Florida Patent Lawyer Blog

When are your patent claims obvious in light of the prior art? Is it non-obvious to simply combine two known items in a new way? What is the legal criteria for non-obviousness? As a Florida patent attorney with an active patent prosecution docket, I deal with these issues on a daily basis. Today, the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office issued a straightforward and easy-to-understand decision on this issue.

Today's decision in the case of Ex parte Constantinidis relates, among other things, to the issue of whether the claims of the Appellant were obvious in light of the prior art. The Appellant, NXP Semiconductor, argued that the Patent Examiner erred in rejecting his claims by combining the Tsumura patent with the Tanimoto patent. Specifically, the Appellant argued that the Tsumura patent and the Tanimoto patent are distinctly different and cannot be combined.

The Board of Patent Appeals stated that "the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l., Co. v. Teleflex Inc., 550 U.S. 398 (2007). The Board reviewed the Tsumura and the Tanimoto patents and concluded that Tsumura and Tanimoto patent can, in fact, be combined in a proper way because they were both directed to similar technologies and the combination resulted in an expected result.

This case highlights the difficulty that is often encountered when fighting an Examiner' rejection based upon 35 U.S.C. § 103 obviousness, where a patent attorney must make conclusions about the knowledge held by a person of ordinary skill in the art and whether a result is expected. People of ordinary skill in an art can have varying degrees of knowledge of certain areas and what one person regards as "expected" may be "unexpected" to another. Because the issues argued in these cases can often be subjective, the final decision is up to the Board's discretion.

As a Miami patent attorney, I advise my clients that a claim is obvious if you are combining two known devices of methods in a way that results in an expected outcome. An example if an expected outcome would be adding a Bluetooth chip to an electronic device for the purpose of networking the device. The result, networking the device, is expected. If the outcome is not expected to one of ordinary skill in the art, then you may have something that is non-obvious. For example, combining the molecules that comprise minoxidil resulted in a good blood pressure medication. But the hair growth that resulted from the use of minoxidil was unexpected and therefore this combination of molecules is non-obvious and patentable.

What options are available to a patent holder seeking to enforce his patent? When suing a company that infringes your patent, what can you hope to achieve? Can you really stop an infringer from infringing your patent? As a Florida patent attorney, I get these questions a lot. And just recently, the Court of Appeals for the Federal Circuit weighed in on these issues.

Last week, the Federal Circuit affirmed a lower court decision to permanently enjoin Microsoft from selling its flagship Microsoft Word product. The permanent injunction, effective January 11, 2010, prohibits Microsoft from selling, offering for sale, or importing its famous word processing software.
In addition to affirming the permanent injunction, the Federal Circuit upheld the lower court's finding of patent validity, willful patent infringement and an award of enhanced damages. Assuming that Microsoft's requests for rehearing en banc fail, Microsoft will eventually petition the U.S. Supreme Court to grant certiorari in this case.

This Federal Circuit case highlights the elements that must be met by an injunctive relief request in a patent infringement case, as recently defined by eBay Inc v. MercExchange, L.L.C., 547 U.S. 388 (2006):
(1) the Plaintiff has suffered an irreparable injury due to the infringement;
(2) monetary damages available at law are inadequate to compensate for that injury;
(3) a remedy in equity is warranted, considering the balance of hardships between the plaintiff and defendant; and
(4) the public interest would not be "disserved" by a permanent injunction.

This is a case of much interest to patent owners who've contemplated a patent infringement lawsuit against an infringer. The 2006 eBay case made it more difficult for patent holders to get an injunction against a patent infringer. Some pundits wondered if a patent holder would EVER be able to get an injunction post-eBay. But this case shows that careful adherence to the standard injunctive relief criteria can result in permanent injunctive relief against a defendant that infringes your patent.

This is good news for patent holders who figured that injunctive relief was no longer a realistic option after the eBay decision. Going forward, patent owners can be secure in knowing they continue to have the option of seeking injunctive relief, provided they can meet the criteria.

As a Miami patent attorney, my clients often ask me about their options when they encounter an infringer. Post eBay, I was unsure whether injunctive relief was still a realistic goal in patent infringement litigation. But after this recent Federal Circuit decision, I advise my clients that injunctive relief is still an option, though the criteria that must be met is more stringer than it was before the 2006 eBay decision.