Patent vs. Antitrust Law in the 21st Century


The presenters in this course take a look at the Federal Trade Commission's focus on preventing what the Commission terms "pay-for-delay" settlements of drug patent litigations. In a lively discussion the presenters address the DOJ's investigations of the sale of Nortel's patent portfolio and other large technology patent deals; what forms of "tying" constitute valid antitrust defenses to patent enforcement after the Federal Circuit's en-banc Princo decision; and what is the effect of the Therasense decision on Walker Process claims. 

I. The Battle Between Patent and Antitrust Law
    A. Introductions
    B. Oversight by the Justice Department
        1. Patent-Centric Acquisitions
        2. Justice Department's Concerns
        3. Justice Department's Conclusions
    C. Walker Process Claims After Therasense
        1. Antitrust Background
        2. What Exactly Is the Standard?
        3. What Actually Is Insider Trading?
        4. The Effect of Therasense on Antitrust Claims
        5. Additional Questions and Concerns
    D. Patent Misuse in Tying Cases: Princo and Beyond
        1. Overview of Tie-ins
        2. Packaged Licenses
        3. The Princo Case
        4. After Princo: What Happens Now?
    E. Group Discussion
    F. Economic Perspective of Pay-For-Delay
        1. Economic Statistical View
        2. Incentive to Settle
        3. Settlements: Pro-Competitive or Anti-Competitive?
        4. Terms of Settlement
    G. FTC Perspective of Pay-For-Delay
        1. A Few Caveats
        2. Courts and the Rule of Law
        3. Implications of Economic Incentives and the Rule
        4. Where Does the FTC Stand Now? 
    H. The Conflict Between Antitrust and Patent Laws
        1. What's in a Name?: Pay-For-Delay
        2. Effects of Hatch-Waxman
        3. Benefits of Settling to Patent Holders
        4. Benefits of Settling to Generics
        5. FTC vs. Watson
        6. A Gamble to Go to Court

Content Provided


The Association of the Bar of the City of New York

The years following the Civil War were tumultuous ones for New York City, offering many opportunities to the dishonest. Unsavory politicians and errant members of the bench and bar were among those who took advantage of those troubled times. In December 1869, a letter was circulated among some of the city’s lawyers addressing those improprieties. It called for the creation of a new bar association to “sustain the profession in its proper position in the community, and thereby enable it ... to promote the interests of the public ....” More than 200 lawyers responded by signing a declaration of organization and in 1870 The Association of the Bar of the City of New York was born. The young organization quickly made its presence felt. Among its first activities was a campaign to defeat corrupt politicians and judges at the polls and to establish standards of conduct for those in the legal profession.

The association continues to work at political, legal and social reform, and maintaining high ethical standards for the legal profession. The association also continues to implement innovative means by which the disadvantaged may be helped. Much of this work is accomplished through the Association's more than 160 committees, each charged to consider a specific area of law or the profession.

The association has grown to more than 23,000 members. To serve them, the association strives to move ahead in many areas. The library is the largest member-funded law library in the country, and provides members with a “gateway” to online services, including free use of LexisNexis and WestLaw, while continuing to provide more traditional library services. The Small Law Firm Center, Career Management Program and other benefits are constantly evolving to serve members’ needs. More than 150 continuing legal education programs are presented annually.

The public good remains one of the association’s highest priorities. The Legal Referral Service, jointly sponsored by the association and the New York County Lawyers’ Association, provides an array of services directly aimed at serving the needs of the public. The City Bar Justice Center identifies the most pressing legal concerns of New York’s neediest and uses novel approaches to address them, often involving community participation.

Speakers / Authors:

Photo of Michael B. Kades

Michael B. Kades
Federal Trade Commission

Michael B. Kades is currently the Deputy Chief Trial Counsel for the Bureau of Competition where he takes a leading role in competition matters currently or anticipated to be in litigation. Between August 2006 and February 2012, he served as an attorney advisor for Chairman Jon Leibowitz. He advised the Chairman on health care competition issues (among others), with a particular focus on pharmaceutical antitrust matters. As an advisor to the Chairman, he played a leading role in the Commission’s efforts to stop pay-for-delay patent settlements including coordinating the Commission’s efforts to seek a legislative solution, drafting the Commission’s testimony on pay-for-delay agreements, and contributing to several reports on pharmaceutical patent settlements.

Prior to working for Chairman Leibowitz, Mr. Kades worked as an attorney in the Commission’s Health Care Division. During that time, he was involved in the investigation and litigation of some of the Commission’s most significant cases in the pharmaceutical industry. In the FTC’s administrative litigation challenging Schering-Plough’s K-Dur patent settlements, Mr. Kades successfully argued the appeal of the administrative law judge’s decision before the full Commission. Mr. Kades was the lead attorney in FTC v. Perrigo Co. and Alpharma, Inc., in which the defendants agreed to pay over $6 million to settle charges that they had allocated the market for the sale of over-the-counter store brand liquid ibuprofen. Mr. Kades also served as second chair in FTC v. Mylan Laboratories, in which Mylan agreed to pay $100 million to settle charges that it had cornered the raw material supply for two important pharmaceutical products. In 2002, Mr. Kades received the FTC’s Paul Rand Dixon Award for his contributions to the Commission’s antitrust enforcement program in the pharmaceutical industry.

Mr. Kades clerked for the Honorable John W. Reynolds in the United States District Court for the Eastern District of Wisconsin and received his J.D. cum laude from the University of Wisconsin Law School in 1995 and he graduated magna cum laude with distinction in his major from Yale University in 1991.

Photo of James R. Klaiber

James R. Klaiber
Pryor Cashman LLP

James Klaiber is a Partner in Pryor Cashman’s Intellectual Property Group. He is experienced in all aspects of patent law including transactions, litigation and client counseling. His experience is concentrated in electrical and mechanical technologies with particular emphasis on telecommunications, high technology, e-commerce, electronic banking, and health care. Jim represents a wide range of clients, from startups to multinationals, and has held a lead role in many large patent litigation cases, trials, and IP-related transactions. He has litigated a variety of patent cases before the U.S. District Courts, the International Trade Commission and the U.S. Court of Appeals for the Federal Circuit, including cases including cases involving: wireless and optical fiber telecommunications; electronic securities exchanges and financial transaction software; semiconductor design and manufacture; medical electrodes and prosthetic devices; and plasma screen and cathode ray tube displays.

Recently, Mr. Klaiber was sole Intellectual Property counsel for the bondholders in the Nortel bankruptcy proceedings, which resulted in the largest patent sale in history. Prior to joining Pryor Cashman, he was a member of the Intellectual Property Group at Milbank, Tweed, Hadley & McCloy, which he co-founded. Before that, Jim gained extensive research and development experience as a member of the Technical Staff at Bell Laboratories’ Murray Hill and Whippany labs. He was the principal investigator for numerous high-technology telecommunications projects involving fiber optic undersea transmission media and other technologies. 

Mr. Klaiber earned his J.D. from Fordham University School of Law in 1996, his M.E. from the University of California, Berkeley in 1989. his M.S. from the University of Michigan in 1987, and his B.S. from MIT in 1986.

Photo of James B. Kobak, Jr.

James B. Kobak, Jr.
Hughes Hubbard & Reed LLP

James B. Kobak, Jr. is a partner at Hughes Hubbard & Reed LLP where he chairs the firm’s Antitrust Practice Group as well as its Practice Standards and Ethics Committee. Mr. Kobak currently serves as lead counsel to the SIPA Trustee for the liquidations of Lehman Brothers Inc. and MF Global, Inc. Mr. Kobak has served as counsel in a number of previous SIPA liquidations over the course of 30 years as well as being active in all aspects of antitrust, a wide variety of commercial litigations and in arbitrations and mediations both as advocate and neutral.

He serves on the American Arbitration Association’s panel of arbitrators, as well as the mediation and arbitration panels of the United States District Court for the Southern and Eastern Districts of New York.

Mr. Kobak has lectured and written widely on antitrust and antitrust-intellectual property issues. He taught seminars on antitrust/intellectual property issues for over a decade at Fordham and the University of Virginia Law Schools and formerly chaired the Intellectual Property Committee of the ABA Antitrust Section. He was editor of the ABA Antitrust Sections’ publication Intellectual Property Misuse: Licensing and Litigation and received the Rossman Memorial Award from the Journal of the Patent and Trademark Society.

Mr. Kobak is listed as a leading antitrust lawyer in Chambers USA, and Euromoney’s Guide to the World’s Leading Competition and Antitrust Lawyers and Super Lawyers. He is a member of the Ethics Institute and Ethics Committee of the New York County Lawyers Association and the Association of Professional Responsibility Lawyers. Mr. Kobak serves as one of two editorial advisors to the New York ethics treatise published by Oxford University Press. He was a founder of NYCLA’s American Inn of Court and is a past President of the NYCLA Foundation. Mr. Kobak was awarded NYCLA’s Boris Kostelanetz President’s Medal in 2006.

Mr. Kobak is admitted to the New York and New Jersey Bars. He is also admitted to practice before the District Courts in New York, New Jersey and the Northern District of California, as well as before the Second, Third and Federal Circuits, and the U.S. Supreme Court.

He received his LL.B., Order of the Coif, from the University of Virginia Law School in 1969, where he was the Associate Editor of the Law Review. He graduated from Harvard University in 1966, magna cum laude, with an A.B. degree.

Photo of Janet B. Linn

Janet B. Linn
Eckert Seamans Cherin & Mellot, LLC

Janet B. Linn is a Member of Eckert Seamans Cherin & Mellott, LLC, concentrating on intellectual property litigation, counseling and opinion work.She covers the full range of intellectual property law, including patent, trade secrets, trademark, unfair competition, copyright, false advertising and related antitrust issues. She has litigated cases in a broad spectrum of technologies, from consumer products, computer programs, and medical devices, to gas turbines and noise cancellation headphones. In addition, Ms. Linn has substantial experience in trademark prosecution and inter partes proceedings, copyright registration and appeals to the Copyright Office.

In the pharmaceutical area, Ms. Linn has litigated and been trial counsel in patent, trade secret and antitrust litigations; advised on patent prosecution, Orange Book listings, and Citizen’s Petitions; performed pre-litigation audits; and provided patent validity and infringement opinions to pharmaceutical companies as well as financial institutions following pharmaceutical patent issues. Ms. Linn has particular expertise in pharmaceutical patent litigation under the Hatch-Waxman Amendments, and the interplay between FDA and patent law, having litigated some of the earliest Hatch-Waxman cases.

Ms. Linn is admitted to practice in New York and before the U.S. District Court for the Southern and Eastern Districts of New York as well as the U.S. Court of Appeals for the Federal Circuit.

Ms. Linn received her LL.M. in Trade Regulation from the New York University School of Law in 1983, her J.D., magna cum laude, from State University of New York at Buffalo Law School in 1977, her M.A. in 1974 from the University of Wisconsin, and her B.A. from State University of New York in 1972.

Photo of Joseph M. Manak

Joseph M. Manak
Porzio Bromberg & Newman PC

Joseph M. Manak is Counsel to Porzio Bromberg & Newman P.C. and is a member of the firm’s patent and intellectual property group. Mr. Manak is an intellectual property and patent attorney, litigator, and trial lawyer who concentrates in patent and IP litigation and prosecution, as well as trade secret, trademark, unfair competition, and antitrust litigation.

Mr. Manak focuses his practice in biotechnology, pharmaceutical, chemical, software and electronics patent prosecution and litigation. He also specializes in patent interference practice and appeals practice before the U.S. PTO. Mr. Manak has represented some of the largest life sciences companies and universities in patent matters, including patent infringement actions, Hatch-Waxman patent challenges, and patent interferences. He has litigated patent and IP cases concerning recombinant DNA technology, polymerase chain reaction, organic chemistry, drug delivery systems, electrical devices, drug metabolism, Internet and software, high-strength fibers, aerospace and defense, medical devices, contact lenses and food science.

Mr. Manak also practices trademark, trade dress, copyright and related antitrust and unfair competition law, and he has experience in securities, commercial and insurance litigation and arbitration.

On the transactional side, Mr. Manak conducts IP-related M&A due diligence, and negotiates and drafts a variety of pharmaceutical, biotechnology and software-based licenses and software development agreements, patent and know-how agreements, research and development and collaboration agreements, distribution contracts and other agreements related to patents and intellectual property.

Mr. Manak is admitted to practice in New York State and before the U.S. District Court for the Southern, Eastern and Western Districts of New York, as well as before the U.S. Court of Appeals for the Federal Circuit and the U.S. Patent and Trademark Office.

He received his J.D., cum laude, from New York Law School in 1986 and his B.S. from Manhattan College in 1983.

Photo of Steven J. Moore

Steven J. Moore
Kelley Drye & Warren LLP

Steven Moore is a partner in the Stamford office of Kelley Drye & Warren LLP. He focuses his practice on intellectual property litigation, including patent, trademark, and copyright; patent and trademark preparation and prosecution; intellectual property counseling and due diligence; and the rendering of intellectual property opinions.

Mr. Moore concentrates in chemistry, biotechnology and pharmaceutical patent law. He has particular experience in the chemical and biochemical arena, having represented numerous major chemical, pharmaceutical and biotechnology companies, and research universities.

He is admitted to practice in California, Connecticut and New York and before the U.S. District Court for the Southern and Eastern Districts of New York, the U.S. District Court of Connecticut, as well as the U.S. Court of Appeals for the Federal Circuit.

Mr. Moore received his J.D., magna cum laude, from the University of Connecticut School of Law in 1989, a Ph.D., magna cum laude, from the University of Mississippi Medical Center in 1986, and his B.S., cum laude, from the University of Connecticut in 1981.

Photo of Evan Hoffman Schouten

Evan Hoffman Schouten
Analysis Group, Inc.

Evan Hoffman Schouten is a Vice President at Analysis Group, Inc. With more than 20 years of consulting and expert witness experience, Ms. Hoffman Schouten specializes in the areas of industrial organization, antitrust economics, and labor economics. She has led consulting teams, designed and conducted economic analyses in large litigation matters in the U.S. and abroad involving antitrust, intellectual property, mergers and acquisitions, damages, product liability, and employment discrimination for a wide range of industries, including sports and entertainment, media, health care, pharmaceuticals and biotechnology, software and high technology, consumer products, and chemicals. She has managed the economic analysis for many high profile litigation matters, including cases involving potential damages of hundreds of millions to billions of dollars.

Ms. Hoffman Schouten has met with staff from the Senate Subcommittee on Antitrust, Competition Policy and Consumer Rights, submitted white papers to federal and state agencies, led a group of economists in drafting and submitting an amicus brief to the U.S. Supreme Court, coauthored several articles, chapters in books, and a software package, and taught various economics and finance courses. Prior to joining Analysis Group, Ms. Hoffman Schouten was a Vice President at Charles River Associates.

Ms. Hoffman Schouten received her M.A. in Economics from The University of Chicago and her B.S. in Economics from Wellesley University.

Price (USD)

Standard Rate: $272.00

Course Code : 773155

Length : 2hr 21min
Recorded Date : 6/8/2012

Format Type : eLearning

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