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.
Trimble v PerDiemCo 5/12 #FedCir holds specific personal jurisdiction DOES exist in NDCal over patentee in this DJ action, based on "extensive" letters sent to T in Cal. asserting infringement & offering licenses/negotiate. Limits scope of Red Wing (2018), citing Ford (US 2021).
PacificBioscience v OxfordNanopore 5/11 #FedCir upholds jury v that P's claimed method for sequencing DNA was NOT full scope-enabled in 2009. Also affirms no new trial despite O's 3/2020 opening stmt to jury suggesting P trying to exclude O's method, useful in fighting Covid-19.
“Code Breaker” is an excellent read. The author makes the science accessible (& does a decent job on the patent aspects), but he really shines in telling the stories of the people involved—colleagues and competitors. Their interactions are not always pretty, but quite fascinating
@saveinventors Yes, it seems like a very fine/subjective line. But in this case, some of their “general ideas” also appeared in the prior art, which didn’t help.
This is a useful case focusing inter alia on obligation to assign "intellectual property" during employment and temporal aspects of inventorship; Circuit distinguishes its earlier decisions in Israel Bio-Engineering; FilmTec; and Stanford. twitter.com/patent_maven/s…
REJECTS arg that "a person’s work, just because it might one day turn out to contribute significantly to a later patentable invention and make the person a co-inventor, is itself protectible intellectual property before the patentable invention is made." Only "possible" IP. https://t.co/jJDGAK7rBF
— Janice Mueller (@patent_maven) April 29, 2021
REJECTS arg that "a person’s work, just because it might one day turn out to contribute significantly to a later patentable invention and make the person a co-inventor, is itself protectible intellectual property before the patentable invention is made." Only "possible" IP. twitter.com/patent_maven/s…
BioRad Labs v ITC 4/29/21 #FederalCircuit affirms 337 violation. Rejects B's defense of co-ownership of asserted 10X microfluidic patents. Named inventors had general "ideas" when earlier employed by B, "possible intellectual property," but conception was AFTER employment with B.
— Janice Mueller (@patent_maven) April 29, 2021
BioRad Labs v ITC 4/29/21 #FederalCircuit affirms 337 violation. Rejects B's defense of co-ownership of asserted 10X microfluidic patents. Named inventors had general "ideas" when earlier employed by B, "possible intellectual property," but conception was AFTER employment with B.
@SterneKessler Agreed. Their tone strikes me as, at least in part, a show of respect for the Federal Circuit (Judge Lourie authored Diamond Scientific). The Justices sound inclined to go with the DOJ’s proposal—keep assignor estoppel, with limitations.
Mojave v Crocs 4/21/21 #FederalCircuit grants FRAP 43b motion to substitute Mojave for bankrupt USADawgs as successor-in-interest in IPReexam of Crocs' iconic clog design patent. The right transferred as part of bankruptcy xfer of past infringement liability. O'Malley J dissents.
Raytheon v GE 4/16 #FederalCircuit reverses IPR s103 determination. Single prior art ref (1987 NASA memo) was not enabling. POSA could not physically make ref's turbine engine to achieve claimed power density. Ref contemplated unachievable properties using non-existing materials.
And likely future s315(e) estoppel of Apple to argue obviousness of Q's 2 patents does not confer standing. A's harm "particularly suspect" bcz no evidence of likely infringmnt after license expires. Circuit refuses to take judicial notice that A will sell smartphones in future.
Apple v Qualcomm 4/7 #FederalCircuit holds A has no Art III standing to appeal 2 lost IPRs. Q & A settled parallel litigation; 6-yr license; dismiss w/ prejudice. A's ongoing royalty obligations NOT injury in fact, unlike Medimmune. Possible infringmt post-license too speculative
Wi-Lan v Sharp 4/6 #FederalCircuit affirms SJ no infringement of W's video patent bcz source code from 3d pty chip mfrs not admissible as business record exception to hearsay FRE803(6). Declarants not available for trial; code not trustworthy. Also W can't use FRE703 as backdoor.
Did SCOTUS today in Google v. Oracle really mean to say that patents "protect novel and useful ideas"? See PDF 13, supremecourt.gov/opinions/20pdf…
See perkinscoie.com/en/professiona… twitter.com/patent_maven/s…
Outstanding news! CNN reports that President Biden has “nominated Tiffany Cunningham, a patent litigator in Chicago, to the Federal Circuit Appeals Court. She would be the first Black woman to serve on that court.”
— Janice Mueller (@patent_maven) March 30, 2021
Outstanding news! CNN reports that President Biden has “nominated Tiffany Cunningham, a patent litigator in Chicago, to the Federal Circuit Appeals Court. She would be the first Black woman to serve on that court.”
Reyna, J. provides apt metaphor for Alice step 2: it "is like a lifeline: it can rescue and save a claim that has been deemed, at step one, directed to non-statutory subject matter." But claim 1 here NOT saved in step 2. No inventive concept; additional limitations are WURC. twitter.com/patent_maven/s…
InReBdTrusteesStanford 3/25/21 #FederalCircuit holds computerized method of inferring haplotype phase in group of *unrelated* persons is patent-ineligible abstract idea. Same result for Stanford as 2 weeks prior in No. 2020-1012. "Greater computational efficiency" arg forfeited.
— Janice Mueller (@patent_maven) March 25, 2021
InReBdTrusteesStanford 3/25/21 #FederalCircuit holds computerized method of inferring haplotype phase in group of *unrelated* persons is patent-ineligible abstract idea. Same result for Stanford as 2 weeks prior in No. 2020-1012. "Greater computational efficiency" arg forfeited.
From today's 3/17 non-precedential #FederalCircuit opinion, In re Hu, FN2: "There are more things in heaven and earth, Horatio, Than are dreamt of in your philosophy." W. Shakespeare, HAMLET. PTO properly rejected "quantum entanglement" claims that "strain scientific principles."
Mylan v Janssen 3/12 #FederalCircuit holds per §314(d) no direct appeal exists from Director's *denial* of IPR institution (& no mandamus in this case), although decisions granting institution may be reviewable (to a limited extent) on direct appeal from a final written decision.
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