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.
@patentlyo @TempletonCB Happy to hear it (as long as you're not *tearing up* my book!)
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.
BelcherPharm v Hospira 9/1 #FedCir affirms DDel’s inequitable conduct ruling. Patentee’s Chief Science Officer, who prosecuted patent, knew the alleged critical improvement was already in public domain. No excuse that he (non-agent/atty) mistakenly thought prior art “irrelevant.”
Dissent by Newman, J: Chung had actual notice because of prior collaboration with inventor/owner of patentee Lubby, who told him not to infringe when that collaboration ended. Jury heard about this. No sound basis to discard jury's verdict.
LubbyHoldings v Chung 9/1 #FedCir vacates jury award $864M. Patentee failed to mark e-cigarette product under s287; no pre-suit damages. That accused infringer knew patent issued is NOT s287 actual notice; requires "specific charge" of infringement by "specific accused device."
@HolbrookPatents @marklemley I doubt it. I'm thinking SCOTUS will be much more interested in the #FedCir's August 5 do-over opinion in GlaxoSmithKline v Teva (holding that Teva induced infringement via skinny label).
DataEngineTechs v Google 8/26 #FedCir rejects another "nose of wax" argument; holds that when (as here) patentee relied on preamble language to argue its claims are s101 patent-eligible, it cannot later assert that preamble term has no patentable weight in showing infringement.
Lack of amino acid sequence is not necessarily fatal but Juno's patent did not provide any identifying means such as common structural characteristics or shared traits. Broad genus claims here are similar to those in Idenix (2019) or AbbVie (2014). Ct distinguishes Capon (2005).
JunoTherapeutics v KitePharm 8/26/21 #FedCir wipes out $1.2B jury award; holds CAR T-cell genus claims w "exceedingly broad" functional limitations do NOT meet written description req't. Only 2 scFv fragments disclosed but "limitless" targets and no amino acid sequence provided.
NB from the CommScope opinion: "an argument that is only made in a footnote of an appellant’s brief is forfeited. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1319–20 (Fed. Cir. 2006) (citations omitted)."
CommScopeTechs v DaliWireless 8/24 #FedCir reverses JMOL, upending jury verdict. Patentee's expert failed to read claim on accused dev EXACTLY. No "hair splitting" to require this for literal infringmnt. Can't make "nose of wax" argument against anticipation but for infringement.
CampbellSoup v Gamon 8/19 #FedCir reverses PTAB in design patent IPR. Claimed design (some features of can dispenser) wd hv bn obvious. Nexus w commercial success not established via presumption or in-fact. Design’s “unique characteristics” were not linked to objective indicia.
Hyatt v Hirshfeld 8/18 #FedCir affirms DCt denial of PTO motion for expert witness fees under 35 USC 145 “all expenses of the proceeding.” “Expenses” does NOT include expert witness fees, similarly to no attorney fees per NantKWest (US2019). American rule presumption stands.
ValveCorp v IronburgInvention 8/17 #FedCir REVERSES Bd ruling that WayBackMachine printout of online promotional review wasn’t 102 printed publication. FRE 901 comparison to authenticate doesn’t require testimony. “Overwhelming” evidence of public accessibility pre-priority date.
PersonalWebTechs v Google 8/12/21 #FedCir affirms NDCal that data processing system patent w 1995 priority date is s101 invalid. Ct previously held that each of 3 claim steps is abstract concept, to give a “medley of mental processes.”
SeaBed v Magseis 8/11/21 #FedCir vacates PTAB decision that upheld seismometer patent. Bd's BRC construction of "geophone" as "non-gimbaled" too narrow. Bd erred in finding "special meaning" in prior art at invention date when intrinsic evidence clearly supported broader meaning
@DocketAlarm indicates that accused inducing infringer Teva yesterday (August 10) sought 30-day extension of time (until Oct 7) to file its petition for rehearing en banc of the #FedCir's new August 5 decision. Teva's motion is unopposed by GSK. Other litigation/travel cited.
For a backgrounder on the complex and controversial topic of inducing infringement via generic manufacturer's skinny labeling, see s17.02[A][4] of my treatise (on-line version only) on fastcase.com
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