; Judge Andrews Cites Our Chapter,” February 2017.
  • “Pay It (to) Forward; Biogen Settles on TECFIDERA (dimethyl fumarate),” January 2017.
  • “Protection From Generics Without a Patent?,” December 2016.
  • “The Palonosetron Paradox — when is a clinical formulation ready for patenting?,” October 2016.
  • “Don’t try this at home. Especially not in the shower. Several generics win challenge to AXIRON (testosterone),” September 2016.
  • “Can an OOS Batch Support Infringement?,” July 2016.
  • “TREANDA Patents Upheld, and SUBOXONE May Stay Afloat Until 2024,” June 2016.
  • “Hey, No Flare! Hikma’s Carve Out Leads to Takeda’s Dismissal on Colchicine,” May 2016.
  • “Ezra Attacks the PTE Grant on Gilenya,” March 2016.
  • “Gilead Going to the Mat with Merck on Sovaldi?” February 2016.
  • “Purdue’s Pain Continues with OxyContin Ruling,” February 2016.
  • “In Momenta II, the Federal Circuit May Have Closed the Harbor But Opened the World,” November 2015.
  • “OxyContin Oh No!! Did Purdue Dismiss its Complaint Too Early?” August 2015.
  • “Federal Circuit Judges the Patent Dance Not Ballroom-Worthy,” July 2015.
  • “Mylan Can’t Conceive New Contentions in its Lo Loestrin Fe Litigation,” June 2015.
  • “Brand’s Use of ANDA Limited to “Sufficiently Related” Patents Only,” June 2015.
  • “Should Isomers Remain Patentable Subject Matter, or Will Myriad and Mayo Eliminate Them?” April 2015.
  • “Benicar Benefits! Generics Can DJ Disclaimed Patents and Trigger Forfeiture Without TA at Filing,” April 2015.
  • “Let’s Get this Party (in Interest) Started! Allergan Gets IPRs Dismissed for Petitioners Failing to Include Parent with the Power,” March 2015.
  • “2014 In Review — Countdown of the Top Ten Hatch-Waxman and Biosimilar Decisions/Events of the Past Year,” December 2014.
  • “Strike Three Yer Out!! Celltrion’s DJ Action Against the Kennedy Trust Over a Remicade Biosimilar Suffers the Same Fate as Sandoz’s DJ Complaint on Etanercept,” December 2014.
  • “Is a Notice Letter Sufficient for Specific Jurisdiction? Mylan Loses that Issue in the ONGLYZA (saxagliptin) Litigation. Is Actavis Next?” November 2014.
  • “Is Cash Required for a Reverse Payment? Several Cases Are Racing to the Appeal,” October 2014.
  • “Pre-Clinical R&D,” ANDA Litigation: Strategies & Tactics for Pharmaceutical Patent Litigators, 2nd ed. ABA Publishing, September 2014.
  • “Citizen Petitions: Strategies and Market Tactics,” ANDA Litigation: Strategies & Tactics for Pharmaceutical Patent Litigators, 2nd ed. ABA Publishing, September 2014.
  • “Ferring Falters at the Federal Circuit on LYSTEDA (tranexamic acid) Due to Advisory Opinions and Post-Trial ANDA Amendments to Evade Infringement,” September 2014.
  • “Is Your Claim In or Out? A Split of Authority Over Declaratory Judgment Claims and Unlisted Patents,” August 2014.
  • “You’ve Been Served! But When? Amneal Beats the IPR Deadline by One Day in its Challenge to Endo’s OPANA ER (oxymorphone),” July 2014.
  • “One Patent Survives Watson’s Motion to Dismiss in the LYSTEDA (tranexamic acid) Litigation; Will Ferring Ever Collect its Damages?” July 2014.
  • “Get It In Writing! Mylan Loses Trial But Wins Oral Settlement Against Endo in the FROVA (frovatriptan) Litigation,” June 2014.
  • “Safe (Harbor) No More—How Octane Fitness Burned Classen, Scorching It with an Exceptional Case Finding,” May 22, 2014.
  • “Product-Liability Plaintiffs Get a Present on Preemption—District Court Finds an Exception to the Bartlett Decision,” May 2014.
  • “What’s Your Damage (Heather)? Federal Circuit Affirms Damages for Sanofi/Abbott and Against Glenmark Regarding the At-Risk Launch of Generic TARKA (trandolapril + verapamil),” April 2014.
  • “Reverse Payment Remand; Refund Coming? District Court in Georgia Says No to Par, Paddock, and Solvay’s Motion to Dismiss the ANDROGEL Case Post FTC v. Actavis,”April 2014.
  • “Barr Wins Appeal Against Alcon Over TRAVATAN Z (travopost), Obtaining Affirmance on Non-infringement; Alcon’s Consolation is a Reversal on Invalidity,” April 2014.
  • “Mesalamine Mistake – the Federal Circuit Reverses on Claim Construction. Does Zydus Face Forfeiture?,” March 2014.
  • “Invalid Patent? No Problem! The Reissue Route Can Fix Anything as Teva Tries on COPAXONE (glatiramer acetate),” March 2014.
  • “Clean Up On Aisle Seven! Moxifloxacin Mess is No More with Trial, Appeal, and Inter Partes Review Dismissed,” February 2014.
  • “Zydus’s Heartburn Ends as its P-IV Challenge to Takeda’s PREVACID SOLUTAB (lansoprazole), Winning the Appeal,” February 2014.
  • “Jazz Can’t Put On a Red Light to Stop Roxane’s Equitable Defenses in the XYREM (sodium oxybate) Litigation,” February 2014.
  • “The Safe Harbor Continues to Confuse – Will the Federal Circuit Finally Be Our Lighthouse? Trial Court Dismisses Classen’s Latest Case,” January 2014.
  • “Tolmar clears its skin with a win over Galderma on appeal of DIFFERIN GEL (adapalene) 0.3%. Are all incremental patents to be cleansed next?” December 2013.
  • “Astra Zeneca Breathes Life into its PULMICORT RESPULES (budesonide) Patent, Overturning the Claim Construction on Appeal,” October 2013.
  • “Inherent Anticipation and the Polymorph Paradox–A Look at the 4 Oct. 2013 trial decision in SUSTIVA (efavirenz),” October 2013.
  • “Strategic Considerations Under the Biologics Price Competition & Innovation Act,” Expert Opinion on Therapeutic Patents, Vol. 23, No. 8, pp. 925-928, August 2013.
  • “The AVODART (dutasteride) Trial is not a Disasteride for GSK, Winning Several Challenges to its Compound Patent,” August 2013.
  • “Supreme Court: Reverse Payment Settlements Subject to Antitrust Scrutiny,” Pharmaceutical Commerce, August 2013.
  • “Are Validation Batches Exempt Under Hatch-Waxman’s Safe Harbor, or Are They a Commercial Infringement?” August 2013.
  • “IP: Obamacare’s Constitutional Impact on Patents,” Inside Counsel, April 2013.
  • “Five Practice Tips from the Recent Rambus Rulings,” Inside Counsel, February 2013.
  • “Analysis of Use Codes in ANDA Litigation in view of Caraco Pharma v. Novo Nordisk,” 2012 Chicago Kent Supreme Court IP Review, Chicago, Sept. 2012.
  • “Health-Care Reform Creates Large Dollar Biosimilar Drug Market,” Chicago Daily Law Bulletin, November 2012.