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 has prevailed in another patent appeal before the Patent Trial and Appeal Board (PTAB). The invention relates to an adjustable piston with an inner plastic nut that helps withstand high frequency pulsing loads. The [Read More…]
Earlier this month WHIPgroup asked the Supreme Court to take up the important issue of whether a court can overlook factual allegations in a patentee’s infringement complaint at the pleading stage and find that the [Read More…]
WHIPgroup Successfully obtained patent allowance with an Appeal Brief. The invention is directed to an agitator ball mill, and has cams with specific ratios that improve mixing, cooling, and durability. The Patent Office rejected all [Read More…]