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    The Essential Case Law Guide to PTAB Trials

    By Susan P Pan, John M Bird, J Warren Lytle Jr, and Raja N Saliba

    The Essential Case Law Guide to PTAB Trials

    The Essential Case Law Guide to PTAB Trials

    By Susan P Pan, John M Bird, J Warren Lytle Jr, and Raja N Saliba

    Observing a consistency in the complex framework of decisions from the PTAB, the authors of this comprehensive resource provide a wealth of information to guide practitioners in their understanding of the Board's treatment of key issues. This compilation of PTAB decisions provides information and insights for planning PTAB strategies, based in part on specific patterns in the case law that have arisen during IPR, PGR and CBM proceedings. See Table of Contents under the "Read More" section.

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    "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

    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

    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

    Product Details


    ABA Book Publishing



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    Trim Size

    7 x 10

    Publication Date

    3/9/2018 12:00:00 AM

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