Book

Patent Litigation Strategies Handbook, Fourth Edition With 2017 Cumulative 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.


Meet The Authors

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

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 2017 Cumulative Supplement adds analysis of a number of Supreme Court rulings, among other new discussions:

  • Samsung Electronics Co. v. Apple Inc.: in the case of a multicomponent product, the term “article of manufacture” is broad enough to encompass both a product sold to a consumer as well as a component of that product

  • TC Heartland LLC v. Kraft Foods Grp. Brands LLC: a patent infringement lawsuit against a domestic corporation may be brought only in (1) the state in which that defendant is incorporated or (2) where that defendant has committed acts of infringement and has a regular and established place of business; the Court declined to address any implication its ruling might have on venue in patent cases filed against foreign defendants

  • Sandoz, Inc. v. Amgen, Inc.: the Court decided the first case construing the Biologics Price Competition and Innovation Act

  • SCA Hygiene Products v. First Quality Baby Products: laches is not a defense against a claim for damages brought within the six-year limitations period of Section 286 of the Patent Act

  • Impression Products, Inc. v. Lexmark Intern., Inc.: the sale of a patented item domestically or abroad exhausts the patent rights as to those items, regardless of any contractual restrictions on purchasers, but the Court distinguished the effect of such restrictions on licensees, which would not exhaust the patentee’s patent rights, at least until a sale to the end purchaser

  • Kindred Nursing Ctrs. Ltd. P’ship v. Clark: a court may invalidate an arbitration agreement based on “generally applicable contract defenses” like fraud or unconscionability, but not on legal rules that “apply only to arbitration or that derive their meaning from the fact that an agreement to arbitrate is at issue”

 

Authors

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.

Contents

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