Patent Litigation Strategies Handbook, Fourth Edition With 2016 Supplement

This comprehensive handbook gives practitioners insights on patent litigation from prelitigation considerations through post-grant patent practice. At every stage, the authors include specific, proven tactics for protecting clients’ interests. Experienced practitioners discuss and analyze the strategic reasoning behind every phase of patent infringement litigation, from initial client counseling through the Notice of Appeal.

William P. Atkins
Deborah E. Fishman
Gary M. Hoffman
Editor-in-Chief Emeritus


This invaluable treatise, in 35 chapters, breaks down strategic reasoning behind every phase of patent infringement litigation, from prelitigation issues and initial client counseling through the filing of the Notice of Appeal. 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 attorneys.   

The Fourth Edition includes:

  • A new chapter devoted to biosimilars and biosimilar patent litigation, which considers the rapidly-evolving case law regarding litigation under the Biologics Price Competition and Innovation Act (BCPIA) of 2009
  • An expanded chapter on biotechnology patent litigation
  • A revamped chapter on Hatch-Waxman litigation from the perspective of pioneer pharmaceutical companies
  • A thoroughly revised chapter on practice before the Patent Trials and Appeals Board (PTAB) and practical recommendations on the use of PTAB proceedings ad an adjunct or alternative to patent infringement litigation
  • Updates reflecting the new changes to the Federal Rules of Civil Procedure effective on December 1, 2015 and the impact that those changes will have on practice 
  • Significant changes to the Judge’s Viewpoint chapter to provide an interesting perspective on these new developments
  • And much more 

Supplement Information

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.


Bloomberg BNA authors and editors are practicing professionals with insider perspectives and real-life experience. Learn more about this book’s authors and editors.
ABA Section of Intellectual Property Law
William P. Atkins  is a partner in the Intellectual Property Group of Pillsbury Winthrop Shaw Pittman LLP, Tysons Corner, VA.

Deborah E. Fishman  is a partner in the Intellectual Property Practice Group of Kaye Scholer, LLP, Palo Alto, CA.

Gary M. Hoffman is a senior counsel in the Intellectual Property Group of Pillsbury Winthrop Shaw Pittman LLP, Washington, DC.


View full tables of contents, preface or about the Editors-in-Chief.