First published in April 2005, the Annotated Patent Digest is a “go-to” resource for federal judges, patent practitioners, and legal commentators addressing matters of U.S. patent law. Spanning forty-four chapters, in eight volumes, and well over 20,000 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By reviewing and analyzing on a daily basis every Federal Circuit published and unpublished patent-related opinion, and every U.S. federal district court patent case published on Westlaw, Mr.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.

West, a Thomson-Reuters business, the nation’s largest legal publisher, publishes the Annotated Patent Digest in a fifteen-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 twice per month. It is supplemented annually in hard copy.

In rendering rulings on patent matters, judges from the Federal Circuit and several federal district courts have quoted from and relied on the Annotated Patent Digest. E.g., Leviton Mfg. Corp. v. Universal Security Instruments, Inc., 606 F.3d 1353, 1373 (Fed. Cir. 2010) (Prost, J., dissenting); Eli Lilly and Co. v. Teva Pharmaceuticals USA, Inc., 557 F.3d 1346, 1351 n.* (Fed. Cir. 2009); Phillip M. Adams & Assoc., L.L.C. v. Dell Inc., 2010 WL 2733319, *7 (D.Utah Jul. 9, 2010); Hoskins v. Gunn Trucking, 2009 WL 2970399, *3 n.1 (N.D. Ind. Sept. 14, 2009); DR Sys., Inc. v. Eastman Kodak Co., 2009 WL 2632685, *4 (S.D. Cal. Aug. 24, 2009); Phillip M. Adams & Associates, LLC v. Dell, Inc., No. 1:05-CV-64 TS, 2008 WL 4862510, *2 n.12 (D. Utah Nov. 7, 2008); Phillip M. Adams & Assoc., L.L.C. v. Dell Inc., 2008 WL 4569895, *2 (D. Utah Oct. 9, 2008); Renhcol Inc. v. Don Best Sports, 548 F. Supp. 2d 356, 361 n.3 (E.D. Tex. April 28, 2008); Encyclopaedia Britannica, Inc. v. Magellan Navigation, Inc., 512 F. Supp. 2d 1169, 1176 (W.D. Wis. Aug. 31, 2007); Amgen v. F. Hoffman-LaRoche, Ltd., 456 F. Supp. 2d 267, 283 (D. Mass. Oct. 20, 2006); Monsanto Co. v. Bayer Bioscience N.V., 2005 WL 5989796, *16 (E.D. Mo. Oct. 28, 2005). International commentators have also relied on the Annotated Patent Digest when discussing aspects of U.S. patent law.

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.

As shown by the Chapter Listings to the right, 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.

Chapter Listings

1. General Aspects of a Patent
2. Sources of Legal Authority
3. General Principles & Procedures for Construing Patent Claims
4. Using a Term's "Ordinary" Meaning in Claim Construction
5. Using the Specification to Construe Claims
6. Using the Prosecution History to Construe Claims
7. Extrinsic Evidence, Validity Considerations, and Prior Adjudications in Claim Construction
8. Claim Construction of Means-Plus-Function Limitations
9. General Principles of Infringement, Enforcement Period, and Standing
10. Infringing Acts
11. Infringement Defenses
12. Proving Infringement & Literal Infringement
13. Doctrine of Equivalents
14. Prosecution History Estoppel
15. General Principles of Validity
16. Patent Applications
17. Novelty — 35 U.S.C.A. § 102
18. Obviousness
19. Double Patenting
20. Utility & Enablement
21. Best Mode
22. Written Description
23. Sufficiency of Claiming — § 112, 2
24. Miscellaneous Validity Requirements
25. Post-Issuance Corrections
26. Inventorship & Priority of Invention
27. Inequitable Conduct & Unclean Hands
28. Patent Misuse
29. Design Patents
30. Damages for Patent Infringement
31. Willful Infringement
32. Injunctive Relief
33. Attorney Fees
34. Bad-Faith Enforcement of Patent Rights
35. Patent Assignments
36. Jurisdiction & Venue
37. Declaratory Judgments
38. Preclusion by Prior Adjudications
39. Pre-Trial Procedure
40. Summary Judgment
41. Discovery
42. Privileges & Waiver
43. Post-Trial & Appellate Procedure
44. Evidentiary Issues

For information from Thomson West on ordering a hard copy of the Annotated Patent Digest visit Thomson’s on-line catalog at www.west.thomson.com. For accessing the Annotated Patent Digest on Westlaw, choose the database identifier ANPATDIG, or look for the Annotated Patent Digest under the Intellectual Property or Patent Practitioner tabs.