Filko Prugo

Partner

Chair, Life Sciences IP Litigation

Filko Prugo

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  • JD, Osgoode Hall Law School, 1998
  • MS (Biotechnology), Johns Hopkins University, 2017
  • BS (Chemistry), ​first class, York University, 1996

Qualifications

  • New York, 2003
  • Ontario, 2000
  • U.S. Patent and Trademark Office, 2014

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • Intellectual Property Owners Association, Pharma & Biotech Committee
  • Federal Circuit Bar Association
  • Managing IP – “IP Star” (2018)
  • Legal 500 (2018) 
  • Law Business Research, Ltd.,Who’s Who Legal: Patents: Leading Practitioner” (2016-2018)
  • LMG Life Sciences, “Life Science Star” (2015-2017)

Filko Prugo

Partner

Chair, Life Sciences IP Litigation

Filko, M.S., J.D. is a first-chair litigator and USPTO-registered patent attorney. Over the past 20 years, Filko has been extensively involved in all aspects of contested patent matters, bolstered by his solid foundation in chemistry and biotechnology. He is one of only a handful of attorneys who has argued before the PTAB in IPR trial proceedings, tried federal district court Hatch-Waxman cases, and argued before the Federal Circuit. 

His experience spans a broad range of technologies including pharmaceuticals and biologics for the treatment of cancer, immunological disorders and cardiovascular disease, as well as drug delivery systems and research tools.

Filko is a frequent speaker on developments in patent law, specifically as they concern Hatch-Waxman and BPCIA matters. He has been repeatedly recognized for his excellence in patent litigation by Legal 500, and as a leading life sciences lawyer by LMG Life Sciences. Clients have noted that “[Filko is] exceptionally bright and has a strong scientific background so [he] can dig in deep with experts.”

Experience

  • Trial and co-lead counsel in numerous inter partes reviews for a leading international pharmaceutical company relating to a treatment for breast cancer.*
  • Co-lead counsel in an inter partes review with a corresponding ANDA litigation for a leading biopharmaceutical company.*
  • Lead counsel in an inter partes review for a leading biopharmaceutical company relating to the first patent challenges concerning marketed biologics.*
  • Lead trial counsel for a leading international biopharmaceutical company in an ANDA litigation relating to transdermal patches used in the treatment of Alzheimer’s disease. A four-day bench trial in Delaware resulted in a complete victory for the client, finding two patents infringed and both patents valid.*
  • Lead trial counsel for a leading biopharmaceutical company in an ANDA litigation relating to a vitamin D analog used in the treatment of dialysis patients. Five-day bench trial in Delaware; won on all issues.*
  • Lead trial counsel for a leading biopharmaceutical company in an ANDA litigation relating to a vitamin D analog used in the treatment of dialysis patients. Twelve-day bench trial in the Northern District of Illinois; won on all issues.*
  • Lead trial counsel for a leading biopharmaceutical company in an ANDA litigation involving polymer-based pharmaceuticals; matter settled favorably.*
  • Represented a leading international pharmaceutical company in an inventorship challenge relating to a marketed biologic; won on all issues.*
  • Co-counsel for a leading international pharmaceutical company in an ANDA litigation involving an oral contraceptive.*
  • Represented a leading international biopharmaceutical company in a patent infringement jury trial in Delaware involving an immunosuppressant; favorable jury verdict.*
  • Represented a leading international biopharmaceutical company in an ANDA litigation involving a cancer treatment; settled favorably.*
  • Represented a leading international biopharmaceutical company in an ANDA litigation involving an antifungal medication; settled favorably.*
  • Co-counsel for a leading international pharmaceutical company in a patent case involving a TNF-alpha antibody; case settled favorably.*
  • Represented a leading international pharmaceutical company in an ANDA litigation involving a small polypeptide; case settled favorably.*
  • Represented a leading international biopharmaceutical company in an ANDA litigation involving an Alzheimer’s disease treatment; case settled favorably.*
  • Represented a leading international biopharmaceutical company in a patent infringement action involving an immunosuppressant.*
*Experience prior to joining Ropes & Gray

Publications

Presentations

  • Speaker, “Northeast Corridor: Bio/Pharma at the PTAB,” the Practising Law Institute’s “USPTO Post-Grant Trials 2018: Change & Recalibration” seminar (September 21, 2018) 
  • Speaker, “Bio/Pharma Patent Deals & Dispute Resolution in the PTAB Era,” Ropes & Gray Webinar (May 2, 2018)
  • Speaker, “The Evolving Principles of Venue and Jurisdiction in the Aftermath of TC Heartland,” ACI Paragraph IV Disputes Conference (April 23, 2018) 
  • Speaker, “Avoiding the Ethical Minefield of Biopharmaceutical Patent Litigation and Prosecution,” BIO IP Counsels Committee Conference (November 13, 2017)
  • Speaker, “Artificial Intelligence & Big Data: What to Patent, Whether to Patent,” 45th Annual IPO Meeting, Intellectual Property Owners Association (September 18, 2017)
  • Speaker, “The PTAB Live: Thoughts on Practice, Procedure, IPRs and More in the World of Pharmaceutical Patent Validity Challenges,” Paragraph IV Disputes, American Conference Institute (April 25, 2017)
  • Speaker, “Pre-Conference Workshop: Goliath vs. Goliath Patent Wars,” BIO IP Counsels Committee Conference (November 14, 2016)
  • Speaker, “On Sale Bar in a Hatch-Waxman Setting,” ACI’s Paragraph IV Disputes Conference (April 25, 2016)
  • Speaker, “Hatch-Waxman Litigation,” Professor Paul Gugliuzza’s Patent Litigation Class, Boston University School of Law (April 13, 2016)
  • Speaker, “Briefing and Arguing Cases Before the Federal Circuit,” SIPLA (Student IP Law Association), GW Law School (February 24, 2016)
  • Speaker, “The Evolving Landscape of Biosimilars Litigation in the United States,” BIO IP Counsels Committee Conference (November 16, 2015)
  • Speaker, “Understanding Biosimilars Law to Be Slow, Gradual Process,” Patent, Trademark & Copyright Journal, Bloomberg BNA (November 16, 2015)
  • Speaker, “Pre-Conference Workshop: Biosimilars Strategy Update,” BIO IP Counsels Committee Conference (November 10-12, 2014)
  • Speaker, “Biosimilars War Games—Preparation for Litigation,” BIO IP Counsels Committee Conference (November 6-8, 2013)
  • Speaker, “Advanced Strategies for Drafting and Perfecting Pleadings and Effectively Using Dispositive Motions in Paragraph IV Disputes,” Hatch-Waxman Conference, American Conference Institute (October 3-4, 2013)
  • Speaker, “Producing a Robust Written Description to Satisfy Ever-Shifting Requirements and Ensure Patent Validity,” 14th Advanced Forum on Biotech Patents Conference, American Conference Institute (November 29, 2012)
  • Speaker, “Biosimilars Litigation: Proactive Procedures and Early Considerations,” 3rd Advanced Summit on Biosimilars, American Conference Institute (May 23, 2012)
  • Speaker, “Pre-Suit Diligence Strategies in Anticipation of the Paragraph IV Challenge,” 4th Annual Paragraph IV Disputes: Expert Insight on Hatch-Waxman Litigation Strategies for Brand Names and Generics, American Conference Institute (April 27, 2010)
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