Inventions are often solutions to technical problems. Truly appreciating an invention often involves understanding how the new features operate to solve problems with prior approaches and achieve advantages relative to those prior approaches. At the same time, patent drafting techniques should be used to avoid giving away, as admissions, the key recognitions that led to…

The Federal Circuit recently issued a precedential opinion (In re Urbanski) discussing the interrelationship between the issues of teaching away, the obviousness of modifying a reference that would render it inoperable for its intended purpose, and result-effective parameters.

The USPTO and the Federal Courts continue to invalidate patents under Section 101 based on a range of factual assertions, even when considering the issue under a Rule 12(b)(6) motion. Twombly and Iqbal have helped enable this shift. In Priceplay.com v. AOL, Facebook, and Google, the Babe’s famous contract negotiations involving a coin flip helped…

The Federal Circuit has issued another abstract idea decision in the context of a vehicle system for testing drivers. The opinion provides numerous hints and guidance as to facts that could have enabled the patent to survive. Those drafting and prosecuting patent applications, particularly in the autonomous or intelligent vehicle area, should take note of…

Winning a case before the USPTO’s Patent Trial and Appeal Board (PTAB) can be a long and arduous journey. Unfortunately, the case is then returned to the Examiner, who may still be inclined to try and deny the application by re-opening prosecution with new rejections. While such actions can be exceptionally frustrating, and whether or…

The highly watched case from the Massachusates Supreme Court absolves an IP Boutique law firm of legal malpractice claims from representing competing clients in the same technical area.  

Sometimes a great invention does not fit into the traditional categories understood by patent attorneys. Consider improvements that do not necessarily make an advancement to a single product, but rather to a group of products. This may include a new component design that enables different sizes of a product to be made more efficiently with…

In a recent case (Inphi Corp. v. Netlist) the Court of Appeals for the Federal Circuit reviewed the standard for determining whether a claim can be amended to add a negative limitation. The CAFC confirmed the rule to evaluate whether a negative claim limitation is supported under Section 112 involves determining whether the specification describes…

When presented with a restriction between groups, one factor to consider in making an election is how to maximize arguments for an eventual petition, if needed.  When electing between groups where the scope of one group is within another group, it can be advantageous to elect the group that includes all of the elements (and…

An appeal can often result in re-opening prosecution, where the USPTO effectively admits the rejections were insufficient. Sometimes, even when the Examiner files an Answer to the appeal brief, certain rejections are withdrawn. Data from each art unit was sampled and the Answers tagged for any withdrawn grounds of rejection.