April, 16th, 2019

By Michael J. Kosma

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.

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