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.
Table of Contents
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