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 successfully opposed two motions brought against its client Karl Storz Endoscopy-America, Inc. (“KSEA”) by STERIS Instrument Management Services, Inc. (“STERIS-IMS”). STERIS-IMS sought to extend fact discovery in the long-running patent infringement case to take [Read More…]
Gulrukh Haroon is pursuing her JD at the University of Connecticut School of Law. She has a B.S. in biological sciences and political science from the University of Connecticut and is currently working on her [Read More…]
Henry Purtill is pursuing his J.D. at UConn Law School. Henry has been a participant in the Intellectual Property and Entrepreneurship Law Clinic where he has drafted and prosecuted patents, including successfully amending claim sets and [Read More…]