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 Second 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. The book also provides an online site with relevant documents that can be quickly downloaded.
Praise for the First Edition of The Practitioner's Guide to Trials Before the Patent Trial and Appeal Board:
"The Patent Trial and Appeal Board is fast becoming the most important patent tribunal in the United States. If recent trends continue, as seems likely, most infringement suits will feature parallel patent office litigation challenging the validity of the claims asserted in district court. Even when suits are not stayed, the Board will render its decision before the court, so validity will effectively be decided there, rather than in district court. In their accessible, well-organized, and practical book, the authors, all expert and experienced in this new world, skillfully guide readers through the new and very different process of the reviews created by the America Invents Act. For most patent lawyers, such guidance is an absolute necessity."
Paul R. Michel, Chief Judge of the U.S. Court of Appeals for the Federal Circuit (Retired)
"Written by experienced PTAB practitioners, this book is a valuable desk reference for anyone interested in patent trials before the PTAB. It is well researched and easy to use and provides the most thorough treatment I have seen of the new rules of practice. More importantly, it goes beyond the letter of the law by providing analysis of the relevant decisions from the PTAB, giving the reader a much better understanding of how the new rules are being applied."
Ankur D. Shah, Associate General Counsel, Intellectual Property, Freddie Mac
"The Practitioner’s Guide to Trials Before the PTAB should become a standard reference text for patent litigators and prosecutors, as well as for academics, policy makers, and others who study PTO practices. The useful compilations of information, clear explanations, and strategic insights well justify the price, particularly given the amount of time it will save practitioners and others from having to gather, evaluate, and consider this mass of information on their own."
Joshua D. Sarnoff, Professor of Law, DePaul University College of Law
"This book is a useful and comprehensive guide to everything one should consider before initiating and while in the midst of any PTAB post-grant proceeding. I find the check lists and strategic considerations especially helpful and see myself relying on this book quite extensively."
Kirupa Pushparaj, IP Counsel | Square, Inc.