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Patent Related Misconduct Issues in US Litigation

Patent Related Misconduct Issues in US Litigation

Author: Joel Davidow
Publisher: Oxford University Press USA
ISBN: 9780195337204
Published In: May 2010
Format: Paperback , 256 pages
Jurisdiction: U.S. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Written by knowledgeable intellectual property lawyer 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

This book 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 first section of the book addresses claims involving misuse of the patenting process, with a focus on patents on a product or process the patentee did not invent as claimed and inequitable conduct claims, including intentional failure to cite material references and false or misleading declarations. From here the book turns to claims based on the misuse of the litigation process, including baseless and bad-purpose suits. The third and final section of the book describes claims based on the misuse of the competitive (antitrust) and licensing processes. Each section of the book is divided into sections devoted to law and strategy, with practical guidance related to handling document demands and other discovery requests, expert testimony and waiver issues.

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

Readership: The primary market for this book is patent and antitrust litigators with a secondary market for in-house attorneys (both in the U.S. and overseas) supervising U.S.-based patent litigation. This book can also serve as a point of reference for law school students interested in patent law and antitrust litigation.

Joel Davidow is a partner at Kile Goekjian Reed & McManus in Washington, DC, an intellectual property boutique firm. He spent 15 years in the Antitrust Division of the Department of Justice and has been a senior antitrust partner in major New York City and Washington, D.C. law firms, representing clients from Japan, Europe, and the United States in antitrust, patent, and trade litigation matters.