Patent Litigation Strategies Handbook, Fourth Edition
A complete guide to patent litigation with essential insights for protecting client interests.
This invaluable treatise, now in a Fourth Edition, breaks down strategic reasoning behind every phase of patent infringement litigation while providing practice advice, from prelitigation issues and initial client counseling through post-grant review. The book explores the perspectives and strategies of both patent owners and patent challengers, providing updates on the most recent trends in patent litigation and winning strategies from some of the country’s leading intellectual property attorneys.
The 2018 Cumulative Supplement adds new discussions including the following:
- Discussions of case law in federal courts applying TC Heartland to motions alleging improper venue, defining the scope of “acts of infringement” and “a regular and established place of business”; in In re BigCommerce, Inc., the Federal Circuit clarified that venue is proper “in only one particular judicial district in the state”; and in In re Cray Inc. the Federal Circuit identified three general requirements for a party to have a “regular and established place of business” in a judicial district
- Supreme Court rulings on the PTAB in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, holding that IPR proceedings do not violate Article III of the U.S. Constitution, and in SAS Institute, Inc. v. Iancu rejecting the PTAB’s “partial institution” practice
- A new section explaining the latest in arbitration in PTAB proceedings
- At the intersection of antitrust and patent law and following Actavis, the Third Circuit concluded that the federal district court improperly exercised federal jurisdiction based solely on a counterclaim that turns on federal law in In re Lipitor Antitrust Litig.
- On remand in Amgen Inc. v Sandoz Inc., the Federal Circuit held that BPCIA preempted state law claims under both “field” and “conflict” preemption
- Providing some much-needed guidance, the Federal Circuit in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals Int’l Ltd. held that claims were patent eligible because they “are directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome,” in contrast to the claims in Mayo, which were directed to the natural relationship itself, and USPTO issued guidance adopting the Federal Circuit’s Vanda opinion
- In Amgen v. Sanofi/Regeneron, the Federal Circuit rejected the so-called “newly characterized antigen” test, because permitting patentees to claim antibodies by describing something that is not the invention (the antigen) would effectively dispense with the requirement that a patentee provide a “written description of the invention”; in view of Amgen, the USPTO issued guidance in February 2018 stating that “adequate written description of a newly characterized antigen alone should not be considered adequate written description of a claimed antibody to that newly characterized antigen, even when the preparation of such an antibody is routine and conventional”
- In Krausz Indus. Ltd. v. Smith-Blair, Inc., the Eastern District of North Carolina extended waiver of attorney client privilege and work product to post-litigation communications and work product in light of an allegation of ongoing willful infringement under the theory that neither Halo nor In re Seagate precluded an extended waiver
- New sections in the chapter on document discovery on local patent rule discovery requirements and on potential e-discovery issues created by the new EU GDPR law
- In a state court action involving an allegation of breach of contract in In re Andrew Silver, the Texas Supreme Court recognized that a party was entitled to claim privilege over emails to his patent agent
- In Regeneron Pharms., Inc. v. Merus N.V., the Federal Circuit held that the district court did not abuse its discretion when it sanctioned Regeneron by drawing an adverse inference for widespread discovery misconduct throughout the litigation
- Two Federal Circuit opinions issued on the same day addressed attorney’s fees in exceptional cases –Checkpoint Sys. v. All-Tag Sec. S.A. reversing the lower court’s grant of attorney’s fees, and Rothschild Connected Devices Innovations, LLC v. Guardian Prot. Servs. reversing and remanding the lower court’s denial of attorney’s fees
- New topics in the chapter on Motion Practice on, venue motion practice after TC Heartland and on patentable subject matter motion practice after Alice
- The Federal Circuit held in Berkheimer v. HP Inc. that the question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field under Alice step-two is a question of fact
- On remand, the federal district court in Halo held that Halo was not entitled to recover enhanced damages
- In Shaw Industries Group Inc. v. Automated Creel Systems Inc., the Federal Circuit held that proposed grounds that were not instituted for trial because of redundancy are not subject to estoppel in either the Patent Office or the district courts
- The Federal Circuit clarified in Exmark Man. Co. v. Briggs & Stratton Power Prods. that apportionment of the royalty base is unnecessary when the asserted claim covers the entire infringing product and even when the asserted claim recites both novel and conventional features
- On remand from the Supreme Court, in Apple Inc. v. Samsung Elecs. Co., the federal district court in California set forth a four-factor test for identifying the relevant article of manufacture at the first step of the Section 289 damages inquiry
- Discussion of key PTAB cases in 2017-2018, and there have been quite a few, especially those designated as important
Summary of Contents
Part I. The Opening Moves
Part II. Discovery
Part III. Motion Practice
Part IV. The Trial Presentation
Part V. After the Trial
Table of Cases
Table of Statutes, Regulations, and Rules
About the Editors-in-Chief
William P. Atkins is a partner in the Intellectual Property Section of Pillsbury Winthrop Shaw Pittman LLP, McLean, VA. Mr. Atkins has been lead counsel in more than 125 intellectual property litigations during his 26 years with the firm.
Deborah E. Fishman is a partner in the Intellectual Property Group of Arnold & Porter Kaye Scholer LLP, Palo Alto, CA.
Gary M. Hoffman is senior counsel in the Intellectual Property Group of Pillsbury Winthrop Shaw Pittman LLP, McLean, VA.
Chapter authors are members of the ABA Section of Intellectual Property Law.