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PATENT LITIGATION

Third Edition

Edited by
Charles S. Barquist

Incorporating Release #6
September 2018
#239472

Practising Law Institute

New York City
#151672

9
 This work is designed to provide practical and useful
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sold with the understanding that neither the publisher nor
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Copyright © 2001, 2002, 2003, 2004, 2005, 2006, 2007, 2008, 2009, 2010,
2011, 2012, 2013, 2014, 2015, 2016, 2017, 2018 by Practising Law
Institute.
First edition 2001 by Laurence H. Pretty
Second edition 2012
Third edition 2015 by Charles S. Barquist
All rights reserved. Printed in the United States of America. No part of this
publication may be reproduced, stored in a retrieval system, or transmitted
in any form by any means, electronic, mechanical, photocopying,

10
recording, or otherwise, without the prior written permission of Practising
Law Institute.

LCCN: 2012217929
ISBN: 978-1-4024-2515-8

11
About the Contributors

Editor
CHARLES S. BARQUIST is the editor of this book, the author of chapter 1,
and a coauthor of chapter 15. He is a partner in the Los Angeles office of
Morrison & Foerster LLP, and specializes in the litigation and trial of
patent and other intellectual property disputes. Mr. Barquist received an
A.B. degree with high distinction and high honors in history from the
University of Michigan in 1975. He received a J.D., cum laude, from
Harvard Law School in 1978. Following graduation, Mr. Barquist served
as a law clerk to the Honorable Milton Pollack, United States District
Judge for the Southern District of New York. He joined Morrison &
Foerster in 1987, and has worked in the firm’s New York, San Francisco,
Tokyo, and Los Angeles offices. Representative clients include Capital
One, Fujitsu Limited, DISH Network, and Compal Electronics. Mr.
Barquist is a past president of the Los Angeles Intellectual Property Law
Association, a past chair of the Intellectual Property and Entertainment
Law Section of the Los Angeles County Bar Association, and is the
current chair of the USC Gould School of Law IP Institute.

Authors (in chapter order)

E. DANIELLE T. WILLIAMS is the author of chapter 2. An experienced
trial and arbitration attorney, she has handled a wide range of business
disputes, including patent infringement, securities fraud, and complex
contract matters in a number of federal and state courts. Located in Fish &
Richardson’s Atlanta office, her practice focuses on patent litigation. Ms.
Williams has extensive experience in handling high-risk, multi-patent,
multi-product, multi-defendant cases in a broad range of technologies, in
federal courts across the country. She regularly advises clients regarding
various pre-suit patent litigation issues including indemnity obligations
and declaratory judgment options. Ms. Williams has authored articles on
patent litigation, patent damages, electronic discovery, and time
management and has presented CLEs on patent litigation, patent damages,
and electronic discovery. She also coauthors a blog focused on patent
damages, www.patent-damages.com. She received a J.D. from Wake

12
Forest University School of Law and an M.B.A. from Wake Forest
University.
RICHARD BIRNHOLZ is a coauthor of chapter 3. He is a partner in the
Los Angeles office of Irell & Manella LLP. He is a member of the firm’s
litigation and intellectual property workgroups. Mr. Birnholz has extensive
experience in complex litigation in federal and state courts, specializing in
high-stakes patent litigation in courts throughout the country. He has tried
cases in the U.S. district courts and before the International Trade
Commission and has successfully argued appeals before the U.S. Court of
Appeals for the Federal Circuit. Mr. Birnholz has been selected by Los
Angeles Magazine for inclusion in Southern California “Rising Stars” in
2004 and Southern California “Super Lawyers” in 2017 for the twelfth
consecutive year. Before joining Irell & Manella LLP, Mr. Birnholz served
as a law clerk to the Honorable Pamela Ann Rymer, U.S. Court of Appeals
for the Ninth Circuit, and as an extern for the Honorable Ruth Bader
Ginsburg, then a judge of the U.S. Court of Appeals for the D.C. Circuit.
During law school, Mr. Birnholz served on the editorial board of the
UCLA Law Review and published a comment entitled “The Validity and
Propriety of Contingent Fee Controls,” 37 U.C.L.A. L. Rev. 949 (1990).
BENJAMIN HABER is a coauthor of chapter 3. He is an associate in the
Los Angeles office of Irell & Manella LLP, where he is a member of the
IP litigation practice group. Mr. Haber has represented high-technology
clients from various fields (including medical devices, video processing,
and mobile communications) in complex IP litigation matters. He is
admitted to practice before the U.S. Patent and Trademark Office. Mr.
Haber has spoken and written extensively on the America Invents Act. Mr.
Haber earned his J.D. from Loyola Law School where he was Chief
Technology Editor of the Loyola Law Review. He graduated magna cum
laude, Order of the Coif, and was a Sayre MacNiel Scholar. While at
Loyola, Mr. Haber also participated in the Giles Sutherland Rich Patent
Moot Court Competition and received the “Best Appellate Brief” award.
Prior to law school, Mr. Haber was an accomplished engineer, working in
aerospace engineering, optical engineering, and systems engineering; he
worked as an engineer at NASA’s Jet Propulsion Laboratory, as well as at
Northrop Grumman Corporation. As an Adjunct Professor, Mr. Haber has
taught Patent Law at his alma mater, Loyola Law School.
BRIAN E. FERGUSON is the author of chapter 4. He is a partner in Weil
Gotshal’s patent litigation practice, specializing in high technology patent
disputes involving a wide array of technologies. Nationally recognized as a
leader in patent law, Mr. Ferguson represents clients in patent infringement

13
and validity disputes before district courts and in section 337
investigations before the U.S. International Trade Commission. He has
handled dozens of patent-related appeals and successfully argued
numerous appeals before the U.S. Court of Appeals for the Federal Circuit
and the Board of Patent Appeals and Interferences in the U.S. Patent and
Trademark Office. He successfully argued before an en banc panel of the
Federal Circuit in In re Seagate Technology LLC, in which the court
changed the standard for proving willful infringement and clarified the
scope of attorney-client privilege waiver in patent cases. Mr. Ferguson has
taught as an adjunct professor at the George Washington University
School of Law, and regularly writes on patent litigation and technology
topics. He is a member of the Federal Circuit Bar Association and the
American Intellectual Property Law Association. He has been recognized
as one of the “top 50 under 45” IP practitioners in the United States by IP
Law & Business, and as a leading IP lawyer by The Best Lawyers in
America in 2008 and 2009. He received his J.D. from Albany Law School
and his B.S.E.E., magna cum laude, from Union College.
KAREN A. JACOBS is a coauthor of chapter 5. She is a partner at Morris,
Nichols, Arsht & Tunnell LLP. Her practice focuses primarily on patent
litigation. She also has experience with a variety of other intellectual
property and commercial litigation areas, including copyright, trademark,
trade secret, unfair competition, and contract and licensing disputes. Ms.
Jacobs has been recognized for legal excellence by Chambers USA: Guide
to America’s Leading Lawyers for Business, The Best Lawyers in America,
Law and Business Media, Delaware Super Lawyers and Managing
Intellectual Property as one of the top women in IP. In 2009, Ms. Jacobs
was the recipient of the Delaware State Bar Association’s Women’s
Leadership Award, as well as the Delaware State Bar Association’s
Community Service Award in 2003. Ms. Jacobs is a graduate of the
University of Pennsylvania and the Harvard Law School.
MEGAN E. DELLINGER is a coauthor of chapter 5. She is an associate in
the Intellectual Property Group at Morris, Nichols, Arsht & Tunnell LLP.
Her practice focuses primarily on patent litigation. Ms. Dellinger received
her J.D. from the University of Virginia School of Law, where she was an
executive editor of the Virginia Law Review and a member of the Order of
the Coif. She completed her undergraduate work at The College of
William & Mary, graduating with honors with a B.S. in chemistry.
ELEANOR G. TENNYSON is a coauthor of chapter 5. She is an associate
in the Intellectual Property Group at Morris, Nichols, Arsht & Tunnell
LLP. Her practice focuses primarily on patent litigation. Ms. Tennyson

14
received her B.A. in Chemistry, with honors, from Grinnell College and
her M.S. in Chemistry from Clemson University. She graduated with
distinction from the University of Iowa College of Law, where she was a
managing editor of Iowa Law Review.
JASON R. BARTLETT is a coauthor of chapter 6. An attorney at Mauriel
Kapouytian Woods LLP, he has over fifteen years of experience in
intellectual property litigation, commercial arbitration, and licensing. His
engagements have involved a broad range of technologies and industries.
In the life sciences, he has experience with monoclonal antibody
therapeutics and diagnostics, vaccines, and medical devices. In computers
and electronics, he has litigated design and utility patents relating to
smartphone software and hardware, cellular telecommunications standards,
global positioning systems, programmable logic devices, and CAD
software.
HUI LIU is a coauthor of chapter 6. She is an attorney at Mauriel
Kapouytian Woods LLP. She has litigated cases involving complex
technological issues for nearly a decade and has represented many
international clients in patent infringement, patent licensing, and other
contractual disputes before various U.S. district courts, New York state
courts, and the U.S. International Trade Commission. She has also
represented clients in international arbitration proceedings presenting
complex commercial and contract law issues. Ms. Liu has handled many
matters involving cutting-edge technologies including pharmaceutical
development, metabolomics, semiconductor manufacturing, and plasma
and liquid crystal displays.
CHARLES W. SABER is a coauthor of chapter 7. He is a partner in the
Washington, D.C. office of Blank Rome LLP. His practice focuses on all
aspects of intellectual property law, with an emphasis on intellectual
property litigation. Mr. Saber has participated in scores of intellectual
property lawsuits at the trial and appellate levels involving patent,
trademark, copyright, unfair competition, and trade secret issues. These
actions have been filed in both federal and state courts and span a variety
of industries. Mr. Saber has lectured extensively on a wide variety of
intellectual property matters on both patent and trademark matters. He is
coauthor of the Introduction to Intellectual Property Law (1994), and his
articles on intellectual property matters have appeared in a wide variety of
publications. Mr. Saber graduated magna cum laude in 1979 from the
Georgetown Law Center.
DIPU A. DOSHI is a coauthor of chapter 7. A partner in the Washington,
D.C. office of Blank Rome LLP, Mr. Doshi focuses his practice in all

15
aspects of patent law, with an emphasis on patent litigation and client
counseling. Mr. Doshi has experience in a wide variety of technological
fields, including pharmaceutical and chemical compounds, biological
molecules, DNA sequences, computer memory, imaging devices,
semiconductor inventions, and computer networks.
MEGAN R. WOOD is a coauthor of chapter 7. She is an associate at the
Washington, D.C. office of Blank Rome LLP. She primarily focuses her
practice on patent litigation and patent prosecution. During law school,
Ms. Wood served as a judicial intern for the Honorable James J. Fitzgerald
III, Appellate Judge of the Superior Court of Pennsylvania. She also
served as an associate editor on The Villanova Environmental Law
Journal.
CHRISTOPHER J. RENK is a coauthor of chapter 8. He is a senior partner
at Banner & Witcoff, Ltd., in Chicago, and specializes in litigating
intellectual property cases. He has successfully litigated cases at the trial
and appellate levels, spanning a broad range of technologies including
computer hardware, electrical controls, medical devices, and athletic
footwear. He is an Adjunct Professor of Law at the Georgetown Law
Center, where he teaches Patent Trial Practice, and is a contributing author
of the ABA/IP Section-sponsored Patent Litigation Strategies Handbook.
TED L. FIELD is a coauthor of chapter 8. He is Professor of Law, South
Texas College of Law, Houston.
KAREN VOGEL WEIL is a coauthor of chapter 9. She is a partner in the
Los Angeles office of Knobbe, Martens, Olson & Bear, LLP. Ms. Weil has
experience in all aspects of intellectual property litigation, including
representing plaintiffs and defendants in patent, trademark, copyright and
trade secret disputes. She has both trial and appellate experience. Ms. Weil
is also experienced in the area of patent damages. Ms. Weil has spoken
extensively on patent litigation issues. She received her J.D. with honors
from the George Washington University Law School, where she was a
member of the George Washington Journal of International Law &
Economics, and her B.A. cum laude, Phi Beta Kappa, from the University
of California—Davis.
YANNA S. BOURIS is a coauthor of chapter 9. She is a partner in the Los
Angeles office of Knobbe, Martens, Olson & Bear, LLP. Ms. Bouris
represents clients in all areas of intellectual property law, including
patents, trademarks, copyrights and unfair competition. Ms. Bouris has
represented both plaintiffs and defendants in litigation matters involving
diverse technologies, including medical devices, biotechnology, and
computer networking. She has also handled the damages case of several

16
high-stakes patent litigation matters. Ms. Bouris joined the firm in 2003
and became partner in 2009. She received her J.D. from Stanford Law
School and her B.A., with highest honors, from the University of
California—Berkeley. Prior to attending law school, Ms. Bouris worked in
the biotechnology industry in the areas of genetics, real-time PCR, and
HIV diagnostics at Life Technologies, Inc., Calytpe Biomedical, and the
Joslin Diabetes Center.
SHUCHEN GONG is a coauthor of chapter 9. She is an associate in the
San Francisco Office of Knobbe, Martens, Olson & Bear, LLP. Her
practice includes licensing, preparation and prosecution of patent
applications and trademark prosecution. She received her law degree from
Cornell Law School and her B.S. in Chemistry and B.A. in Economics
from the University of California, Berkeley.
JOSEPH A. FARCO is the author of chapter 10. He is a member of the
intellectual property law group at Locke Lord LLP, and has considerable
experience in patent litigation, ITC proceedings, and patent prosecution.
Mr. Farco has been involved in numerous aspects of the patent trial,
including initial settlement discussions, fact and expert discovery,
summary judgment, post-hearing briefing, and appeals. He received a B.E.
in mechanical engineering and an M.S. in engineering management, both
from Stevens Institute of Technology; an M.S. in pharmaceutical
chemistry from the University of Florida; and a J.D. from New York Law
School. He was named a Rising Star for Intellectual Property Law by
Super Lawyers (2012–2016).
DON W. MARTENS is a coauthor of chapter 11. He is of counsel to the
Irvine, California, intellectual property law firm of Knobbe, Martens,
Olson & Bear, LLP. The firm has been named the best intellectual
property law firm in the western United States for five years in a row in a
worldwide survey of 3,000 IP lawyers conducted by Managing Intellectual
Property magazine. Mr. Martens specializes in litigation of IP cases. He
has been named one of the top twenty patent attorneys in the world in a
comprehensive international survey by Euromoney Legal Media Group.
He was President of the American Intellectual Property Law Association
in 1996. Currently he is a member of the Advisory Council of the Court of
Appeals for the Federal Circuit.
JOHN B. SGANGA, JR. is a coauthor of chapter 11. He is a partner in the
Irvine, California, office of Knobbe, Martens, Olson & Bear, LLP, where
he practices as an intellectual property litigator. He graduated magna cum
laude in 1981 from Lafayette College, with a B.S. in mechanical
engineering. He received his J.D. from New York University School of

17
Law in 1984. Mr. Sganga has authored numerous articles on intellectual
property law issues. Mr. Sganga was awarded the Rossman Award by the
Patent and Trademark Office Society in 1990 for his article regarding the
constitutionality of direct molding statutes. Mr. Sganga has lectured on
intellectual property law issues for CEB, PLI, UC Irvine, and other groups.
Mr. Sganga served as President of the Orange County Barristers and has
served on the Board of Directors of the Orange County Bar Association.
DAVID W. BEEHLER is a coauthor of chapter 12. He is of counsel to the
Minneapolis office of the national law firm of Robins Kaplan LLP. He
practices in all areas of business litigation, with an emphasis in intellectual
property litigation. He has experience in patent, trademark, and copyright
litigation, having represented clients in federal courts around the country
in such matters. Some of the clients Mr. Beehler has represented include
Unocal, Best Buy Co., Inc., and Blue Cross Blue Shield of Minnesota. Mr.
Beehler is a member of the Missouri, Kansas, and Minnesota bars, the
related state and federal courts, including the Federal Circuit, Eighth, and
Ninth Circuit Court of Appeals, and the United States Supreme Court. He
obtained his B.S., summa cum laude, in English from St. Cloud State
University, Minnesota, and his J.D., cum laude, from the University of
Minnesota in 1985.
MUNIR R. MEGHJEE is a coauthor of chapter 12. He is a partner in the
Minneapolis office of Robins Kaplan LLP. He is an experienced litigator
and trial lawyer with over two decades of representing a diverse client base
in a broad variety of matters focusing on patent rights, trade secrets, and
other forms of intellectual property. He has particular experience in
helping clients realize and protect the full value of their intellectual
property assets and investments through licensing, sale, and enforcement
of patent rights. Mr. Meghjee’s national practice has included representing
corporations and academic institutions on both sides of patent and trade
secret litigation in both state and federal court, as well as at the appellate
level. His clients span a broad spectrum of industries and technologies,
including the Internet, computer hardware, software and software systems,
and medical devices. Mr. Meghjee has taught trial advocacy for the
National Institute of Trial Advocacy (NITA), and has also taught trial
advocacy internationally as an instructor with the Lawyers Without
Borders Support Through Trial Advocacy Training Program in Nairobi,
Kenya. Mr. Meghjee received his B.A. from Colorado College and his
J.D., cum laude, from Northwestern University School of Law, where he
was Articles Editor for the Law Review.
DAVID A. PRANGE is a coauthor of chapter 12. He is an attorney in the

18
Minneapolis office of Robins Kaplan LLP. His practice focuses on
complex litigation with an emphasis on intellectual property, including
patents, trademarks, and trade secrets. He is experienced in patent
infringement litigation in multiple technology areas, including computer
hardware and software, consumer and commercial water filtration and
purification, wireless sensor monitoring, and irrigation control. Mr. Prange
is a registered patent attorney. He has a B.A. in biology, magna cum laude
and Phi Beta Kappa, from Saint Olaf College. He received a J.D. with high
distinction from University of Nebraska—Lincoln College of Law, where
he was a member of the Order of the Coif.
JAMES R. BARNEY is a coauthor of chapter 13. He is an attorney in the
firm of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and
received a J.D. from Yale Law School (1999). Mr. Barney’s practice
involves patent litigation, opinion writing, and client counseling, primarily
in the chemical, cosmetic, and pharmaceutical areas.
J. DEREK MCCORQUINDALE is a coauthor of chapter 13. He is an
associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP,
where he focuses his practice on patent litigation, at both the trial and
appellate levels. He has appeared in cases before federal district courts, the
International Trade Commission (ITC), and the U.S. Court of Appeals for
the Federal Circuit, where he has contributed to several successful appeals.
He received a J.D., cum laude, from Duke University School of Law.
PAUL D. TRIPODI II is a coauthor of chapter 14. He is a partner in
Wilson Sonsini Goodrich & Rosati’s intellectual property litigation
practice, where he focuses on patent litigation. Prior to joining the firm, he
was a partner in the Los Angeles office of Sidley Austin LLP, where he
was a member of the West Coast intellectual property and technology
practice. Paul has been involved in both bench and jury trials, as well as
proceedings before various international tribunals and the International
Trade Commission. In addition to his work as an IP litigator, he volunteers
as a Criminal Prosecutor on behalf of the State of California. Prior to his
graduation from UCLA School of Law, Paul earned a B.S. in Chemistry
from the Pennsylvania State University and an M.S. in Chemical Physics
from the California Institute of Technology.
ELLEN S. ROBBINS is a coauthor of chapter 14. She is partner in the Los
Angeles office of Sidley Austin LLP and a member of the firm’s
Intellectual Property Litigation and Complex Commercial Litigation
groups. Prior to 2015, Ms. Robbins practiced in the Firm’s Chicago office
for more than twenty-two years. She has extensive experience handling
matters on behalf of public and private companies all over the world in

19
both state and federal court, with a particular emphasis on intellectual
property litigation, as well as commercial matters involving breach of
contract, fraud, unfair competition, alter ego, securities law, insolvency,
and misappropriation. Ms. Robbins has worked on numerous matters and
has had multiple trials before the International Trade Commission (ITC),
and has successfully litigated numerous patent cases, including the
landmark Microsoft/Motorola RAND royalty cases. Ms. Robbins has been
a partner of the firm since 1999. Before joining the firm, she clerked for
the Honorable Charles P. Kocoras of the U.S. District Court for the
Northern District of Illinois. She received her J.D., magna cum laude, from
Harvard Law School, and her B.S. in Business Management, summa cum
laude, from the University of Illinois.
GRACE PAK is a coauthor of chapter 14. She is an associate in the Los
Angeles office of Wilson Sonsini Goodrich & Rosati, where her practice
focuses on patent litigation. Her experience in patent litigation involves
technologies such as Internet technology and nutritional supplements. Ms.
Pak also has significant experience prosecuting numerous patent
applications and counseling clients for a variety of technologies, including
medical devices, optics, display devices, computer hardware, and software.
She received her J.D., cum laude, from the UC Hastings College of the
Law, where she was the recipient of awards for excellence in copyrights,
trademarks, and contracts; her B.S. in Biomedical Engineering is from
Northwestern University. During law school, Ms. Pak served as a judicial
extern to the Honorable Charles R. Breyer of the U.S. District Court for
the Northern District of California. Prior to joining the firm, she was an
associate at Knobbe, Martens, Olson & Bear, LLP.
MATTHEW KREEGER is a coauthor of chapter 15. He is a partner at
Morrison & Foerster LLP, and specializes in intellectual property trials, as
well as patent interferences and reexaminations. Mr. Kreeger received an
A.B. degree with highest distinction in mathematics from the University of
California at Berkeley in 1987. He received a J.D., magna cum laude, from
Harvard University in 1990. Following graduation, Mr. Kreeger served as
a law clerk to the Honorable Judith Rogers, District of Columbia Court of
Appeals. He joined Morrison & Foerster’s litigation department in 1991,
and became a partner in 1998. Mr. Kreeger is the chair of the firm’s patent
interference practice group, and frequently advises clients on patent
prosecution and pre-litigation strategy issues. He has represented
numerous life science clients and information technologies clients
including Novartis, Apple, and Yahoo!
LAURENCE H. PRETTY planned and edited the first two editions of this

20
book and was the original author of chapters 1 and 9. He has a solo patent
practice in Pasadena, focused on serving as consultant and expert witness,
acting as an ADR provider, and writing opinions on patents. For many
years, he was a trial lawyer with the firm of Pretty & Schroeder P.C., an
L.A. patent litigation boutique, and subsequently was a partner in Hogan &
Hartson LLP. He has tried many patent cases for companies of all sizes
before juries and to the court. He has also maintained a continuous
involvement in patent prosecution. Mr. Pretty was a law clerk at the U.S.
Court of Customs and Patent Appeals and taught as an adjunct lecturer in
patent law at U.C.L.A. Law School. He has been Chair of the IP Section of
the California State Bar and a Director of AIPLA. He received an
engineering degree from the Imperial College of Science and Technology,
U.K., and a law degree from George Washington University Law School.
Since 1996, he has been continuously listed in the publication The Best
Lawyers in America.

21
Table of Chapters

Chapter 1 Substantive Issues of a Patent Case

Chapter 2 Investigation Needed Before Bringing Suit
Chapter 3 Opening Phase
Chapter 4 Discovery and Privilege
Chapter 5 Attorney-Client Privilege and Work Product Immunity
Chapter 6 Case Strategy and Management
Chapter 7 Nondiscovery Motions and Court-Initiated Procedures
Chapter 8 Witnesses Special to a Patent Case
Chapter 9 Damages and Attorney Fees
Chapter 10 Injunctions
Chapter 11 Pretrial Proceedings
Chapter 12 Trial
Chapter 13 Appeal
Chapter 14 Patent Litigation Other Than District Court Infringement
Actions
Chapter 15 Challenging Validity in the PTO Under the 2011 America
Invents Act

22
Table of Contents

About the Contributors

Table of Chapters

Chapter 1 Substantive Issues of a Patent Case

Charles S. Barquist
§ 1:1 Introduction
§ 1:1.1 Generally
§ 1:1.2 The 1952 and 2011 Patent Acts
§ 1:2 Elements of a Patent Owner’s Case
§ 1:2.1 Title and Right to Sue
[A] Establishing Chain of Title
[B] Right of Exclusive Licensee to Sue
§ 1:2.2 Proof of Infringement
[A] Burden of Proof
[B] Acts of Infringement
[B][1] Direct Infringement Within the United States
[B][2] Infringement with Extraterritorial Component
[B][3] Induced Infringement
[B][4] Contributory Infringement
[B][5] Other Acts of Infringement
[B][6] Joint Infringement of a Method Claim
[C] Infringement of a Utility Patent
[C][1] Literal Infringement of a Patent Claim
[C][2] Claim Construction and Markman Proceedings
[C][3] Claims Containing a Means-Plus-Function Element
[C][4] Application of the Claim to the Accused Product or Process
[C][5] Infringement Under the Doctrine of Equivalents
[D] Infringement of a Design Patent
[E] Infringement of a Plant Patent
§ 1:2.3 Validity of the Patent
[A] Presumed Validity of Each Patent Claim
[B] Burden of Proof in Attacking Validity and Enforceability
[C] Right to an Earlier Effective Filing Date

23
 § 1:2.4 Remedies
§ 1:3 Defenses of Accused Infringer
§ 1:3.1 License and Assignment Defenses
[A] Licensee Estoppel Abrogation and Exceptions
[B] Implied License
§ 1:3.2 Noninfringement Defenses
[A] No Literal Infringement
[B] Limitations on the Doctrine of Equivalents
[B][1] Prosecution History Estoppel
[B][2] Prior Art As Limitation
[B][3] Disclosed but Unclaimed Embodiments
[C] Functionality Defense to Design Patent Infringement
[D] Repair Versus Reconstruction
[E] ANDA
[F] Prior Commercial Use Defense (Patents Subject to the 2011
Act)
§ 1:3.3 Defenses Against Patent Validity
[A] Expiration for Nonpayment of Maintenance Fees
[B] Collateral Estoppel by Prior Adjudication of Invalidity
[C] Lack of Novelty over the Prior Art Under Section 102
[C][1] The 1952 and 2011 Acts Differ in the Prior Art Applicable
to Applications Filed Before and After March 16, 2013
[D] Prior Art Under the 1952 Act
[D][1] Sections 102(a) and (b)
[D][2] Section 102(e)
[D][3] Section 102(g)
[E] Prior Art Under the 2011 Act
[E][1] Changes Expanding Prior Art
[E][2] One-Year Grace Period re Disclosures from the Inventor
[E][3] Derivation Proceedings Created; Interferences Eliminated
[E][4] Subsections of Sections 102 and 104 Dropped by the 2011
Act
[E][5] Tax Strategies Deemed Insufficient to Differentiate from the
Prior Art
[E][6] Best Mode Still Required but No Longer an Invalidity
Defense
[F] Obviousness (§ 103)
[F][1] Graham v. Deere and KSR Analyses
[F][2] Objective Evidence re Obviousness
[F][3] Obvious at What Time?

24
 [G] Misnamed Inventorship
[H] Inadequately Disclosed or Claimed (§ 112)
[H][1] Enablement
[H][2] Best Mode
[H][3] Written Description
[H][4] Indefinitely Claimed
[I] Abandonment
[J] Double Patenting
[K] Nonstatutory Subject Matter or Inoperativeness
§ 1:3.4 Defenses of Patent Unenforceability
[A] Inequitable Conduct Before the PTO
[A][1] Inequitable Conduct Generally
[A][2] Materiality
[A][3] Intent to Deceive
[A][4] Consequences of Inequitable Conduct
[B] Laches and Equitable Estoppel
[B][1] In Litigation
[B][2] Laches in Patent Prosecution
[C] Patent Misuse
[C][1] Tying Unpatented Supplies
[C][2] Compulsory Package Licensing
[C][3] Price Fixing, Field of Use, Territorial, and Post-Sale
Restrictions
[C][4] 1988 Patent Misuse Reform Act
§ 1:3.5 Patent Exhaustion
§ 1:4 Immunity of States
§ 1:5 Claims Against a Patent Owner
§ 1:5.1 Challenges to Patent Liability, Inventorship, or Validity
[A] For Declaratory Judgment
[B] To Reform Inventorship Under 35 U.S.C. § 256
[C] Challenging Validity in the PTO
§ 1:5.2 Claims for Damages Caused by Abuse of Patent Rights
[A] Unfair Competition Basis
[B] Antitrust Violation Basis
[B][1] Fraud on the PTO
[B][2] After an “Objectively Baseless” Prior Suit
[B][3] Reverse Payment Settlement
[C] Standards-Setting Issues

Chapter 2 Investigation Needed Before Bringing Suit

25
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