Spanning forty-four chapters, in seven volumes, and well over 14,000 pages, the Annotated
Patent Digest provides comprehensive coverage of U.S. patent law principles and authority, including statutes; legislative histories; PTO regulations; pertinent MPEP provisions; and Supreme Court, Federal Circuit, CCPA, and district court precedent addressing both substantive and procedural aspects of litigating patents or procuring patents in the PTO.
By reviewing and analyzing on a daily basis every Federal Circuit published and unpublished patent-related opinion, and every U.S. federal district court patent case published on Westlaw, Mr. Matthews keeps himself and the Annotated
Patent Digest continuously updated on the most recent legal developments and trends in U.S. patent litigation.
Thomson-West, the nation’s largest legal publisher, publishes
the Annotated
Patent Digest in a seven-volume hard copy edition.
West also carries the Annotated Patent Digest on its Westlaw
electronic database under the database identifier “ANPATDIG.” On
Westlaw, the Annotated
Patent Digest is updated on a monthly basis. It
is supplemented annually in hard copy.
Based on his years of experience in crafting patent briefs and understanding what practitioners truly need from a treatise to draft winning briefs, Mr. Matthews engineered the structure of the case cites of the Annotated
Patent Digest to quickly provide a practitioner with sufficient information to know if a case likely has true merit for citing in a legal brief or a response to a PTO office action.
As a significant point of distinction, most treatises contain footnote string cites to support a stated legal proposition. These footnote string cites often do not include information critical to knowing whether the case is worth citing in a brief or to fully understand the factual context of when a given legal proposition properly applies. Indeed, many footnote string cites include a case cite and perhaps a quote stating the legal proposition, but upon reading the case it becomes evident that the court found an exception to the proposition or merely stated the proposition in passing dicta. Such cases generally do not instill persuasive power to arguments made in a brief.
In the Annotated Patent Digest, instead of footnote string cites Matthews provides individual case cites having detailed parentheticals. Each case parenthetical typically includes three important elements: i) a quotable quote from the court stating the legal proposition; ii), a summary of the relevant facts and how the court applied the proposition in view of those facts; and iii) the ultimate outcome of the case. Armed with this information, a practitioner will quickly know whether a given case is likely to support a contention made in a brief, opinion, or PTO response. {To see a sample section of the Annotated
Patent Digest with representative case parenthetiticals click on the following link § 23:13.50
Simultaneously Claiming an Apparatus and Method of Using
the Apparatus}
As shown by the Chapter Listings below, the Annotated
Patent Digest covers the full spectrum of issues encountered in litigating patents and a wealth of material applicable to prosecuting patent applications before the U.S. Patent and Trademark Office. Of its forty-four chapters, thirty four are directed to substantive issues of patent law. The remaining ten chapters address procedural issues as applied specifically to patent litigation. In each chapter, the significant legal aspects of the subject matter are presented in numerous individual sections and organized with a comprehensive table of contents for ease of searching.
(click on chapter
name to see Table of Contents for each
individual chapter) |
| General
Aspects of a Patent |
| Sources
of Legal Authority |
| General
Principles & Procedures for Construing Patent Claims |
| Using
a Term's "Ordinary" Meaning in Claim Construction |
| Using
the Specification to Construe Claims |
| Using
the Prosecution History to Construe Claims |
Extrinsic
Evidence, Validity Considerations, and
Prior Adjudications
in Claim Construction |
| Claim
Construction of Means-Plus-Function Limitations |
General
Principles of Infringement, Enforcement Period,
and Standing |
| Infringing
Acts |
| Infringement
Defenses |
| Proving
Infringement & Literal Infringement |
| Doctrine
of Equivalents |
| Prosecution
History Estoppel |
| General
Principles of Validity |
| Patent
Applications |
| Novelty — 35
U.S.C.A. § 102 |
| Obviousness |
| Double
Patenting |
| Utility & Enablement |
| Best
Mode |
| Written
Description |
| Sufficiency
of Claiming — § 112, 2 |
| Miscellaneous
Validity Requirements |
| Post-Issuance
Corrections |
| Inventorship & Priority
of Invention |
| Inequitable
Conduct & Unclean Hands |
| Patent
Misuse |
| Design
Patents |
| Damages
for Patent Infringement |
| Willful
Infringement |
| Injunctive
Relief |
| Attorney
Fees |
| Bad-Faith
Enforcement of Patent Rights |
| Patent
Assignments |
| Jurisdiction & Venue |
| Declaratory
Judgments |
| Preclusion
by Prior Adjudications |
| Pre-Trial
Procedure |
| Summary
Judgment |
| Discovery |
| Privileges & Waiver |
| Post-Trial & Appellate
Procedure |
| Evidentiary
Issues |
For information from Thomson West on ordering a hard copy of the Annotated Patent Digest click here (this link will redirect you to the Thomson West on-line catalog)
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