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.
Dyk J dissents. Claims indefinite. Unusually complex technology. DCt’s analysis satisfied SCt’s Nautilus test. Review de novo. Should not defer to amendment that added language suggested by examiner, overcoming PTO indefiniteness rejection. Majority is “manifestly incorrect.”
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.
ALJ abused discretion in permitting Kyocera’s tech expert Dr Pratt to testify on either literal or DOE infringement. Although extensively experienced w/ fastener driving tools, Pratt was admittedly not a person of ordinary skill in the art w/r/t power *nailer* design.
Kyocera v ITC 1/21 #FedCir vacates Commission finding of Koki’s s337 violation. ALJ erred in construing “lifter member” as not 112/6. It is a non-structural generic place-holder (member) modified by functional language (lifter). Remand to discern spec’s corresponding structures.
Evolusion v Juggernaut 1/14 #FedCir broadly construes “magazine catch bar” for semi-auto rifle to include OEM/factory-installed catch bars. Ordinary meaning. Spec does not need to show the specific embodiment. CD Cal’s SJ no literal infringement REVERSED & atty fees to J vacated.
Moore J dissent, continued: “After this case, negative limitations are supported by a specification that simply never mentions them.”
Moore J dissents. “Silence is not disclosure.” Majority’s ruling that WDR is satisfied for no-loading dose limitation contradicts Circuit precedent & nullifies MPEP’s guidance. N’s spec “eerily silent”; nothing affirmatively conveys inventor’s intent to exclude loading dose.
Novartis v HECPharm 1/3/22 #FedCir 2-1 (O’Malley) upholds validity of MS treatment patent. “Prophetic trial” in 2006 priority app satisfies written description req’t for 0.5mg/day dose and no-loading dose limitations. No heightened WDR for negative limitations. WDR = fact q.
Intel has Art III standing to appeal the IPR. Although Q sued only Apple (not Intel), Q read its claims onto Intel’s product in that suit. Although the Q-A suit settled, Intel continues to sell same product to A. Intel’s risks “transcend mere conjecture or hypothesis.”
Intel v Qualcomm 12/28 #FedCir approves PTAB’s “contextually appropriate” BRC construction of “RF input signal.” But PTAB erred in holding Q’s 3 substitute claims nonobvious. Per KSR, predictable combination of prior art teachings. Intel correctly combined the puzzle pieces.
@patentbuddy @ChisumOnPatents Thanks very much for asking. We are fine; our farm is in Central Kentucky, about 200 miles east of where the tornadoes hit. We had high winds, only. The pictures from Western Kentucky are absolutely horrific. Our state has never suffered this much devastation. @ChisumOnPatents
@patentbuddy Wow, really? Even though you use “about” in the written description?
2-1 decision on claim construction; majority opinion by Stoll J (w/ Hughes J); dissent by Taranto J. All three judges agree (w/ DCt) to sustain A’s patent against M’s obviousness challenge. Prior art taught away from claimed invention.
Accordingly, #FedCir vacates DCt’s judgment that Mylan’s generic inhaler composition infringes and remands for fact-finding on whether M’s product has precisely 0.001% PVP stabilizer with only minor variations, i.e., 0.00095% to 0.00104%.
AstraZeneca v Mylan 12/8/21 #FedCir holds failure to use “about” to modify “0.001%” in claim, plus spec & pros history emphasis on criticality of amount, means VERY narrow claim interpretation, not 0.0005-0.0014% as patentee sought. Tiny concentration Δ = big impact on stability.
Prior art range cases not applicable. Substantial evidence supported PTAB's finding that general working conditions disclosed in prior art did not encompass the claimed invention, i.e., there was no overlap in ranges. Prior art capped range of co-administration dosages at 300.
#FedCir rejects argument that T wrongly had to show expectation in prior art that the *specific* claim-recited dosage would have been safe. Reasonable expectation is tied to claim scope. T had to prove reasonable expectation of success in achieving the 600 mg dosage, but didn't.
Teva v Corcept 12/7 #FedCir sustains as unobvious C's patent to treat Cushing's by admin'g 600mg/day mifepristone & strong CYP3A inhibitor. Prior art didn't provide *any* expectation of success above 300 dose. PTAB didn't require "precise predictability." T's expert inconsistent.
In this appeal, #FedCir affirms PTAB's IPR decision that the claims of A's U.S. Patent 8,058,069 are not unpatentable as obvious. Second appeal decision today concerns anticipation of certain claims of A's U.S. Patent 9,364,435.
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