Overview

Patent-Related Misconduct Issues in U.S. Litigation provides a comprehensive review of conduct defenses and counterclaims, with a focus on existing case law and litigation strategies. This second edition adds a new co-author, James Toupin, former general counsel of the U.S. Patent and Trademark Office. It adds, or accounts for the major developments in the field since 2008, including the new Leahy-Smith America Invents Act, the adoption of a but-for test for inequitable conduct, and new antitrust decisions relating to patent-pool abuse and pay-for-delay arrangements. Together, Davidow and Toupin offer patent litigators 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. 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. The second section covers claims based on the misuse of the litigation process, including baseless and bad-purpose suits. The third section describes claims based on the misuse of competitive (antitrust) and licensing processes. Each section of the book is filled with practical guidance related to handling document demands and other discovery requests, expert testimony and waiver issues. Types of claims covered in the book include the following: - inequitable conduct, including intentional failure to cite material references and false or misleading declarations - misuse of the litigation process, including baseless and bad-purpose suits - claims that an opposing party knew or should have known that the patent was invalid or not infringed - antitrust law violations - tortuous interference - defamation - RICO allegations The authors offer guidance on the following topics: - document demands and party depositions used to show that putative inventor had access to another's similar invention - deposition tactics to establish what the inventor or patent holder knew and when they knew it, along with indications of intent. - the use of expert testimony to establish materiality or intent - summary judgment and motion practice - the use of expert testimony to prove claims of market definition and market power - third-party discovery to prove what persons skilled in the art understood or how the market functions - waiver of privilege issues - the use of discovery to establish the existence of past licenses and negotiations - post-verdict Rule 11 claims or recovery under 35 USC 285

Full Product Details

Author:   Joel Davidow ,  James Toupin
Publisher:   Oxford University Press Inc
Imprint:   Oxford University Press Inc
Edition:   2nd Revised edition
ISBN:  

9780199797158

ISBN 10:   0199797153
Pages:   256
Publication Date:   25 July 2013
Audience:   Professional and scholarly ,  Professional & Vocational
Format:   Paperback
Publisher's Status:   Active
Availability:   In Print  
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Table of Contents

INTRODUCTION ; PART I: PATENT PROSECUTION MISCONDUCT ; CHAPTER 1: IMPROPER CONDUCT AS TO INVENTION ; A. OBTAINING A PATENT ON A PRODUCT OR PROCESS THE ; PATENTEE KNOWS HE DID NOT INVENT ; B. INACCURATE OR INCOMPLETE DISCLOSURE OF INVENTORSHIP ; C. FAILURE TO DISCLOSE SALES OR OFF ERS TO SELL THAT ; OCCURRED MORE THAN ONE YEAR BEFORE PATENT APPLICATION ; CHAPTER 2: INADEQUATE DISCLOSURE (OF THE INVENTION, HOW TO ; PRACTICE IT, OR HOW TO PRACTICE IT OPTIMALLY) ; A. LACK OF DESCRIPTION ; B. LACK OF ENABLEMENT ; C. FAILURE TO DISCLOSE (OR CONCEALMENT OF ) THE BEST MODE ; FOR ACHIEVING THE INVENTION ; CHAPTER 3: INEQUITABLE CONDUCT IN OBTAINING THE PATENT ; A. FAILURE TO MEET DUTY TO DISCLOSE TO THE PTO ; B. BALANCING TEST RE: MATERIALITY AND INTENT ; C. FALSE STATEMENTS ; D. INFECTION OF RELATED PATENTS ; E. PROSECUTION LACHES ; F. FALSE STATEMENTS TO PTO BY A THIRD PARTY ; CHAPTER 4: RELEVANT PROCEDURAL ISSUES ; A. ATTORNEY-CLIENT PRIVILEGE ; B. INVENTORSHIP IS A TRIABLE ISSUE OF FACT BUT CORRECTION IS POSSIBLE ; C. SUMMARY JUDGMENT IS SOMETIMES FEASIBLE ; D. INEQUITABLE CONDUCT IS AN ISSUE FOR THE JUDGE, SITTING ; AS AN EQUITY COURT, BUT THE JURY MAY BE ASSIGNED ; AN ADVISORY ROLE ; E. JURY TRIAL IS REQUIRED FOR OVERLAPPING EQUITABLE AND ; NON-EQUITABLE ISSUES ; CHAPTER 5: STRATEGIES IN LITIGATING PTO CONDUCT DEFENSES ; A. STRATEGIES REGARDING INVENTOR EVIDENCE ; B. BEST MODE DISCOVERY ; C. PROVING OR DISPROVING CONCEALMENT OF BEST MODE ; D. INEQUITABLE CONDUCT DISCOVERY ; E. PLEADING INEQUITABLE CONDUCT: RULE 9(B) ; F. SUMMARY JUDGMENT ; PART II: PATENT LITIGATION MISCONDUCT ; CHAPTER 6: TYPES OF LITIGATION ABUSE ; A. DELAY OR UNCONSCIONABILITY IN SUING: LACHES AND ESTOPPEL ; B. RECKLESS CASES OR RECKLESS PLEADINGS: RULE 11 ; AND ITS REQUIREMENTS ; C. DISCOVERY MISCONDUCT OR RECALCITRANCE: RULE 37 SANCTIONS ; D. EGREGIOUS LITIGATION CONDUCT IN A LOSING CASE: 35 U.S.C. 285 ; E. ASSESSMENT OF FEES AGAINST ATTORNEYS WHO CAUSE EXCESS COSTS ; AND FEES TO THE OPPOSING SIDE: 28 U.S.C. 1927 ; F. THREATS BY PATENT HOLDERS: APPROPRIATE SCOPE OF RIGHTS ; CHAPTER 7: PROCEDURAL ISSUES IN RAISING LITIGATION MISCONDUCT ISSUES ; A. LACHES OR ESTOPPEL CAN BE LITIGATED AT THE OUTSET ; B. SECTION 285 AWARD'S BURDEN OF PROOF ; C. THE RELATIONSHIP BETWEEN RULE 37 AND SECTION 285 ; D. COMPENSABLE ITEMS ; CHAPTER 8: LITIGATION STRATEGIES ; A. FILING RULE 11 MOTION PROMPTLY ; B. DISCOVERY OF PLAINTIFF TO PROBE BASIS FOR THE CASE ; PART III: PATENT MISUSE AND ANTITRUST MISCONDUCT ; CHAPTER 9: MISUSE DEFENSES-SUBSTANTIVE STANDARDS ; A. HISTORY OF THE MISUSE DEFENSE ; B. CLAUSES LEADING TO MISUSE CONTENTIONS ; C. CLAUSES THAT WILL SELDOM ENGENDER MISUSE ; OR ANTITRUST CONCLUSIONS ; D. HORIZONTAL ANTITRUST OFF ENSES AND MISUSE DEFENSES ; E. RELEVANCE OF THE ANTITRUST GUIDELINES ; CHAPTER 10: ANTITRUST COUNTERCLAIMS ; A. PATENTEE'S CARTEL CONDUCT ; B. PATENTEE'S SINGLE FIRM ABUSES (ATTEMPT TO MONOPOLIZE ; OR MONOPOLY MAINTENANCE) ; C. ABUSE OF THE STANDARD-MAKING PROCESS ; D. ANTITRUST CLAIMS AGAINST ACCUSED OR POTENTIAL INFRINGERS ; E. RICO CLAIMS OR COUNTERCLAIMS ; CHAPTER 11: PROCEDURAL ISSUES IN LITIGATION OF PATENT ANTITRUST ISSUES ; A. STANDING ; B. COMPULSORY COUNTERCLAIM ; C. RELEVANCY OF RULE 9(B) ; D. BIFURCATION/ROLE OF JUDGE AND JURY ; E. CHOICE OF LAW ; F. REMEDIES ; CHAPTER 12: LITIGATION STRATEGY ; A. IN MISUSE CASES ; B. AS TO WALKER PROCESS ; C. AS TO HANDGARDS CASES ; D. AS TO ANTITRUST RULE OF REASON COUNTERCLAIMS ; E. CONCLUSION: GENERAL ADVICE ; APPENDICES ; A. EXCERPTS FROM THE MANUAL OF PATENT EXAMINER PRACTICE ; B. U.S. PATENT LAW, TITLE 35 ; C. ANTITRUST GUIDELINES FOR THE LICENSING OF INTELLECTUAL PROPERTY ; BIBLIOGRAPHY ; TABLE OF CASES ; INDEX

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Author Information

Joel Davidow heads the antitrust department at Cuneo Gilbert & LaDuca, LLP in Washington, DC. He has also headed various sections in the Antitrust Division of the Department of Justice and has been a senior antitrust partner in major New York City and Washington, D.C. law firms, representing clients from Japan, Europe, and the United State in antitrust, patent, and trade litigation matters. Previously, he taught competition law at George Washington University Law School and the Johns Hopkins School of Advanced International Studies. James Toupin is the former general counsel of the U.S. Patent and Trademark Office, where, among other duties, he oversaw the Office of the Solicitor and the Board of Patent Appeals and Interferences. Before holding that position, he was the deputy general counsel of the U.S. International Trade Commission, responsible for supervising the ITC's litigation. In prior private practice with a major Washington, D.C., firm, he concentrated on intellectual property, unfair competition, and administrative agency litigation. He currently teaches intellectual property at the Washington College of Law of American University in Washington, D.C., and is on the rosters of neutrals for the World Intellectual Property Organization, the Court of Appeals for the Federal Circuit, and the North American Free Trade Agreement.

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