Schwartz’s Patent Law and Practice, Eighth Edition


Schwartz’s Patent Law and Practice provides a well-organized and concise primer on how federal courts deal with patent case law and legislation. Originally written to educate judges on patent law issues, it provides readers with context for important patent law issues by reviewing Supreme Court decisions and leading Federal Circuit opinions, as well as legislation, including the Leahy-Smith America Invents Act. Practitioners can use this resource to cite cases and sources, direct judges to key cases and explanations, and understand procedural issues facing the court.


Patent Law and Practice was first published by the Federal Judicial Center in 1988 as a one-volume introduction to patent law for federal judges. Since that time, judges and their law clerks have come to rely on this reference for up-to-date information on patent law as it has evolved in response to the courts, Congress, and changes in practice at the Patent and Trademark Office (PTO). Patent Law and Practice has been cited by courts more than 100 times since its initial publication, most notably in the Supreme Court decision Markman v. Westview Instruments.

The all-new Eighth Edition summarizes and analyzes the most recent developments in the law, including the sweeping changes resulting from the Supreme Court and Federal Circuit decisions that have: 

  • redefined the concepts of patent-eligible subject matter, paving the way for new validity challenges to patents covering software and business methods, as well as those for diagnostic methods and other biotechnology inventions (the Mayo/Myriad/Alice trilogy and the Federal Circuit and District Court decisions that have implemented the new Supreme Court analysis);
  • redefined the standards for resolving challenges to claim indefiniteness and appeals of District Court claim construction decisions (Nautilus v. Biosig Instruments and Teva v. Sandoz);
  • redefined the concept of the “exceptional case” for which a successful litigant may recover its attorney fees (the Octane Fitness and Highmark decisions); and
  • further changed the law of remedies, including the required proofs to obtain injunctive relief and to claim damages, both generally and in the context of “standards essential patents” (the “cellphone war” cases, including Apple v. Samsung, Apple v. Motorola, Microsoft v. Motorola, and Ericsson v. D-Link Systems).

The Eighth Edition also analyzes the interplay between District Court litigation, which is the focus of this book, and the new procedures for post-grant challenges implemented by the PTO since enactment of the Leahy-Smith America Invents Act in 2011. It covers these decisions as well as the Federal Circuit’s continued evolution of the law relating to claim construction, invalidity for anticipation and obviousness, indirect and “divided” infringement, and equitable defenses, including patent misuse and laches.

Practitioners will use the latest edition of Schwartz’s Patent Law and Practice to:

  • Cite the leading cases and the most thoughtful analyses applying those leading authorities;
  • Direct the judge to a specific page in the guide—for a key case or explanation; and
  • Understand, and specifically address, procedural issues facing the court.

Herbert F. Schwartz, who originated this book, passed away in 2014.  To honor his contributions to earlier editions and to the field of patent law generally, the book has been renamed Schwartz’s Patent Law and Practice 


Robert J. Goldman (retired) was a partner at Ropes & Gray in Silicon Valley and a colleague and friend of Mr. Schwartz’s, who co-authored the Sixth and Seventh Editions. Robert (Bob) Goldman was a trial lawyer for 38 years, beginning at the IP boutique Fish & Neave, where he first began to work with Mr. Schwartz on Polaroid Corporation’s landmark patent litigation with Eastman Kodak. That case, which spanned the late 1970s and the entire 1980s, resulted in the entry of a permanent injunction against Kodak’s product and a damages award of over $900 million. In the decades that followed, Bob tried patent, copyright, and trade secret cases in technologies ranging from postage meters and medical devices to computer hardware and software, pharmaceuticals, and genetically engineered mice for drug development. He joined Ropes & Gray in 2005.

Published:  2015

ISBN:  978-1-61746-755-4

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