Patent Litigation and Strategy - 6th Edition - Kimberly A. Moore

Patent Litigation and Strategy 6th Edition ISBN 9781636593890

This casebook presents the governing statutes and rules at the start of each chapter and includes sample litigation documents to illustrate key procedural steps. Organized chronologically, it follows the progression of a typical patent case in district court. The book opens with foundational topics such as identifying the proper defendant, selecting the appropriate venue, meeting pleading requirements, navigating discovery, and developing trial strategy.

It then delves into substantive legal issues, including pharmaceutical litigation under the Hatch-Waxman Act, liability for infringing exports, joint infringement by multiple actors, and the extraterritorial application of U.S. patent law. A dedicated section provides a primer on the America Invents Act’s prior art provisions, including analysis of the Supreme Court’s first decision interpreting them.

Subsequent chapters address remedies, covering injunctive relief, contempt proceedings, and the calculation of damages. The book concludes with an exploration of administrative proceedings before the Patent and Trademark Office—an increasingly critical aspect of modern patent litigation strategy.

Changes in the New Edition:

The Sixth Edition incorporates the most recent developments in patent law and litigation. This edition reflects important shifts in the litigation landscape, including the rise of the U.S. District Court for the Western District of Texas as a favored venue for patentees—along with the associated controversies. It features updated statistics on patent litigation and incorporates changes to the Federal Rules of Civil Procedure and relevant local rules.

Venue doctrine is revisited in light of the Supreme Court’s decision in TC Heartland, with particular focus on its aftermath. The Federal Circuit’s ruling in In re Juniper Networks, Inc. is examined as a leading example of the court’s evolving approach to venue transfer motions, especially efforts to move cases out of the Western District of Texas.

The edition also updates key case law, including:

• Standing of licensees (Azure Networks, LLC v. CSR PLC);
• Assignor estoppel (Minerva Surgical, Inc. v. Hologic, Inc.);
• Pretrial orders (Insite Vision Inc. v. Sandoz, Inc.);
• Rebuttal of the Festo presumption (Ajinomoto Co. v. ITC);
• Patent eligibility under § 101 (Berkheimer v. HP Inc.), a significant decision addressing the interplay between law and fact in subject matter eligibility.

Further, the edition includes Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court’s first interpretation of the AIA’s revised prior art provisions. It also addresses developments in the law governing secondary considerations of nonobviousness, including FOX Factory, Inc. v. SRAM, LLC, which refines the nexus requirement and explores the concept of coextensiveness.

A new case, BlephEx, LLC v. Myco Indus., Inc., illustrates the Federal Circuit’s evolving approach to preliminary injunctions.

To enhance clarity and usability, the Sixth Edition has been streamlined to remove discussion of issues that are no longer contentious or central to contemporary litigation. These include detailed treatment of Markman hearings, the now-settled issue of laches post-SCA Hygiene, prosecution laches, and certain aspects of ANDA litigation.

While the primary focus of the casebook remains on patent litigation in district courts, the final chapter on inter partes review has been significantly updated. It now includes the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Technologies, LP, which addresses whether the Federal Circuit may review the PTAB’s decisions on instituting review—an increasingly important issue in administrative patent proceedings.

Moore, Holbrook, Murphy and Sommer Patent Litigation and Strategy Sixth Edition ISBN 9781636593890 & 978-1636593890