Patent-Related Misconduct Issues in U.S. Litigation

The first section of the book addresses claims involving misuse of the patenting process, with a focus on patents on a product or process the patentee did not invent as claimed and inequitable conduct claims, including intentional failure to cite material references and false or misleading declarations. From here the book turns to claims based on the misuse of the litigation process, including baseless and bad-purpose suits. The third and final section of the book describes claims based on the misuse of the competitive (antitrust) and licensing processes. Each section of the book is divided into sections devoted to law and strategy, with practical guidance related to handling document demands and other discovery requests, expert testimony and waiver issues.

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:

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

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