"By employing a caselaw focus, this book makes itself a natural go-to reference for busy lawyers practicing before the PTAB or the Federal Courts. This Guide is well worth the desk-space to keep close at hand."
-- David J. Kappos, Cravath, Swaine & Moore LLP, New York, NY

This comprehensive resource offers a framework for understanding the Patent Trial and Appeal Boards' past practices to assist lawyers in more accurately predicting future PTAB actions. It follows the authors' observation drawn from years of study that there has been notable consistency in the body of decisions in case law decisions from the PTAB. It is the first resource to compile and organize a multitude of case decisions from the PTAB and outlines important fact patterns that have guided PTAB decisions. It provides commentary on facts that have led to divergent outcomes and explores critical issues specific to the PTAB in terms of claim construction and substantive patentability determinations.

The Essential Case Law Guide to PTAB Trials supplies a wealth of guidance on the Board's treatment of various issues, providing the legal practitioner with significant information to guide their PTAB strategies, noting specific patterns that have arisen during inter partes review (IPR), post-grant review (PGR) and transitory covered business method review (CBM). The authors explain the general procedure for each type of proceeding and summarize the rules and regulations at each phase.

Table of Contents

Preface
PART 1: TRIAL PROCEEDINGS
Chapter One: Introduction to Board Proceedings
Chapter Two: Petition to Institute Proceedings
Chapter Three: Patent Owner Preliminary Response to Petition Prior to Institution
Chapter Four: Board Decision on Institution of Proceeding
Chapter Five: Patent Owner Response to Petition Following Institution
Chapter Six: Patent Owner’s Motion to Amend Claims
Chapter Seven: Petitioner Reply to Patent Owner Response
Chapter Eight: Submissions Following Petitioner Reply
Chapter Nine: Oral Hearing before the Board
Chapter Ten: Termination of Proceeding and Appeals

PART 2 SUBSTANTIVE, PROCEDURAL, AND EVIDENTIARY MATTERS CONSIDERED DURING TRIAL PROCEEDINGS
Chapter Eleven: Claim Construction
Chapter Twelve: Patentability of Challenged Claims
Chapter Thirteen: Discovery
Chapter Fourteen: Evidence
Chapter Fifteen: Motions Practice before the Board
Chapter Sixteen: Estoppel Provisions Arising from Board Proceeding

Table of Cases and Index