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New Edition! Patent Law and Practice, Seventh Edition By Herbert F. Schwartz and Robert J. Goldman Also Inside: Patent Prosecution: Law, Practice, and Procedure, Seventh Edition Constructing and Deconstructing Patents Anatomy of a Patent Case Free 30-Day Review Order online at www.bna.com/bnabooks and save 10%!
New Edition! Patent Law and Practice, Seventh Edition By Herbert F. Schwartz and Robert J. Goldman 2011/Approx. 350 pp. Softcover ISBN 978-1-57018-973-9 Order #1973/$175.00 Start your free 30-day review! Call 1.800.960.1220, go to www.bna.com/ bnabooks, or use the attached postage-paid order form. Patent Law and Practice was first published by the Federal Judicial Center in 1988 as a one-volume introduction to patent law for federal judges. Since that time, the judiciary has come to rely on this reference for up-to-date information on patent law as it has evolved in response to the Courts, Congress, and changes in practice at the Patent and Trademark Office (PTO). In fact, Patent Law and Practice has been cited more than 80 times since its initial publication, most notably in the Supreme Court decision, Markman v. Westview Instruments. Now, with the all-new Seventh Edition, the authors provide analysis of the most recent case law and new legislation, including the Leahy-Smith America Invents Act, encompassing the most sweeping changes to the U.S. patent code since 1836. The treatise also has been updated with discussion of the most important patent law decisions from the past three years, including: n Bilski v. Kappos (2010, S.Ct), in which the Supreme Court addressed the scope of patentable subject matter, paving the way for resolution of validity challenges in the fields of business method patents, computer software, and biotechnology inventions n i4i v. Microsoft (2011, S.Ct), in which the Supreme Court established the burden of proof for allegations of patent invalidity and explained how to address in litigation the problem of prior art that was not considered by the PTO during prosecution of the patent in suit n Therasense v. Becton Dickinson (2011 Fed. Cir), in which the Federal Circuit redefined the defense that a patent is unenforceable because of inequitable conduct, overturning 30 years of decisional law n Uniloc v. Microsoft (2011 Fed. Cir.) and a series of related decisions beginning with Lucent v. Gateway (2009, Fed. Cir.), in which the Federal Circuit began to establish new standards for asserting and proving reasonable royalty damages The Seventh Edition covers these decisions, as well as the Federal Circuit s continued evolution of the law relating to claim construction, invalidity for anticipation and obviousness, the statutory disclosure and claiming requirements, indirect infringement, and the availability of injunctive relief for patent infringement. Practitioners can use the latest edition of Patent Law and Practice to: n Cite cases and sources relied upon by the bench n Direct the judge to a specific page in the guide for a key case or explanation n Understand, and specifically address, procedural issues facing the court To simplify research in the large volume of Federal Circuit decisions and cut down on research time, the treatise s footnotes have been revised and shortened to provide only the most relevant leading cases and examples of how the Federal Circuit has applied the law. Order your copy today!
Patent Law and Practice, Seventh Edition Summary of Contents Table of Contents Chapter 1. Introduction Chapter 2. Proceedings in the Patent and Trademark Office I. The Patent II. The Participants III. The Process A. Preapplication Activities B. The Application C. Initial Processing of the Application D. Examination and Prosecution E. Appeals to the Courts IV. Postissuance Responsibilities A. Disclaimers, Dedications, and Certificates of Correction B. Reissue C. Reexamination 1. Citation of Prior Art 2. Reexamination D. Patent Term Extension; Patent Term Adjustment Chapter 3. Proceedings in the Federal Courts I. Parties A. Who Can Assert the Patent Right B. Who Can Attack the Patent II. Jurisdiction III. Venue A. The Patent Venue Statute 28 U.S.C. 1400(b) B. The General Venue Statute 28 U.S.C. 1391 C. Transfer of Venue D. Joinder of Multiple Accused Infringers IV. Presumption of Validity and Burden of Proof Regarding Validity V. Stays A. Allowing Other District Courts to Proceed First B. Allowing the Patent and Trademark Office to Proceed First VI. Prior Adjudications Regarding Validity A. When the Patent Is Held Invalid in the Prior Adjudication B. When the Patent Is Not Held Invalid in the Prior Adjudication VII. Appeals and Choice of Federal Circuit Versus Regional Circuit Law4. Patentability Chapter 4. Patentability I. The Conditions of Patentability A. Patent-eligible Subject Matter B. Useful C. New D. Nonobvious II. The Requirements of Patentability A. Originality B. Statutory Bars C. Disclosure D. Definite Claims III. Changes to the Law of Validity Under The Leahy-Smith America Invents Act A. Effective Filing Date B. Novelty Under the New 102 C. Statutory Bar: The Revised One-Year Grace Period for the Inventor s Own Work D. Joint Development Work E. Derivation F. Other Changes G. Effective Date of the First Inventor to File Amendments: March 16, 2013 Chapter 5. Claim Construction I. The Controlling Court Decisions II. Comprehensive Claim Construction Methodology A. Determining the Acquired Meaning of Claim Language B. Determining that a Meaning Has Not Been Acquired III. Ancillary Procedural Matters A. Judicial Education B. Time and Context for Claim Construction Ruling IV. Selected Substantive Issues in Claim Construction A. Potential Relevance of the Preamble to the Scope of the Claim B. Transitional Language C. Elements Expressed in Means-Plus-Function Form Chapter 6. Infringement I. Claims of Infringement A. Someone B. Without Authority C. Makes, Uses, Offers to Sell, Sells, or Imports D. The Patented Invention E. Within the United States, Its Territories, or Its Possessions F. During the Term of the Patent II. Defenses A. Claims of Noninfringement B. Claims of Invalidity Chapter 7. Equitable Defenses I. Inequitable Conduct Before the PTO A. The Controlling Authorities B. Recurring Substantive and Procedural Issues II. Patent Misuse A. The Current Scope of the Misuse Defense B. Standards Setting Organizations III. Laches IV. Estoppel Chapter 8. Remedies I. Injunctions A. Permanent Injunctions B. Preliminary Injunctions C. Stays of Injunctions Pending Appeal D. Scope of Injunction and Contempt II. Monetary Damages A. Lost Profits B. Reasonable Royalty C. Mixed Awards III. Marking or Actual Notice A Prerequisite to Recovering Damages IV. Increased Damages A. Willful Infringement B. Increasing Damages V. Attorney Fees VI. Prejudgment and Post- Judgment Interest Chapter 9. Case Management and Jury Trials I. Case Management A. Judicial Education About the Underlying Technology B. Contentions Discovery C. Bifurcation, Separate Trials, and Related Procedures D. Pretrial Motions to Limit Issues or to Exclude Expert Testimony II. Jury Trials A. Reliance on Juries B. Juror Comprehension C. The Jurors Role D. Form of Verdict E. Adequately Instructing the Jurors on the Law They Are to Apply Annotated Bibliography Table of Cases Index About the Authors Herbert F. Schwartz is Of Counsel to and a retired partner at Ropes & Gray LLP, New York, NY, and a former member and managing partner of the intellectual property law firm of Fish & Neave LLP. Robert J. Goldman is a partner at Ropes & Gray LLP, East Palo Alto, CA, specializing in intellectual property trials and appeals for his entire career. Mr. Goldman is listed in The Best Lawyers in America and Chambers (USA and Global) for intellectual property litigation.
2011/3 Volumes/5,248 pp. Hardcover and Case Digest on CD-ROM ISBN 978-1-61746-011-1 Order #2011/$590.00 New Edition! Patent Prosecution: Law, Practice, and Procedure, Seventh Edition By Irah H. Donner Patent Prosecution: Law, Practice, and Procedure, Seventh Edition expertly addresses the most recent substantive changes in the law by the district courts, the Court of Appeals for the Federal Circuit, and the U.S. Supreme Court, as well as all new prosecution rules from the Patent and Trademark Office (PTO), making it a resource that is equally strong in its analysis of patent case law as it is in its analysis of patent prosecution. This is the only resource that provides an element-by-element analysis of the substantive areas of patent law that form the basis of common rejections and objections by the PTO. The Seventh Edition covers important recent cases, including the Supreme Court s decision in Bilski v. Kappos. It also addresses significant changes in U.S. patent law resulting from recent decisions and statutory and/or procedural amendments, including such important cases as: Association for Molecular Pathology and ACLU v. USPTO and Myriad; Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.; Wyeth and Elan Pharma International, Ltd. v. Under Sec. of Commerce for Intellectual Property; Hyatt v. Acting Director, Patent and Trademark Office; Cancer Research Technology Ltd. v. Barr Laboratories, Inc.; and others. 2010/656 pp. Hardcover ISBN 978-1-57018-934-0 Order #1934/$255.00 Constructing and Deconstructing Patents By Irah H. Donner Walking the reader step-by-step through the complexities of drafting a patent application, Constructing and Deconstructing Patents provides a standard methodology that patent attorneys and agents can rely on to simplify the patent application process. Regardless of the particular type of patent, or the level of its technical subject matter, this treatise will help ensure each section of the patent application is carefully considered and fully developed before its submission to the U.S. Patent and Trademark Office (PTO). This book not only offers expert guidance on the fundamental concepts in patent application drafting, but also discusses the major areas of patent law that can affect the strength and vitality of a patent years later. Patent attorneys and agents engaged in patent application drafting practice before the PTO will find this book extremely valuable, as will litigators seeking both to understand the construction of patent applications and to deconstruct them during litigation. The book s detailed organization makes it accessible as a guide for the new attorney or agent, while its time-tested methodology provides valuable insights for the experienced practitioner, serving as a checklist for each phase of the constructing and deconstructing process. About the Author Irah H. Donner is a partner in the Intellectual Property department of Stroock & Stroock & Lavan LLP, New York, NY. He concentrates in the counseling, due diligence, claim analysis, and preparation/prosecution of patents, as well as enforcement of intellectual property, with particular emphasis on financial, business method, internet, and computer software/hardware applications.
Start your free 30-day review! Call 1.800.960.1220, go to www.bna.com/bnabooks, or use the attached postage-paid order form. NO POSTAGE NECESSARY IF MAILED IN THE UNITED STATES BUSINESS REPLY MAIL FIRST-CLASS MAIL PERMIT NO. 10089 WASHINGTON DC Postage will be paid by addressee BNA Books A division of BNA po box 7814 edison NJ 08818-9856 2009/202 pp. Softcover ISBN 978-1-57018-857-2 Order #1857/$155.00 Anatomy of a Patent Case George F. Pappas, Editor-in-Chief Complex Litigation Committee of the American College of Trial Lawyers Conflicts over intellectual property and specifically over patents have assumed a pivotal role in today s global economy. In response to the increase in patent litigation, the Complex Litigation Committee of the prestigious American College of Trial Lawyers (ACTL) authored a manual that details each phase of a patent case for judges and lawyers. Anatomy of a Patent Case is a concise yet substantial treatise that expertly covers all steps required to bring a patent case to trial and the key elements that make such litigation unique. Anatomy of a Patent Case specifically addresses the complex technical, procedural, and legal issues inherent in a patent lawsuit that are not usually found in other types of civil litigation. The handbook analyzes the unique characteristics of patent cases that judges and lawyers can expect to see. It is so comprehensive that it has been added to the Federal Judicial Center s resource library for district court judges and their law clerks. For anyone faced with the many challenges of patent litigation, this straightforward resource can be relied on for its concise coverage of the fundamentals, effective lessons from the most significant cases, and essential insights from leading experts and judges.