Patents are never invalid, only their claims. This was quickly discussed by the Federal Circuit in Sophos Inc. v. RPost Holdings, Inc. (Fed. Cir. 2019) in reviewing a district court’s Order granting summary judgment that suggested a patent was invalid. (“[T]he Court concludes that the ’628 patent is invalid.”) The Federal Circuit remanded the case to the district court to revise its judgment and clarify that the declaration of invalidity is limited to challenged claims of the patent.
This is an important distinction often overlooked by inventors and conveniently ignored by infringers. Whether a patent is invalid or infringed is determined on a claim-by-claim basis. This is the reason WHIPgroup regularly recommends filing continuation applications with various levels of protection (e.g. both narrow and broad claims). Thus, even if an infringer successfully finds invalidating prior art for some or all claims of one patent, it is still possible to obtain strong valid claims in a continuation application that are infringed.
WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.
WHIPGroup previously filed a Motion to Dismiss a patent infringement suit filed against its client TomTom in the Western District of Texas. Rather than opposing WHIPGroup’s motion to dismiss, Plaintiff MDSP Technologies LLC voluntarily dismissed [Read More…]
WHIPgroup succeeded in having anticipation and indefiniteness rejections overturned by the Patent Trial and Appeal Board (PTAB). The claimed invention relates to a sequencing station that manages both sequencing and restacking tasks. The Examiner had [Read More…]
WHIPGroup filed a Motion to Dismiss for improper venue in the Western District of Texas on behalf of its client TomTom North America, Inc. Plaintiff MDSP Technologies LLC alleges that TomTom North America, Inc. infringes [Read More…]