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Patent Litigation Strategies Handbook, Fourth Edition, with 2016 Cumulative Supplement

Published by Bloomberg BNA
By Barry L. Grossman, Gary M. Hoffman, Editors-in-Chief, ABA Section of Intellectual Property Law
Publication Date: 2016
2,491 pages

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Price: $605 + S&H
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Patent Litigation Strategies HandbookGet the knowledge, insights, and strategies you need to win cases, from many of the most experienced patent litigators in the country.

Expert litigators provide practical, winning answers to questions such as “Why sue in the first place?”; “Should you consider ADR instead?”; “What are your burdens of proof?”; “What types of damages should you seek?”; and more. You’ll also find analysis and strategic reasoning behind every phase of patent infringement litigation, from initial client counseling through the filing of the Notice of Appeal.

This Fourth Edition of Patent Litigation Strategies Handbook also provides updates on the most recent trends in patent litigation and winning strategies from some of the country’s leading attorneys, from both a patent owner’s and a challenger’s perspective.

The 2016 Supplement adds the following new material:

  • Review of the Supreme Court’s Cuozzo decision, which held that the USPTO can apply the broadest reasonable interpretation standard to claims during inter partes review
  • Review of the Supreme Court’s decision in Halo Electronics abrogating Seagate’s two-part test for willfulness and  changing the standard and burden of proof for enhanced damages.
  • Review of Federal Circuit’s decision in Acorda Therapeutics v. Mylan Pharmaceuticals, Inc., which held that specific jurisdiction exists over an ANDA applicant in any state in which it plans to market its proposed drugs.
  • Review of May 2016 USPTO Update on Subject Matter Eligibility in life sciences.
  • Analysis of In re POSCO, in which the Federal Circuit held that district courts should consider 28 U.S.C. §1782 and Intel Corp. v. Advanced Micro Devices, Inc.when determining whether to allow disclosure of confidential protected information to a foreign court, in addition to relevant circuit court precedent. 
  • Update on pleading claims of direct patent infringement since December 1, 2015 with the the abrogation of Form 18.
  • Analysis of In re Queen’s University, a case of first impression, in which the Federal Circuit held that communications between a patentee and non-attorney patent agent regarding patent prosecution are privileged; finding patent agent privilege to be necessary due to the “unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing and independent patent-agent privilege.”
  • The Judge’s Perspective chapter adds a new section on enhanced damages after Halo and a new topic discussing motions to stay pending USPTO review.
  • In Lexmark International v Impressions Products, Inc., the Federal Circuit held that sale of a patented article made by the patent owner under a clearly communicated, otherwise-lawful restriction against post-sale use or resale does not exhaust the patent owner’s rights with respect to those restrictions and therefore a patent owners’ potential loss of U.S. patent rights based on a foreign sale remains a matter of express or implied license.  
  • Analysis concluding that even if expert testimony survives scrutiny before or during trial, it can still be attacked successfully in post-trial motions, as in the Federal Circuit’s decision in Rembrandt Vision Techs., L.P. v. Johnson & Johnson Vision Care, Inc.
  • A completely updated section on the Federal Circuit’s new rules on electronic case filing, effective April 1, 2016.

About the Publisher

Technology Transfer Tactics is proud to partner with Bloomberg BNA Books to bring our customers access to this comprehensive and authoritative resource. All Bloomberg BNA Books are written by respected experts with extensive experience in patent law and IP licensing. These renowned authors draw from their wealth of professional expertise and in-depth research to deliver the most highly regarded editorial quality in the industry.

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