Addendum to Intellectual Property Law Certification Application
Exhibit "B," Section III- Patent Infringement Litigation
Contested Matters and Adjudicated Decisions Form
EXHIBIT B; III, A
2.Patent Infringement Litigation. See Rule 6-26.3(c)(2).
a.I have handled, with senior-level responsibility, contested matters in litigation or on appeal in which there was an adjudicated decision.
b.I have devoted approximately hours per year to litigation matters, generally.
c.I have devoted approximately hours per year to patent infringement litigation.
d.Within the last 10 years, I have tried a patent infringement litigation matter to the close of testimony, verdict or judgment. Yes No
e.I have verified substantial involvement in patent infringement litigation at a government agency. Yes No
f.I am demonstrating practical experience in Patent Infringement Litigation in accordance with Rule 6-26.3(c)(2). Yes No
*If you responded “Yes” to question 6 above, please complete and attach the Initial Certification Patent Infringement Litigation Addendum. This form can be found online by visiting and viewing the page for Board Certification in Intellectual Property Law.
INSTRUCTIONS
6-26.3(c) Experience. During the 5 years immediately preceding application, the applicant must comply with the experience requirements set forth below:
(2)Patent Infringement Litigation.The applicant must have handled with senior-level responsibility a minimum of 5 contested matters in litigation or on appeal in which there was an adjudicated decision. Additionally, applicants shall have devoted a minimum of 800 hours per year to litigation matters generally, at least 300 hours per year of which shall have been devoted to patent infringement litigation; and applicant shall have, within the last 10 years, tried a patent infringement litigation matter to the close of testimony, verdict, or judgment. The applicant shall submit work product samples and a transcript (if available) in each such contested matter. For good cause shown, for satisfaction in part of the minimum requirements, verified substantial involvement in patent infringement litigation at a government agency may be considered. Verified substantial involvement in other areas of intellectual property law may also be considered to demonstrate overall proficiency.
This form should be used to demonstrate experience in contested matters and/or adjudicated decisions handled with senior-level responsibility in intellectual property law during the five years immediately preceding application.
“Contested matters” shall be defined as hearings before a tribunal or court that are adversarial, evidentiary, and binding in which the applicant has had a senior-level responsibility, and in which the applicant evaluated, handled, and resolved issues of fact and law in a dispute that involved a patent, either by reaching an adjudicated decision or by achieving a settlement before final adjudication or appeal.
An “adjudicated decision” shall mean a decision resulting from a proceeding in which: a tribunal rendered a decision on a motion for preliminary injunction following an evidentiary hearing involving live testimony; a tribunal rendered a decision on a motion for summary judgment; a tribunal rendered a decision on significant issues of patent law following briefing (e.g., a Markman hearing, a Daubert hearing, etc.); or a tribunal or jury rendered a decision following a trial, or the federal circuit court of appeals rendered a decision following an appeal. A single proceeding may generate multiple adjudicated decisions and an applicant shall receive credit for each such qualifying adjudicated decision as a separate contested matter; however, for purposes of certification, the number of adjudicated decisions from any single case shall be limited to 2.
You must complete one form for EACH contested matter/adjudicated decision.
Please answer each question thoroughly and concisely. Refer to Rule 6-26.3(c) for complete information regarding the specific requirements for each area of intellectual property law.
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation
Addendum to Intellectual Property Law Certification Application
Exhibit "B," Section III - Patent Infringement Litigation
Contested Matters and Adjudicated Decisions Form
You must complete one form for EACH contested matter/adjudicated decision.
1.Title of Action: ______
2.Case or Matter Number: Year Filed:
3.Tribunal: Venue:
4.Judge(s) or Arbitrator(s): ______
5.In the “adjudicated action,” did you substantially prepare, draft or participate in:
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation
a.Preliminary Injunction?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation
b.Depositions?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
c.Discovery Motions?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
d.Summary Judgment Motion?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
e.Summary Judgment Oral Argument?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
f.Markman Brief?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
g.Markman Hearing?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
h.Conduct Voir Dire Examination?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
i.Make the opening statement?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
j.Conduct direct examination(s)?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
k.Conduct cross-examination(s)?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
l.Make the closing argument?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
m.TTAB Trial Brief?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
n.JMOL - Rule 50 Motion?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
o.Substantially prepare or edit an appeal brief?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
p.Make the oral argument on appeal?
Yes
No
N/A
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
6.If you served as co-counsel, please explain in detail you role throughout the proceedings:
______
______
______
______
7.Please explain in detail what the primary intellectual property issues were before the tribunal:
______
______
______
______
8.Please identify all patents, trademarks, or copyrights at issue by the applicable registration numbers:
, , , .
9.Which party did you represent? ______
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation
10.Did you actively counsel clients prior to the adjudicated action?
Yes
No
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation
11.Did you actively participate in discovery of the matters at issue?
Yes
No
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Trademark Law Recertification
12.At what stage in the proceeding(s) was the matter concluded?
13.What was the ultimate outcome of the matter? Attach pertinent court decisions, if available.
14.Lead opposing counsel: ______
Contact information: ______
15.Attach additional information (if any) that makes this matter significant or especially memorable.
Addendum to Intellectual Property Certification Application, Exhibit "B," Section III: Patent Infringement Litigation