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.
Intact, not entact 😒
Today's Order List:
Certiorari DENIED in American Axle!
Static v Leader 6/28 #FedCir 2-1 reverses DCt's civil contempt award of sanctions/fees for protective order violation. Fair ground of doubt as to whether pr order barred L atty's disclosure of info to non-party's atty (also signatory to order) to develop a joint defense strategy.
UMass v L'Oreal 6/13 #FedCir vacates indefiniteness ruling on skincare patent. DCt erred in construing adenosine's "concentration applied to dermal cells" as concentration in skin. Per spec & pros history, term refers to concentration *in the composition* applied to skin surface.
@McCoySmith @patentbuddy Not mentioned
@Patent_assoc Interesting; thank you. Assume you use Matthews on-line in Westlaw?
#FedCir further holds no error in P's profit-split damages theory; earlier license's profit % representation provided greater context for royalty rate. License sufficiently comparable such that apportionment was built-in & accounted for non-infringing features of accused product.
#FedCir further holds "reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement." "An obvious minor clerical error, by definition, does not mask that meaning, so Kingston cannot hide behind the error to escape the jury’s verdict."
Pavo v Kingston 6/3 #FedCir sustains jury v that K willfully infringed USB flash drive patent -> $7.5M reas royalty + 50% enhance. CDCal properly corrected obvious minor clerical error in claims. Chef America distinguished. Applicant's meaning was clear & pros history consistent.
@Patent_assoc What are your go-to treatises on Westlaw?
ClearOne v Shure 6/1/22 #FedCir affirms IPR decision that "self-similar configuration" term in S's proposed new claim for ceiling microphone array is not indefinite. Well-known meaning. Spec equates (not contrasts) term to fractal-like or repeating patterns. Not a term of degree.
Lastly, Circuit rejects Arthrex‘s argument that PTAB did not have authority to consider s112 written description compliance issue. The ground for IPR was s102 anticipation. It was proper for PTAB to determine s120 priority of challenged claims (req’g WDR analysis) vs. ref’s date.
Director’s (PAS officer’s) discretion under Arthrex (US 2021) includes discretion to delegate review of IPR rehearing requests. Duty to decide them is delegable under Federal Vacancies Reform Act. No FVRA violation here.
Arthrex 5/27 #FedCir holds although Commissioner for Patents is not a Presidentially appointed Senate-confirmed (PAS) officer, he properly issued the final decision here in an acting, stand-in capacity on behalf of the PAS. See Eaton (US 1898). No Appointments Clause violation.
@MichaelKHenry @PatentMemes As @ChisumOnPatents has noted, Justice Breyer (author of Mayo) will no longer be on the Court. Anything is possible.
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![test Twitter Media - Need insight on “built-in apportionment” in #patent damages? When are past licenses sufficiently comparable to the hypothetical negotiation? The latest digital update to Mueller on Patent Law treatise from #Fastcase analyzes relevant #FedCir decisions. See MOPL s20.04[B][3][b]. https://t.co/5AEEdQY2qi](https://pbs.twimg.com/media/FU0Q7qMWIAgRu2h.jpg)