Patent Related Misconduct Issues in U.S. Litigation, 2014 Edition by Joel Davidow and James Toupin is designed to serve as the first comprehensive review of conduct defenses and counterclaims, with a focus on existing case law and litigation strategies. The Second Edition added a co-author, James Toupin, former general counsel of the U.S. Patent and Trademark Office, and covered major developments in the field since 2008, including the Leahy-Smith America Invents Act, the adoption of a but-for test for inequitable conduct, and antitrust decisions relating to patent-pool abuse and pay-for-delay arrangements. This 2014 Edition adds a new chapter on injunctive remedies and the patent holder’s use of the patent. It also discusses many uncertainties and conflicts related to this quickly changing area of law, such as the: • Paring back of the inequitable conduct defense in the 2011 amendments to the Patent Act and by the Court of Appeals for the Federal Circuit, • Evolving views of the U.S. Patent and Trademark Office (PTO) on the on-sale bar, • Supreme Court’s recent opinion, arising from settlements in the pharmaceutical industry, which has rejected a widely held view of the interaction between antitrust and patent law and • Distinction between laches and equitable estoppel based on the Supreme Court’s decision in Petrella v. Metro–Goldwyn–Mayer, Inc. This book is designed to provide patent litigators with 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. Such claims can include: • 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 In addition, each chapter of the book has a section devoted to litigation strategy related to a particular claim, with practical guidance on a range of issues including: • 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 Features • Written by knowledgeable intellectual property lawyers with extensive antitrust, patent, and trade litigation experience in both the private and public sectors • The first book of its kind to provide a comprehensive review of misconduct claims and defenses, with reference to existing case law and litigation strategies • Unique multifaceted approach that combines practical advice for litigators with critical analysis of older doctrines