Trial Lawyer's Guide to Post Grant Patent Proceedings

Provides holistic, real-world tips and strategy to inform your compliance and sound decisions for IPR, PGR or CBMR post-grant patent proceedings.
Publisher: LexisNexis

Select a format

Pamphlet :2 volumes, softbound, updated annually
2020 Edition
ISBN: 9781522178835
In Stock
Price
$269.00
QTY
eBook :epub
2020 Edition
ISBN: 9781522189787
Published: December 18, 2019
In Stock
Price
$269.00
QTY
eBook :mobi
2020 Edition
ISBN: 9781522189787
Published: December 18, 2019
In Stock
Price
$269.00
QTY
International Order Inquiry

Product details

View a sample of this title using the ReadNow feature

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.

eBooks, CDs, downloadable content, and software purchases are non-cancellable, nonrefundable and nonreturnable. Click here for more information about LexisNexis eBooks. The eBook versions of this title may feature links to Lexis Advance® for further legal research options. A valid subscription to Lexis Advance® is required to access this content.

Authors / Contributors

Table of Contents

2020 Edition
About the Authors
Goals and Introduction
Chapter 1 Overview of Proceedings and the PTAB
Chapter 2 Key Differences Between U.S. District Court Trial Practice and AIA Trial Practice
Chapter 3 Strategic Considerations in Initial Filing
Chapter 4 Parallel Proceedings
Chapter 5 Preliminary Proceedings
Chapter 6 Trial Proceedings
Chapter 7 Discovery in Post Grant Proceedings
Chapter 8 Motion Practice in Post Grant Proceedings
Chapter 9 Preserving Error and Record for Appeal
Chapter 10 Termination and Settlement
Chapter 11 Oral Hearing
Chapter 12 Final Written Decision
Chapter 13 Appeals to the Court of Appeals for the Federal Circuit
Chapter 14 Expectations for Future Changes and Revisions to AIA Trial Laws and Rules
Subject Matter Index
Table of Cases
Table of Statutes

Courtroom Compendium
About the Authors
Goals and Introduction
Compendium Chapter 1 Overview of Proceedings and the PTAB
Compendium Chapter 2 Key Differences Between U.S. District Court Trial Practice and AIA Trial Practice
Compendium Chapter 3 Trial Proceedings
Compendium Chapter 4 Discovery in Post Grant Proceedings
Compendium Chapter 5 Preserving Error and Record for Appeal
Compendium Chapter 6 Oral Hearing
Compendium Appendix A United States Code, Title 35 Selected Text
Compendium Appendix B Code of Federal Regulations, Title 37 Selected Text
Compendium Appendix C PTAB Trial Practice Guides & Updates
Subject Matter Index
Table of Cases
Table of Statutes