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.
My hometown bourbon @WoodfordReserve was mentioned (favorably) in this morning’s Supreme Court oral argument 😀
Check out @ChisumOnPatents's latest article, Fifty Years of Patent Law: The Top Ten Developments," here: chisum.com/wp-content/upl…
Intel v PACT XPP 3/13/23 #FedCir reverses PTAB. Claimed multiprocessor system would hv been obvious in view of 2 refs that each addressed same cache consistency problem. KSR’s rationale of using “known technique” to improve similar devices supplied the motivation to combine here.
Apple v Vidal 3/13 #FedCir: Although USPTO Dir’s discretion whether to institute an IPR is not reviewable, her decision to issue the Fintiv/NHK instructions to PTAB without notice & comment rule making is. Apple has standing to press its challenge to Fintiv under APA s553.
Regents U Mn v Gilead 3/6/23 #FedCir (AL) affirms Mn's patent anticipated. "Laundry list disclosure" of its provisional app did not supply adequate written description support for later claimed subgenus. Provisional's indeterminate "maze-like path" -> insufficient "blaze marks."
Note that pre-AIA s102(b) critical date was 11/7/2010, one year before US provisional appln filing date of 11/7/2011. #FedCir missed a teaching moment by referring generally to "priority date" instead of "US priority date." One-year clock didn't run from a foreign priority date. twitter.com/patent_maven/s…
Minerva v Hologic 2/15 #FedCir affirms D.Del that M's surgical device patent is s102b (pre-AIA) invalid: (1) in public use at pre-critical date trade show (physician attendees had "close scrutiny," no NDAs) & (2) ready for patenting (working prototypes needed only "fine tuning").— Janice Mueller (@patent_maven) February 15, 2023
Minerva v Hologic 2/15 #FedCir affirms D.Del that M's surgical device patent is s102b (pre-AIA) invalid: (1) in public use at pre-critical date trade show (physician attendees had "close scrutiny," no NDAs) & (2) ready for patenting (working prototypes needed only "fine tuning").
ChromaDex v Elysium 2/13 #FedCir affirms DDel that vitamin B3 supplement patent is s101 UN-eligible. "Very broad" claims to isolated nicotinamide riboside comp not markedly different from natural milk. This product of nature fails under Chakrabarty/Myriad; Mayo 2-step not req'd.
#FedCir also rejects as “meritless” C’s argument that Director delegating time-extension for FWDs in case of joinder to PTAB violates Appointments Clause. No evidence of contrary Congressional intent for Director to so delegate & Director is vested with “broad rulemaking powers.” twitter.com/patent_maven/s…
Cywee v Google 2/8 #FedCir affirms 2 IPR rulings that C’s claims unpatentable for obviousness. C’s untimeliness/Due Process arguments “meritless.” Nothing requires that Director review of PTAB institution & FWDs per Arthrex be accomplished within statutory 3-mo & 1-yr deadlines.— Janice Mueller (@patent_maven) February 8, 2023
Cywee v Google 2/8 #FedCir affirms 2 IPR rulings that C’s claims unpatentable for obviousness. C’s untimeliness/Due Process arguments “meritless.” Nothing requires that Director review of PTAB institution & FWDs per Arthrex be accomplished within statutory 3-mo & 1-yr deadlines.
In re Google 2/1/23 #FedCir mandamuses WDTex (Albright J) to xfer venue to NDCal, “clearly” the “center of gravity” here. DCt erred on multiple xfer factors. Jawbone’s earbud invention & G’s accused device were developed in NDCal. J rented office in Waco TX only 1 mo before suit.
A new NYTimes article criticizes big pharma for "gaming" the patent system, with particular focus on AbbVie's Humira: nytimes.com/2023/01/28/bus… Are reverse settlements of litigation (that antitrust law doesn't seem to prevent) as much at fault here as patent evergreening practice?
PMC v Apple 1/20 #FedCir 2-1 affirms EDTx: P's patent unenforceable for prosecution laches. Case "very similar" & "more egregious" than Hyatt. P filed 328 GATT-bubble apps. Unreasonable delay despite Consolidation Agrmt w/ PTO. Dissent: A didn't develop accused prod until after.
This is a good teaching case on patent claim interpretation and satisfying the definiteness requirement, authored by #FedCir Judge Chen. twitter.com/patent_maven/s…
Grace v Chandler 1/12 #FedCir resuscitates G's oil drilling viscometer patent. "Enlarged chamber" NOT indefinite. Although not term of art & not explicitly defined, intrinsic evidence -> "large enough" to do recited fn: avoid co-mingling 2 fluids. SDTx erred in using dictionary.— Janice Mueller (@patent_maven) January 12, 2023
Grace v Chandler 1/12 #FedCir resuscitates G's oil drilling viscometer patent. "Enlarged chamber" NOT indefinite. Although not term of art & not explicitly defined, intrinsic evidence -> "large enough" to do recited fn: avoid co-mingling 2 fluids. SDTx erred in using dictionary.
Instead, defendant (here TP-Link) must show that patentee “could have brought suit” in preferred venue (here CDCal) independent of def’s consent. FRCP 1404 fairness/convenience standard applies, not defendant’s unilateral wish. twitter.com/patent_maven/s…
In re Stingray 1/10 #FedCir grants mandamus to resolve deep DCt split, holding that defendant (here, foreign corp sued in EDTx) canNOT defeat personal jurisdiction under FRCP 4(k)(2) by unilaterally consenting post-suit to be sued in a different, preferred district (here, CDCal).— Janice Mueller (@patent_maven) January 10, 2023
In re Stingray 1/10 #FedCir grants mandamus to resolve deep DCt split, holding that defendant (here, foreign corp sued in EDTx) canNOT defeat personal jurisdiction under FRCP 4(k)(2) by unilaterally consenting post-suit to be sued in a different, preferred district (here, CDCal).
In re Google 1/9/23 #FedCir vacates PTO ex parte determination that search query filtering method claims wd hv bn obvious. PTAB didn’t explain how to modify prior art. “Squint as we may, we do not see the justifications invoked by the PTO on appeal reflected in the record below.”
Dionex v Agilent 1/6/23 #FedCir affirms interference priority to jr pty A. A's spec supports Bd's BRC of claims D copied. Prior actual RTP testimony by A inventor corroborated by 2 colleagues witnessing successful prototype. No negative infer from lack of A co-inventor testimony.
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