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.
Thus #FedCir makes precedential its conclusion in VirnetX (2019 non-prec). Patentee can’t tailor/“shapeshift” claim meaning through argument in IPR; instead we have amendment. NB: disclaimer made in IPR doesn’t bind that PTAB, but IS binding in *later* proceedings (PTO or DCt). twitter.com/patent_maven/s…
Cupp v Trend 11/16 #FedCir affirms s103 unpatentability of C’s 3 patents. “Security system processor” is “different” from phone processor but need not be “remote” (could be in single device). *New precedent*: C’s contrary disclaimer in the IPR did not bind PTAB; properly ignored.— Janice Mueller (@patent_maven) November 16, 2022
Cupp v Trend 11/16 #FedCir affirms s103 unpatentability of C’s 3 patents. “Security system processor” is “different” from phone processor but need not be “remote” (could be in single device). *New precedent*: C’s contrary disclaimer in the IPR did not bind PTAB; properly ignored.
But PTAB erred in construing “used for electrical interconnection” too broadly in method claim 20. Interconnect layers must at least be capable of carrying electricity. Preferable interpretation gives meaning to all terms in claim. #FedCir (WB) reverses/remands as to claim 20.
VLSI v Intel 11/15 #FedCir affirms s103 unpatentability of V’s apparatus claims. PTAB correctly interpreted “force region” of integrated circuit more broadly to include wire bonding as well as flip chip bonding. PTAB considered DCt’s interpretation but properly went beyond it.
Thus #FedCir finds no Due Process or APA violation where some of patentee's proposed claim amendments (e.g. changing “pump housing” to “valve enclosure”) were "non-substantive" & made “to achieve consistency and accuracy in terminology and phrasing” throughout its patent family. twitter.com/patent_maven/s…
AmericanNatl v SleepNumber 11/14 #FedCir agrees that PTAB in IPR can consider proposed substitute claims that both overcome the instituted ground & correct other "perceived issues" e.g. potential s101 or s112 problems, so long as claim scope not enlarged & no new matter intro'd.— Janice Mueller (@patent_maven) November 14, 2022
AmericanNatl v SleepNumber 11/14 #FedCir agrees that PTAB in IPR can consider proposed substitute claims that both overcome the instituted ground & correct other "perceived issues" e.g. potential s101 or s112 problems, so long as claim scope not enlarged & no new matter intro'd.
In re Apple 11/8 #FedCir mandamuses WDTx (Albright J), vacating scheduling order. "Clear abuse of discretion" to delay decision on A's venue transfer motion for 1 yr+, until full fact discovery & re-briefing. "[C]learly arbitrary refusal to act" on a long-pending transfer motion.
Amgen v Sanofi 2/11 #FederalCircuit affirms JMOL of non-enablement of antibody claims in IMPORTANT biotech case. Double-functional limitations of these "indisputably broad" claims pose "high hurdles"; full scope not enabled. Facts closer to Enzo, Wyeth, and Idenix than to Wands.— Janice Mueller (@patent_maven) February 11, 2021
Uniloc2017 v Google 11/4 #FedCir reverses DCt ruling that U lacked standing to sue G. U had given FortressCredit (financier) an “irrevocable” right to sub-license. But Termination Agrmt cancelled F’s license before suit. “Irrevocable” doesn’t bar termination by mutual agreement.
Finjan v ESET 11/1/22 #FedCir reverses DCt claim construction that limited "downloadable" to "small" programs. Using "small" in earlier application doesn't reinstate it in later family patents that purposely deleted "small," even though they incorporated earlier app by reference.
ABCCorp I v P'ship 10/28/22 #FedCir (Dyk J) reverses 2021 prelim injunction; DCt mis-analyzed design patent infringement. Per Egyptian Goddess (2008 en banc), prominent hourglass shape of A's hoverboard design cannot be basis for substantial similarity when prior art showed same.
IBM v Zillow 10/17 #FedCir 2-1 affirms R12c dismissal bcz claimed method of displaying data in layers is not s101 eligible. Abstract idea of displaying visual information. Result-based functional steps; no technical improvement. Dissent (KS): allegations plausible for 2 claims.
Thanks @Patently0 for highlighting that yesterday's modified majority opinion in NatureSim deleted discussion of deference to PTO examiners, citing Tinnus Enters. (2018 non-prec) (presuming that exr would not introduce an indefinite term when amending claim to make allowable). twitter.com/patent_maven/s…
NatureSimulation v AutoDesk 10/17/22 #FedCir majority (PN) reissues & modifies its 1/27/22 opinion after A's petition for rehearing, again reversing NDCal and upholding CAD invention using "modified Watson method" as 112/2 definite. Dissent (TD) says "manifestly incorrect." https://t.co/BAbSPJGndb— Janice Mueller (@patent_maven) October 17, 2022
NatureSimulation v AutoDesk 10/17/22 #FedCir majority (PN) reissues & modifies its 1/27/22 opinion after A's petition for rehearing, again reversing NDCal and upholding CAD invention using "modified Watson method" as 112/2 definite. Dissent (TD) says "manifestly incorrect." twitter.com/patent_maven/s…
NatureSimulation v AutoDesk 1/27 #FedCir 2-1 upholds CAD patent claim terms as 112/2 definite. NDCal reversed; erred in invalidating claims bcz A’s expert “raised questions” not answered therein. Failure to consider spec & pros history, which overcame PTO’s indef’ness rejection.— Janice Mueller (@patent_maven) January 27, 2022
Weisner v Google 10/13 #FedCir reverses DCt ineligibility dismissal as to claims of 2 out of 4 patents bcz they “add significantly more to th[e] abstract idea [improving search results w/ travel histories] by implementing a specific solution to a problem rooted in computer tech.”