Welcome to the authorial website of Janice M. Mueller. Based in Lexington, Kentucky, Janice is the sole author of two patent law treatises, co-founder of the Chisum Patent Academy, a full-time academic teaching patent and intellectual property courses for 16 years, a former U.S. Justice Department patent litigator, and a law clerk (1990-92) to Judge Giles S. Rich of the U.S. Court of Appeals for the Federal Circuit. Janice’s published writings and commentary focus on the patent law decisions of the Federal Circuit, which holds exclusive appellate jurisdiction for U.S. patent cases and proceedings, and the U.S. Supreme Court.
Mueller on Patent Law is a comprehensive yet accessible two-volume legal treatise for patent practitioners, available as of 2021 in hard copy from Full Court Press or in digital form on the Fastcase legal research database. This well-organized resource provides concise and timely access to U.S. patent law in the twenty-first century, focusing on game-changing Federal Circuit and Supreme Court decisions.
No longer an obscure specialty, patent law protects intellectual assets of tremendous economic value in the global economy. For better or worse, patent practitioners now confront a tsunami of information and advice offered by websites, blogs, specialty journals, and even smartphone apps. Mueller on Patent Law provides a clearly structured filter through which to absorb the content flood. Rather than a historical encyclopedia, this treatise is a carefully curated guide to understanding the current state of patent law and how it has developed during the Federal Circuit’s tenure.
Volume I of Mueller on Patent Law focuses on the requirements for patentability, both pre- and post-America Invents Act of 2011 (AIA), as well as patent prosecution procedures. Volume II covers patent enforcement and validity challenges, including AIA-implemented post-issuance USPTO review. Both volumes emphasize the criticality of patent claim drafting and interpretation.
Volume I of Mueller on Patent Law covers patentability and validity. It offers a clear-cut approach to understanding the multiple, rigorous requirements for obtaining a U.S. patent. Following introductory chapters overviewing the patent system and the central importance of patent claims, Volume I explicates the cornerstone requirement of novelty and what counts as prior art under both pre- and post-AIA regimes. Volume I also tackles the amorphous landscape of patent eligibility, as well as the bedrock requirements that a patentable invention be useful and not only new but nonobvious. Separate chapters unpack the patent application disclosure requirements of enablement, written description, and best mode. Volume I concludes with chapters analyzing inventorship, the prohibition on double patenting, and the nuts and bolts of prosecuting patents in the USPTO.
Volume II of Mueller on Patent Law analyzes how patents are enforced in the United States and their validity challenged. The volume details patent litigation in the federal courts as well as the America Invents Act (AIA)-implemented proceedings for challenging patentability (IPR, PGR, and CBM). Claim interpretation, jurisdiction and procedure including recent sweeping changes to patent venue, direct and indirect liability (including inducing, contributory, and divided infringement), territoriality concerns, literal and doctrine of equivalents (DOE) infringement, prosecution history estoppel and other legal limitations on DOE liability, declaratory judgment actions, Hatch-Waxman Act pharmaceutical litigation, antitrust issues, remedies, and defenses including inequitable conduct, exhaustion, patent misuse, laches, and equitable estoppel all receive thorough and timely treatment. Because patent protection is frequently global, Volume II explores multi-national procurement and enforcement. Reexamination and reissue in the USPTO are detailed, as is the increasingly important subspecialty of design patent law.
Patent Law delivers a succinct, single-volume explanation of the principal legal doctrines, key judicial authority, governing statutes, and guiding policy considerations in obtaining and enforcing a U.S. patent.
This is the best of the hornbooks on the basics of the patent law. I am both a partner in a law firm who specializes in patent litigation, and an adjunct professor of law. I have been practicing in the field for almost 20 years, and I still find myself going back to this book for easy-to-find, clear and concise answers to patent law questions.
Click here to watch Janice’s March 18, 2021 webinar with Fastcase: “A Conversation with Janice Mueller, Author of Mueller on Patent Law.”
Full Court Press, an imprint of Fastcase, Inc., is the new publisher for the two-volume practitioner treatise, Mueller on Patent Law. Ordering information for hard copy and digital access is available below.
EnergyHeating v HeatOnTheFly 10/14 #FedCir affirms DCT atty fee award to DJ π EH; exceptional case. Prior appeal affirmed patentee HOTF engaged in inequitable conduct. HOTF’s case substantively weak & manner of litigating unreasonable. DCt not req’d to find litigation misconduct.
MobilityWorkX v UnifiedPatents 10/13/21 #FedCir 2-1 rejects new Constitutional challenges to AIA. Due Process not violated. PTAB members do not have financial incentive to institute IPRs to get fees; Congress controls PTO budget. Tumey (US 1927) not violated. Newman J dissents.
TraxcellTechs v Nokia 10/12/21 #FedCir affirms SJ no infringement of 3 wireless telecom patents. DCt’s claim construction correct; clear & unmistakeable prosecution disclaimers. Insufficient evidence for literal infringement. PHE bars DOE infringement. Unmistakable surrender.
Kannuu v Samsung 10/7/21 #FedCir affirms SDNY’s refusal to compel S to seek dismissal of its IPRs. Q of 1st impression. Forum (NY) selection clause in K-S NDA, signed 6+ years before suit, is too tenuously connected to the IPRs. NDA dealt with confidentiality, not patent rights.
Cosmokey v DuoSecurity 10/4/21 #FedCir resurrects telecom patent held 101-ineligible by DCt. Per Alice step 2, claims recite a "specific improvement to a particular computer-implemented authentication technique," whether or not abstract under A step 1. Method steps were not WURC.
@ChisumOnPatents Wikipedia reports that F. Reporter was published 1880–1924, F.2d Reporter was published 1924-1994, F.3d Reporter was published 1993-2021, and now we have F.4th from 2021-??. Plus the earlier reporters included more than just the appellate decisions.
InReVivint 9/29/21 #FedCir holds even though accused infringer’s ex parte reexam request raised substantial new q patentability, PTO should have denied it under s325(d) after already denying three nearly identical IPR petn’s on same patent. PTO was arbitrary/capricious under APA.
SRI v Cisco 9/28 #FedCir reverses JMOL & reinstates jury v that C willfully infringed after May 2012 & 2x damages enhancement. Clarifies that willful infringement = deliberate infringement, but doesn’t require wanton/malicious/bad faith. Atty fees for exceptional case affirmed.
InReJuniperNetwks 9/24 #FedCir mandamuses WDTex (Albright J) again & orders BrazosLLC's case transferred to NDCal. B's showing on witness convenience & other factors "very weak." B's Waco office is recent/insubstantial. Ct congestion "speculative." B is a NPE; no need for speed.
InReMaxPower 9/8 #FedCir refuses to mandamus PTAB for instituting IPR despite arbitration clause in license agrmt. Issue of 1st impression. O'Malley j. dissents extensively: 35 USC. §294 prevents institution of agency proceedings initiated by a party to an arbitration agreement.