Overview

"A concise resource for practitioners actively involved in managing the unique aspects of PTAB trials, this guide is written by attorneys who have handled hundreds of PTAB proceedings. They share their practical experience in this developing aspect of patent law, and provide a unique perspective for lawyers advising clients and planning strategy during PTAB trials. Trials before the Patent Trial and Appeal Board (PTAB), introduced to U.S. patent law by the Leahy-Smith America Invents Act, are a hybrid of conventional patent prosecution and patent litigation practices. Successfully navigating a PTAB trial may entail tasks ranging from analyzing highly technical prior art to deposing scientific experts, drafting patent-claim amendments, and arguing at an oral hearing before an expert panel. Now updated and significantly expanded, the new Third Edition of The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board is a concise resource for practitioners actively involved in managing the unique aspects of PTAB trials. Having handled several hundred PTAB proceedings, the authors share their practical experience in this developing area and provide a unique perspective for practitioners advising clients and planning strategy during PTAB trials. Organized for ease of use, the book's practice-focused information includes: A quick reference for PTAB statutes and rules, including recent updates and rule changes Lessons learned from the growing body of Federal Circuit case law reviewing final PTAB decisions Strategic considerations for coordinating PTAB trials with your litigation strategy A detailed description of a PTAB trial from petition preparation to appeals to the Court of Appeals for the Federal Circuit Handy references synthesizing supporting laws, rules, and regulations The ""Practical Tools"" chapter compiles, in one place, all of the statutes, rules, and PTAB guidance covering PTAB trials, organized by topic. A busy practitioner can look up a topic, such as discovery, claim construction, or joinder, and have all of the collected guidance in one place. These are organized using a simple, standard framework including CFR citations; PTO comments during rulemaking; PTAB orders and decisions; references to the PTAB trial practice guide; and informal guidance such as PTAB training presentations."

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9781639051816

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Kathleen A. Daley (coeditor) is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where she has extensive experience in trial, appellate, and PTAB litigation. She has led litigation teams before district courts, the U.S. International Trade Commission, the PTAB, and the Federal Circuit. Kathleen has also made post-grant proceedings before the PTAB, including reexaminations and inter partes review proceedings, a focus of her practice. Her work encompasses a wide range of technologies with an emphasis on medical devices. Michael J. Flibbert (coeditor) is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. With more than 25 years of patent litigation experience, he serves as lead counsel in district court litigations, post-grant proceedings before the Patent Trial and Appeal Board, and appeals before the U.S. Court of Appeals for the Federal Circuit. Mike represents clients in patent cases involving pharmaceuticals, biotechnology, chemistry, chemical engineering, agriculture, and materials science. He has particular experience representing pharmaceutical patent holders in litigations arising under the Hatch-Waxman Act. Joshua L. Goldberg (coeditor) is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he leads the firm's PTAB trials section. He is also a director of the PTAB Bar Association. As lead or backup counsel in more than 300 PTAB proceedings, Josh splits his time approximately 60/40 between representing petitioners and patent owners. He also regularly argues appeals from PTAB trials to the U.S. Court of Appeals for the Federal Circuit.

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