Trial Lawyer's Guide to Post Grant Patent Proceedings

ebook Trial Lawyer's Guide to Post Grant Patent Proceedings (2020)

By Kenneth R. Adamo

cover image of Trial Lawyer's Guide to Post Grant Patent Proceedings

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Direct, incisive discussion and step-by-step guidance in this volume give you real-world perspective and tips for success in Patent Trial and Appeal Board (PTAB) trials and beyond.

The step-by-step analysis in this guide is authored by leading Chicago and New York IP partners and trial lawyers. If you're a post-grant review attorney involved in inter partes review (IPR), post-grant review (PGR) or covered business method review (CBMR)—even parallel proceedings—Trial Lawyer's Guide to Post Grant Patent Proceedings helps you make critical decisions and demonstrate compliance with PTAB rules and regulations.

The need for this type of patent post-grant review guidance has expanded in recent years with radical changes to the parallel proceedings landscape. These changes came into play with the advent of post-grant proceedings under the America Invents Act (AIA). Use of IPR, PGR and CBMR proceedings grew rapidly. Many U.S. district courts stayed litigations involving the challenged patent(s), thereby shifting the enforcement focus into the USPTO. Parallel proceedings between U.S. district court and the USPTO became the "new normal," as many thousands of post grant proceedings have been sought and instituted.

Trial Lawyer's Guide to Post Grant Patent Proceedings gives trial attorneys and post-grant review lawyers a range of advantages.

  • Develop a clear understanding of the differences between how a U.S. district court works and a USPTO post-grant patent proceeding works.
  • Learn how to navigate through critical decisions you need to make in complying with PTAB rules and regulations.
  • Put step-by-step guidance into practice, from preliminary considerations to initial filings through trial, discovery and the oral hearing, concluding with appeals to the Federal Circuit.
  • Explore an in-depth examination of USPTO rules, regulations and PTAB trial practice—plus discussion of hundreds of PTAB decisions and court decisions that affect PTAB trial practice.
  • Take in varied viewpoints that go beyond PTAB trials. For example, perspectives from federal trial court-trained lawyers and experienced USPTO PTAB practitioners provide insight for parallel proceeding situations.

    Practitioners know all too well that PTAB trials often are intense and furious events, with scant time for quick research of a procedural point, basis for an objection or response to one while in the courtroom. An "answer book" is the ideal solution but only if it is full of easy-to-retrieve information that cuts to the chase for the issues most likely to arise.

    Therefore, this product now includes such an "answer book" — a separate Courtroom Compendium that is an abridged version of the Trial Lawyer's Guide to Post Grant Patent Proceedings. This Courtroom Compendium was created for quick retrieval and speedy response, with a tight table of contents and enhanced indexing. Taken in hand with one's experience, the Courtroom Compendium enhances a trial lawyer's deposition and oral hearing performance, PTAB panel's style and approach to the controlling law, as well as the relevant laws, rules, and procedures.

  • Trial Lawyer's Guide to Post Grant Patent Proceedings