Book Review: Patent Ethics: Litigation

Book Review: Patent Ethics: Litigation. David Hricik. Oxford University Press, 2010. ($225.00, paperback, ISBN:978-0-19-536709-6, 288 pages).

David Hricik’s latest book, Patent Ethics: Litigation, is a necessary reference for any law firm or company handling intellectual property work and for students pursuing this area of law. Hricik, a former chair of ethics committees of the American Intellectual Property Law Association and the Intellectual Property Section of the American Bar Association and a recognized patent ethics expert, gives extensive analyses of pitfalls and solutions that the patent litigator may encounter.

The book addresses many problems common to any type of civil litigation but “focuses primarily on those more likely to arise in patent, as opposed to general commercial litigation.” Hricik begins by explaining the complications involved in determining what ethical rules and interpretations can apply in patent lawsuits. He discusses the four sets of rules that can be relevant: the Model Code of Professional Responsibility, the Model Rules of Professional Conduct, State disciplinary rules, and the United States Patent and Trademark Office code. The rest of the book is arranged chronologically. The author discusses conflict of interest checks and progresses through issues arising during pre-pleading investigations, pre-suit investigations and pre-suit enforcements efforts, and trial matters. Sections discussing these patent litigation issues are particularly helpful: ambiguities as to what can be considered expert testimony, obligations of experts and attorneys who may obtain access to an opposing party’s proprietary information during discovery, consequences of spoliation that can range from adverse inferences to unenforceability of patents, combining patent prosecution with other forms of representation, and abbreviated new drug application (ANDA) certifications.

Hricik expertly weaves the specifics of patent litigation ethics into his explanation of general litigation ethics topics like proper courtroom conduct. He not only explains the complications of patent litigation ethics but offers solutions for avoiding and solving them. His text is clear and logical. All conclusions are thoroughly documented and supported. Chapters contain a generous number of brief headings that make the book easy to browse. The book is small enough to take to court yet comprehensive enough to be an aid to the most complicated case. It is copiously and thoroughly footnoted. The Table of Cases and Index provide a thorough guide to relevant cases. This book should not serve as an introductory guide; the author presupposes a thorough knowledge of the patent prosecution and litigation process.

Since the creation of the Federal Circuit in 1982 patent litigation and the amount of its potential rewards and losses has increased, thus creating the need for this unique guide that should be an essential part of the patent litigator’s repertoire.

This book is a follow-up to Hricik’s 2009 book Patent Ethics: Prosecution, also released by Oxford University Press.

Donna M. Fisher is the law librarian at Senniger Powers LLP, an intellectual property firm in St. Louis MO.