Patent Related Misconduct Issues in U.S. Litigation 2016th Edition

Patent Related Misconduct Issues in U.S. Litigation, by Joel Davidow and James Toupin is designed to serve as the first comprehensive review of conduct defenses and counterclaims, with a focus on existing case law and litigation strategies.

The Second Edition added a co-author, James Toupin, former general counsel of the U.S. Patent and Trademark Office, and covered major developments in the field since 2008, including the Leahy-Smith America Invents Act, the adoption of a but-for test for inequitable conduct, and antitrust decisions relating to patent-pool abuse and pay-for-delay arrangements.

This book is designed to provide patent litigators with a double arsenal of unprecedented case-law analysis and litigation strategy related to the “wild cards” of infringement cases: affirmative defenses and counterclaims based on assertions of patent-holder misconduct. Such claims can include:

• inequitable conduct, including intentional failure to cite material references and false or misleading declarations
• misuse of the litigation process, including baseless and bad-purpose suits
• claims that an opposing party knew or should have known that the patent was invalid or not infringed
• antitrust law violations
• tortuous interference
• defamation
• RICO allegations

In addition, each chapter of the book has a section devoted to litigation strategy related to a particular claim, with practical guidance on a range of issues including:

• document demands and party depositions used to show that putative inventor had access to another’s similar invention
• deposition tactics to establish what the inventor or patent holder knew and when they knew it, along with indications of intent.
• the use of expert testimony to establish materiality or intent
• summary judgment and motion practice
• the use of expert testimony to prove claims of market definition and market power
• third-party discovery to prove what persons skilled in the art understood or how the market functions
• waiver of privilege issues
• the use of discovery to establish the existence of past licenses and negotiations
• post-verdict Rule 11 claims or recovery under 35 USC § 285

Features

• Written by knowledgeable intellectual property lawyers with extensive antitrust, patent, and trade litigation experience in both the private and public sectors
• The first book of its kind to provide a comprehensive review of misconduct claims and defenses, with reference to existing case law and litigation strategies
• Unique multifaceted approach that combines practical advice for litigators with critical analysis of older doctrines

Praise for the First Edition

“Davidow’s treatment of inequitable conduct covers the basic elements of intent and materiality but also conveniently organizes the analysis according to both the underlying invalidity issues (e.g., best mode, prior sales) and the types of misconduct encountered (e.g., false statements, suppression of documents, and the like) …. This is indeed a useful work.”James H. Wallace, Partner, Wiley Rein LLP

This eBook features links to Lexis Advance for further legal research options.