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by: Davidow, Joel; Toupin, James

ISBN: 9780199797158 | 0199797153

Patent-Related Misconduct Issues in U.S. Litigation provides a comprehensive review of conduct defenses and counterclaims, with a focus on existing case law and litigation strategies. This second edition adds a new co-author, James Toupin, former general counsel of the U.S. Patent and Trademark Office. It adds, or accounts for the major developments in the field since 2008, including the new Leahy-Smith America Invents Act, the adoption of a but-for test for inequitable conduct, and n... MOREew antitrust decisions relating to patent-pool abuse and pay-for-delay arrangements. Together, Davidow and Toupin offer patent litigators 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. 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. The second section covers claims based on the misuse of the litigation process, including baseless and bad-purpose suits. The third section describes claims based on the misuse of competitive (antitrust) and licensing processes. Each section of the book is filled with practical guidance related to handling document demands and other discovery requests, expert testimony and waiver issues.

Types of claims covered in the book include the following:

- 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

The authors offer guidance on the following topics:

- 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

Joel Davidow heads the antitrust department at Cuneo Gilbert & LaDuca, LLP in Washington, DC. He has also headed various sections 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 State in antitrust, patent, and trade litigation matters. Previously, he taught competition law at George Washington University Law School and the Johns Hopkins School of Advanced International Studies.

James Toupin is the former general counsel of the U.S. Patent and Trademark Office, where, among other duties, he oversaw the Office of the Solicitor and the Board of Patent Appeals and Interferences. Before holding that position, he was the deputy general counsel of the U.S. International Trade Commission, responsible for supervising the ITC's litigation. In prior private practice with a major Washington, D.C., firm, he concentrated on intellectual property, unfair competition, and administrative agency litigation. He currently teaches intellectual property at the Washington College of Law of American University in Washington, D.C., and is on the rosters of neutrals for the World Intellectual Property Organization, the Court of Appeals for the Federal Circuit, and the North American Free Trade Agreement.