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.
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.
Moderna (IPR ptr) has Art.III standing here. M risks facing infringement suit based on combination of its activities in developing its own COVID-19 vaccine, A’s broad public statements about its extensive patent coverage in this area, and A’s refusal to grant covenant not to sue.
Moderna v Arbutus 12/1 #FedCir sustains A's patent on siRNA delivery particle. Rejects M's argument that 4th component range is "implicitly" disclosed by express range disclosures for other 3. Unpredictable interactivity. No presumption of obviousness based on overlapping ranges.
O’Malley J dissents: district court failed to distinguish between therapeutic and clinical efficacy. Phase III clinical trial rigor is not required for therapeutic efficacy, which is what’s claimed here.
Biogen v Mylan 11/30 #FedCir 2-1 affirms invalidation of Biogen @Tecfidera patent claiming MS treatment by administering DMF at specific 480mg/day dosage. As of 2007 filing date, B not in possession of “therapeutically effective” dosage in 2011 claims. B’s expert not credible.
@patentlyo Grasshopper, I feel your pain. But isn't Graham v. Deere an improvement over the previous test--whether the invention involved invention?
This looks like a great teaching case; patent titans clashing over a “classic” (ie, priority-policing) written description of the invention dispute.
Linn J dissents-in-part: Majority applies an overly demanding standard for written description for ranges, and fails to follow Circuit's precedent in In re Wertheim (CCPA 1976) and NalpropionPharm v. Actavis (Fed Cir 2019).
IndiviorUK v DrReddys 11/24 #FedCir important written description decision (Lourie J). Claim-recited range "about 40 to about 60" is NOT supported by parent's disclosures of 48.2, 58.6, and "at least 25." Claims don't get 2009 parent's date. But "about 48.2" in cl 8 IS supported.
@JohnnyDrag @patentlyo @ChisumOnPatents Agreed, and at least the title of s102(a) (AIA) still includes the phrase "prior art."
RohmUSA v MaxPower 11/12 #FedCir affirms NDCal order dismissing R's DJ action challenging 4 MP patents & compelling arbitration. Tech licensing agrmt btwn parent RohmJAPAN & MP req's arbitration for this international dispute. Some of R's contrary arg's "border on the frivolous."
Newman J dissents. “[A] licensee always has standing to challenge validity of the licensed patent”; the AIA did not abrogate that right, established by Lear (US 1969). “There is no qualification as to whether the appellant is a licensee.”
Apple v Qualcomm 11/10 #FedCir dismisses appeal from IPRs for lack of Art. III standing. Parties have settled/licensed. “Identical operative facts” w/ Apple I (2021); court bound by stare decisis. And mootness by reason of settlement doesn’t justify vacatur of Board’s decisions.
@IowaPatentLaw @IowaLawSchool Thanks for an excellent symposium! Where can I access the recorded version?
Also affirms DCt’s dismissal of suit against Mylan N.V. for FRCP 12(b)(6) failure to state claim. MPI (WV corp.), not Mylan NV (Pa & Netherlands corp.), signed/submitted ANDA. Plausibility standard for imputing liability to Mylan NV not satisfied by this too-conclusory complaint.
Also holds M has no regular/established place of business in NJ. Although 17 M employees live/work from home in NJ, their homes are not places “of the defendant.” Nor are NJ-located lockers for storing product samples, rented by M’s employees. Case is similar to In re Cray (2017)
Celgene v Mylan 11/5 #FedCir affirms dismissal of C’s HatchWaxman suit for improper venue in NJ; no s1400(b) act of infringement in NJ. Mylan (WV corp) sending C a para IV notice letter in NJ, after submitting ANDA to FDA, is not part of the s271(e)(2) infringing act.
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