U.S. Patent Opinions and Evaluations

• Written by a well-respected senior counsel and PhD with years of extensive experience in intellectual property law as well as biotechnology and chemistry
• Uses a unique, strategic approach to provide guidance and real-life examples for patent litigators
• Comprehensive and forward-looking approach to patent evaluations and opinions with helpful practice tips and subject-matter organization for ease of reference

Readership: US patent attorneys, both law firm and in-house.

David L. Fox, Senior Counsel, Fulbright & Jaworski, LLP

Preface How to Best Use This Book
Chapter 1 Overview and Uses of Patent Noninfringement and Invalidity
Opinions
I. Purposes and Uses of Patent Noninfringement and Invalidity Opinions
II. Noninfringement Opinions
III. Invalidity Opinions
Chapter 2 Competency Of Opinions
I. Requirement for Competent Opinion
II. Claim Construction Required
III. Reliance of Cited, Up-to-Date, Properly Interpreted Law
IV. Timing for Opinions
V. Noninfringement Opinions
VI. Invalidity Opinions
VII. Final Opinion Should by in Writing
VIII. Level of Certainty
IV. Practice Tips
Chapter 3 Timing, Necessity of, and Reliance on Opinions
I. Knorr-Bremse Case
II. READ Factors Remain
III. Best to Obtain Opinion Upon Learning of Potentially Infringed Patent
IV. Waiver
V. Practice Tips
Chapter 4 Waiver of Attorney-Client Privilege and Work-Product Immunity
I. Production of Opinion
II. Waiver of Attorney-Client Privilege
III. Other Waivers
IV. Practice Tips
Chapter 5 Claim Construction
I. Competent Opinion Must Construe Claims
II. Evidence for Claim Construction
III. Claim Construction
VII. Practice Tips
Chapter 6 Establishing Basis for Noninfringement Opinions
I. Competent Opinion Must Construe Claims
II. Burden of Proof for Noninfringement is Preponderance of the Evidence (Centricut)
III. Carefully and Accurately Describe Client's Technology
IV. Advise Client in Writing, in Final Opinion, That Noninfringement Analysis and Opinion are Based Solely on Client's Product and/or Process as Described in Opinion, and That any Changes to Product and/or Process Must be Evaluated Anew for Noninfringement
IV. A. Begin With Analysis of Literal Infringement
V. Practice Tips
Chapter 7 Literal Infringement
I. Literal Infringement (35 U.S.C. §271(a))
II. Special Rules
III. Doctrine of Equivalents Must be Addressed if No Literal Infringement
IV. Practice Tips
Chapter 8 Doctrine of Equivalents
I. Infringement Under the Doctrine of Equivalents
II. Defining Equivalents
III. Special Claim Construction Rules for Equivalents
IV. Special Rules
V. Practice Tips
Chapter 9 Non-Direct Infringement, Experimental Use, and Implied License
I. Direct Infringement (35 U.S.C. §271(a))
II. Non-Direct Infringement
III. Inducement
IV. Contributory Infringement
V. Foreign Activity
VI. Importation of Product Made by Method Claim
VII. Experimental Use Exemption (35 U.S.C. §271(e)(1))
VIII. Implied License
IX. Practice Tips
Chapter 10 Establishing the Basis for Invalidity Opinions
I. Competent Opinion Must Construe Claims
II. Burden of Proof for Patent Invalidity is Clear and Convincing Evidence (Typeright Keyboard)
III. Multiple Avenues to Prove Invalidity
IV. No Need To Evaluate Client's Technology
V. Practice Tips
Chapter 11 Anticipation By Printed Publication
I. The Invention was Described in a Printed Publication More than One Year Before the Priority Date (35 U.S.C. §102(b))
II. Qualifying The Prior Art
III. Single Source of Prior Art Must Contain All of the Limitations of the Claim, Expressly or Inherently (Metabolite Laboratories)
IV. Weight of Prior Art
V. Parent Application as Prior Art Against Continuation-In-Part Patent
IV. Practice Tips
Chapter 12 Other Forms of Anticipation
I. On Sale Bar, 35 U.S.C. §102(b)
II. Public Use, 35 U.S.C. §102(b)
III. Known or Used by Others in the U.S., 35 U.S.C. §102(a)
IV. Patented or Described in a Printed Publication, 35 U.S.C. §102(a)
V. Described in a U.S. Patent Application Published by Another Filed in the U.S. Before the Invention Date, 35 U.S.C. §102(e)(1)
VI. Described in a U.S. Patent by Another Filed in the U.S. Before the Invention Date, 35 U.S.C. §102(e)(2)
VII. Derivation, 35 U.S.C. §102(f)
VIII. Prior Invention, 35 U.S.C. §102(g)
IX. Practice Tips
Chapter 13 Obviousness
I. Overview
II. Establishing a Prima Facie Case of Obviousness
III. Evidence For Rebuttal of Prima Facie Case of Obviousness: Graham Secondary Considerations
IV. Secondary Factors Cannot Rebut a Clear Case of Obviousness (Graham)
V. Summary of Nonobviousness Opinion
VI. Practice Tips
Chapter 14 Other Forms of Invalidity, Unenforceability
I. Written Description, 35 U.S.C. §112, First Paragraph
II. Enablement, 35 U.S.C. §112, First Paragraph
III. Best Mode, 35 U.S.C. §112, First Paragraph
IV. Indefiniteness, 35 U.S.C. §112, Second Paragraph
V. Utility, 35 U.S.C. §101
VI. Inequitable Conduct, Unenforceability
VII. Practice Tips
Appendix A Sample Outline of Noninfringement Opinion
Appendix B Sample Outline of Invalidity Opinion
Appendix C Subject Matter Index