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.
Under U.S. law, anyone who uses a system that is likely to have been made by a patented process, and who does not demonstrate that the system was not made by the patented process, is [Read More…]
Recently, WHIPGROUP engaged in an arbitration that included a five day hearing in the City. Here are some thoughts about why arbitration is different (not clearly better or worse) than litigation. Venue The AAA arbitral [Read More…]
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…]