U.S. patent opinions and evaluations

Author(s)

    • Fox, David L.

Bibliographic Information

U.S. patent opinions and evaluations

David L. Fox

Oxford University Press, c2010

  • : pbk

Other Title

United States patent opinions and evaluations

Available at  / 3 libraries

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Note

Includes bibliographical references and indexes

Contents of Works

  • Evaluations and opinions of U.S. patents : overview
  • Patent law principle I : claim construction
  • Patent law principle II : infringement : literal infringement
  • Patent law principle II : infringement : the doctrine of equivalents
  • Patent law principle II : infringement : indirect infringement, divided infringement, and Section 271(e)(1) "safe harbor"
  • Patent law principle III : validity : general principles of anticipation and anticipation by printed publication
  • Patent law principle III : validity : other forms of anticipation
  • Patent law principle III : validity : obviousness
  • Patent law principle III : validity : other forms of invalidity
  • Patent law principle IV : enforceability
  • Evaluating and opining on third party patents : patent due diligence for mergers, acquisitions, and licensing
  • Evaluating and opining on third party patent rights : evaluations and opinions of patents for clearance (freedom to operate), noninfringement, invalidity, and unenforceability
  • Evaluating and opining on third party patent rights : opinions for avoiding willful infringement
  • Evaluating and opining on third party patent rights : prefiling Rule 11 and section 285 investigations in declaratory judgment actions, ANDA paragraph IV certifications, avoidance of preliminary injunctions, and readiness in "rocket docket" jurisdictions
  • Evaluating and opining on third party patent rights : prefiling evaluations and opinions for ex parte and inter partes reexamination and other post-grant patent challenges
  • Evaluating and opining on one's own patent rights : SEC considerations, patent audits, and a businessperson's guide to evaluations and opinions of U.S. patents
  • Evaluating and opining on one's own patent rights : evaluations and opinions of patentability for potentially new inventions
  • Evaluating and opining on one's own patents : strategic patenting, including patent landscapes, evaluations and opinions of claim scope/infringement, validity, enforceability, and ownership
  • Evaluating and opining on one's own patent rights : defensive due diligence, pre-sale and pre-licensing evaluations and opinions of patents
  • Evaluating and opining on one's own patent rights : pre-filing rule 11 and section 285 investigations and compliance, FDA orange book patent listing, obtaining preliminary injunctions, and for readiness in "rocket docket" jurisdictions and ITC investigat
  • Evaluating and opining on one's own patent rights : prefiling evaluations and opinions for post-grant corrections including reexamination, reissue, disclaimer, certificates of correction, and other issues
  • Evaluating and opining on one's own patent rights : evaluations and opinions of patents in bankruptcy and related issues
  • Competency of, and reliance on, opinions for avoiding willful infringement
  • Waiver of attorney-client privilege and work product immunity

Description and Table of Contents

Description

This book provides expert, up-to-date, practical advice and guidance on the four principle issues of patent evaluations and opinions, including: (1) claim construction and claim scope; (2) infringement; (3) validity; and (4) enforceability. The book teaches how to apply these four principles to the many uses of patent opinions, including: - Evaluating and Opining on Third-Party Patents for: --- Willful Infringement Risk Analyses --- Invalidity and Noninfringement Investigations and Opinions for Avoidance of Willful Infringement ---Infringement Risk and Patent Portfolio Analyses and Reporting for SEC Compliance, Including Sarbanes-Oxley Reporting --- Clearance (Freedom to Operate) Investigations and Opinions for New Products and Process --- Design-Around Investigations and Determinations --- Pre-Purchase and Pre-License Investigations of Patent Scope, Validity, and Enforceability --- Pre-Filing Investigations for Ex Parte Reexamination and Other Post-Grant Challenges L - Evaluating and Opining on One's Own Patent Rights for: --- Pre-Filing Infringement, Validity, and Enforceability Investigations for Rule 11 Compliance --- Evaluation of Patent Portfolio Strength and Scope --- Pre-Filing Investigations for Reexamination and Reissue Filings --- Pre-Sale and Pre-Licensing Investigations of Patent Scope, Validity, and Enforceability ---Protecting and Maximizing Patent Rights in Bankruptcy

Table of Contents

  • PREFACE HOW TO BEST USE THIS BOOK
  • CHAPTER 1 OVERVIEW AND USES OF PATENT NONINFRINGEMENT AND INVALIDITY
  • OPINIONS
  • I. PURPOSES AND USES OF PATENT NONINFRINGEMENT AND INVALIDITY OPINIONS
  • II. NONINFRINGEMENT OPINIONS
  • III. INVALIDITY OPINIONS
  • CHAPTER 2 COMPETENCY OF OPINIONS
  • I. REQUIREMENT FOR COMPETENT OPINION
  • II. CLAIM CONSTRUCTION REQUIRED
  • III. RELIANCE OF CITED, UP-TO-DATE, PROPERLY INTERPRETED LAW
  • IV. TIMING FOR OPINIONS
  • V. NONINFRINGEMENT OPINIONS
  • VI. INVALIDITY OPINIONS
  • VII. FINAL OPINION SHOULD BY IN WRITING
  • VIII. LEVEL OF CERTAINTY
  • IV. PRACTICE TIPS
  • CHAPTER 3 TIMING, NECESSITY OF, AND RELIANCE ON OPINIONS
  • I. KNORR-BREMSE CASE
  • II. READ FACTORS REMAIN
  • III. BEST TO OBTAIN OPINION UPON LEARNING OF POTENTIALLY INFRINGED PATENT
  • IV. WAIVER
  • V. PRACTICE TIPS
  • CHAPTER 4 WAIVER OF ATTORNEY-CLIENT PRIVILEGE AND WORK-PRODUCT IMMUNITY
  • I. PRODUCTION OF OPINION
  • II. WAIVER OF ATTORNEY-CLIENT PRIVILEGE
  • III. OTHER WAIVERS
  • IV. PRACTICE TIPS
  • CHAPTER 5 CLAIM CONSTRUCTION
  • I. COMPETENT OPINION MUST CONSTRUE CLAIMS
  • II. EVIDENCE FOR CLAIM CONSTRUCTION
  • III. CLAIM CONSTRUCTION
  • VII. PRACTICE TIPS
  • CHAPTER 6 ESTABLISHING BASIS FOR NONINFRINGEMENT OPINIONS
  • I. COMPETENT OPINION MUST CONSTRUE CLAIMS
  • II. BURDEN OF PROOF FOR NONINFRINGEMENT IS PREPONDERANCE OF THE EVIDENCE (CENTRICUT)
  • III. CAREFULLY AND ACCURATELY DESCRIBE CLIENT'S TECHNOLOGY
  • IV. ADVISE CLIENT IN WRITING, IN FINAL OPINION, THAT NONINFRINGEMENT ANALYSIS AND OPINION ARE BASED SOLELY ON CLIENT'S PRODUCT AND/OR PROCESS AS DESCRIBED IN OPINION, AND THAT ANY CHANGES TO PRODUCT AND/OR PROCESS MUST BE EVALUATED ANEW FOR NONINFRINGEMENT
  • IV. A. BEGIN WITH ANALYSIS OF LITERAL INFRINGEMENT
  • V. PRACTICE TIPS
  • CHAPTER 7 LITERAL INFRINGEMENT
  • I. LITERAL INFRINGEMENT (35 U.S.C. 271(A))
  • II. SPECIAL RULES
  • III. DOCTRINE OF EQUIVALENTS MUST BE ADDRESSED IF NO LITERAL INFRINGEMENT
  • IV. PRACTICE TIPS
  • CHAPTER 8 DOCTRINE OF EQUIVALENTS
  • I. INFRINGEMENT UNDER THE DOCTRINE OF EQUIVALENTS
  • II. DEFINING EQUIVALENTS
  • III. SPECIAL CLAIM CONSTRUCTION RULES FOR EQUIVALENTS
  • IV. SPECIAL RULES
  • V. PRACTICE TIPS
  • CHAPTER 9 NON-DIRECT INFRINGEMENT, EXPERIMENTAL USE, AND IMPLIED LICENSE
  • I. DIRECT INFRINGEMENT (35 U.S.C. 271(A))
  • II. NON-DIRECT INFRINGEMENT
  • III. INDUCEMENT
  • IV. CONTRIBUTORY INFRINGEMENT
  • V. FOREIGN ACTIVITY
  • VI. IMPORTATION OF PRODUCT MADE BY METHOD CLAIM
  • VII. EXPERIMENTAL USE EXEMPTION (35 U.S.C. 271(E)(1))
  • VIII. IMPLIED LICENSE
  • IX. PRACTICE TIPS
  • CHAPTER 10 ESTABLISHING THE BASIS FOR INVALIDITY OPINIONS
  • I. COMPETENT OPINION MUST CONSTRUE CLAIMS
  • II. BURDEN OF PROOF FOR PATENT INVALIDITY IS CLEAR AND CONVINCING EVIDENCE (TYPERIGHT KEYBOARD)
  • III. MULTIPLE AVENUES TO PROVE INVALIDITY
  • IV. NO NEED TO EVALUATE CLIENT'S TECHNOLOGY
  • V. PRACTICE TIPS
  • CHAPTER 11 ANTICIPATION BY PRINTED PUBLICATION
  • I. THE INVENTION WAS DESCRIBED IN A PRINTED PUBLICATION MORE THAN ONE YEAR BEFORE THE PRIORITY DATE (35 U.S.C. 102(B))
  • II. QUALIFYING THE PRIOR ART
  • III. SINGLE SOURCE OF PRIOR ART MUST CONTAIN ALL OF THE LIMITATIONS OF THE CLAIM, EXPRESSLY OR INHERENTLY (METABOLITE LABORATORIES)
  • IV. WEIGHT OF PRIOR ART
  • V. PARENT APPLICATION AS PRIOR ART AGAINST CONTINUATION-IN-PART PATENT
  • IV. PRACTICE TIPS
  • CHAPTER 12 OTHER FORMS OF ANTICIPATION
  • I. ON SALE BAR, 35 U.S.C. 102(B)
  • II. PUBLIC USE, 35 U.S.C. 102(B)
  • III. KNOWN OR USED BY OTHERS IN THE U.S., 35 U.S.C. 102(A)
  • IV. PATENTED OR DESCRIBED IN A PRINTED PUBLICATION, 35 U.S.C. 102(A)
  • V. DESCRIBED IN A U.S. PATENT APPLICATION PUBLISHED BY ANOTHER FILED IN THE U.S. BEFORE THE INVENTION DATE, 35 U.S.C. 102(E)(1)
  • VI. DESCRIBED IN A U.S. PATENT BY ANOTHER FILED IN THE U.S. BEFORE THE INVENTION DATE, 35 U.S.C. 102(E)(2)
  • VII. DERIVATION, 35 U.S.C. 102(F)
  • VIII. PRIOR INVENTION, 35 U.S.C. 102(G)
  • IX. PRACTICE TIPS
  • CHAPTER 13 OBVIOUSNESS
  • I. OVERVIEW
  • II. ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS
  • III. EVIDENCE FOR REBUTTAL OF PRIMA FACIE CASE OF OBVIOUSNESS: GRAHAM SECONDARY CONSIDERATIONS
  • IV. SECONDARY FACTORS CANNOT REBUT A CLEAR CASE OF OBVIOUSNESS (GRAHAM)
  • V. SUMMARY OF NONOBVIOUSNESS OPINION
  • VI. PRACTICE TIPS
  • CHAPTER 14 OTHER FORMS OF INVALIDITY, UNENFORCEABILITY
  • I. WRITTEN DESCRIPTION, 35 U.S.C. 112, FIRST PARAGRAPH
  • II. ENABLEMENT, 35 U.S.C. 112, FIRST PARAGRAPH
  • III. BEST MODE, 35 U.S.C. 112, FIRST PARAGRAPH
  • IV. INDEFINITENESS, 35 U.S.C. 112, SECOND PARAGRAPH
  • V. UTILITY, 35 U.S.C. 101
  • VI. INEQUITABLE CONDUCT, UNENFORCEABILITY
  • VII. PRACTICE TIPS
  • APPENDIX A SAMPLE OUTLINE OF NONINFRINGEMENT OPINION
  • APPENDIX B SAMPLE OUTLINE OF INVALIDITY OPINION
  • APPENDIX C SUBJECT MATTER INDEX

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