Florida Patent Lawyer Blog

Today, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's rejection of a key Guidant patent application for a heart stent used to treat arteriosclerosis. As a Florida Patent Lawyer with a daily patent prosecution docket, I follow cases such as these for practice pointers. This case illustrates an important point pertaining to rejections based upon 35 U.S.C. sec. 102(b) as being anticipated by a prior art patent.

Today's decision of the BPAI revolves around a rejection by the Patent Examiner wherein he asserted that two (2) elements of the claimed invention were disclosed by the presence of one (1) element in the prior art patent he cited. It is common for a Patent Examiner to claim that the two widgets of a patent claim are disclosed by a prior art patent that discloses only one widget. The BPAI disagreed with the Patent Examiner, citing See e.g. Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors); In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).

The practice pointer I learned from this BPAI decision is that 35 U.S.C. sec. 102(b) rejections by a Patent Examiner should be examined closely to ensure that, in fact, each element of the rejected claim is disclosed by a separate element in the prior art being cited against the claim. For a 35 U.S.C. sec. 102(b) rejection, it is not sufficient for a Patent Examiner to find only one instance of a claimed element in a prior art patent, when in fact two instances of the element are claimed. The patent attorney that prosecuted this Guidant patent application was astute in catching this Examiner flaw, thereby resulting in this key Guidant invention moving towards an issued patent. The financial incentives in this case are quite high, seeing as stent sales are estimated at $3 billion per year.

Last week, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office reversed an examining trademark attorney who refused to register the RENATI mark based on its significance as a surname. As a Florida Trademark Attorney with an active trademark prosecution docket, this is a noteworthy case that I will keep in mind when I get "surname" refusals in the future.

It is not uncommon for the U.S. Patent and Trademark Office to refuse to register a mark based on the fact that the mark is primarily a surname. The reasoning behind this is explained by Judge Seeherman in her concurrence in In re Joint-Stock Company "Baik", 84 USPQ2d 1921 (TTAB 2007), the "purpose behind prohibiting the registration of marks that are primarily merely surnames is not to protect the public from exposure to surnames,... Rather, the purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses..." Thus, there is a public policy of keeping surnames open for use.

In this case, the Trademark Trial and Appeal Board (TTAB) reviewed the evidence, which showed only 6 people in United States with the RENATI surname and therefore only 6 people in the United States that could potentially be adversely affected by the RENATI registration. This turned out be the main factor considered in the TTAB decision of last week.

Some of the other factors considered by the TTAB include whether anyone connected with the applicant uses the trademark as a surname, whether the trademark has any recognized meaning other than as a surname and whether the trademark has the look and feel of a surname. The TTAB found, in light of the evidence, the applicant did use the trademark as a surname, the trademark does have a recognized meaning as a given name and that the trademark did not have the look and feel of a surname. In sum, the factors considered weighed in favor of allowing the trademark to register. Therefore, the TTAB reversed the examining attorney's refusal to register the mark.

On Monday, Kodak and Samsung settled a long-running patent infringement dispute spanning several years and multiple continents. The settlement includes a patent license agreement wherein each side gains a patent license for the other's patents. The license agreement, which provides appreciable benefits to both parties, is royalty bearing to Kodak. Additional financial details were not disclosed. As a Florida patent lawyer that frequently deals with patent infringement disputes, this case illustrates various important aspects surrounding patent litigation.

This case illustrates how a legal dispute can easily escalate into a world-wide battle requiring enormous resources. This disagreement started as a simple request for another party to take a patent license and blossomed into a two-way, 26-month patent infringement litigation that was concurrently being heard in two separate district courts in the U.S., in a federal court in Germany and the U.S. International Trade Commission. The legal bills for both sides are easily calculated to be in the millions of U.S. dollars. The end result - a settlement agreement comprising a cross-license - was not proportional to the extent of the conflict. Tomes can be written about the psychology behind why parties don't settle. But the abject lesson here is that parties should push to settle as early as possible, especially in complex commercial litigation cases, such as a patent infringement case.

This case further illustrates a common settlement outcome in patent infringement cases - a cross-license. As I discussed in an earlier post about the uses of a patent, a savvy company with an intellectual property program will obtain patents on its core technologies not just for the purpose of asserting them against their competitors, but also for the purpose of using them as a shield in the face of a competitor's attack. This is exactly what transpired in the Kodak-Samsung dispute. What started out as a single patent infringement claim, ended up as a two-way fight where each party both asserted patent infringement claims and defended against the same. Counterclaiming for patent infringement can have a chilling effect on a patent plaintiff and can move the parties to settlement, since both parties have much to lose if they are beaten at trial. In this case, it took the parties quite a while to realize this, but ultimately it led to settlement.

Last week, the Federal Circuit affirmed a D.C. District Court decision extending the patent term of a Wyeth Alzheimer's drug patent due to U.S. Patent and Trademark Office (USPTO) delay. As a Miami patent lawyer that deals with issued patents often, this case illustrates how a patent holder can use USPTO delays to their advantage by lengthening their patent term accordingly.

At the crux of this dispute between Wyeth Pharmaceuticals and the USPTO is a process for calculating the amount that a patent term is adjusted under the American Inventors Protection Act, 35 U.S.C. 154(b). The USPTO undisputedly caused delays during the prosecution of a patent Wyeth obtained for an Alzheimer's drug. The USPTO argued that Wyeth was entitled to a smaller patent term adjustment under its "strained" interpretation of the patent term adjustment statute, 35 U.S.C. 154(b). The Federal Circuit disagreed with the USPTO's interpretation of the statute and found for Wyeth, thereby affirming a longer patent term adjustment, as held by the D.C. District Court.

This case is significant because the decision has precedential authority over the patent term adjustment calculations of the USPTO. New patentees should read this decision closely and make sure that the patent term adjustment given to their patent by the USPTO is in line with this decision. Additionally, this case illustrates how USPTO delays can be turned to the patentee's advantage by obtaining a longer patent term. In short, every day of USPTO delay may be added as an additional day to the patent's term. This is of particular interest to pharmaceutical companies where every day that a patent is in force equals millions of dollars in revenue.

This Friday, the U.S. International Trade Commission (ITC) issued a notice stating that Mitsubishi does not infringe GE's wind turbine patent, thereby ending a long-running legal dispute between the two companies at the ITC. The patent infringement dispute dates back to early 2008 when GE claimed that Mitsubishi infringed upon GE's wind turbine patents in a complaint filed with the ITC, in an effort to block the importation of Mitsubishi's wind turbine products into the U.S. The effort, however, backfired and exposed the weaknesses of using the ITC as a forum for a patent infringement dispute.

As a Florida patent attorney that handles patent infringement disputes, I'm often confronted with the question of where a patent infringement dispute should be heard. As I wrote on Jan. 2, 2010, the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents, due to: 1) lower litigation costs and 2) the reduced waiting time compared to litigation in a federal court. The biggest drawback of the ITC, however, is that theITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party.

The recent Mitsubishi-GE case, however, illustrates how a dispute at the ITC can actually take an extended period of time to resolve - more than 2 years in this case and it did not even go to trial. There has also been speculation as to expenses in this case. Due to the extended period of time and the amount of wrangling in this case, the fees may have been rather high. Again, this goes against the conventional thinking that the ITC is a less-expensive forum. Thus, this case challenges the assumption that the ITC is a cheaper, faster forum. As a patent practitioner, the practice pointer I've taken from this story is that the choice of forum for every patent dispute should be taken on a case-by-case basis. One should not rush to one forum or another based on assumptions. The case should be carefully reviewed and a practitioner who knows the forum well should be consulted on how that particular forum would fit the instant case.

When does a design choice rise to the level of being a patentable invention? If someone builds a widget out of plastic and you decide to build it out of titanium, is that feature alone patentable? As a Florida Patent and Trademark Attorney, I am sometimes faced with this question when reviewing my client's inventions. The answer is not always clear. But yesterday's decision of the Board of Patent Appeals and Interferences (BPAI) provides a good explanation of how this concept is handled at the U.S. Patent and Trademark Office (USPTO).

Back in 2005, Volkswagen filed a U.S. patent application directed towards a heat shield sleeve for a drive shaft. One of the patent application's claims stated that the heat shield was formed out of aluminum. The Patent Examiner stated, among other things, this claim was obvious under 35 U.S.C. sec. 103 because the main prior art reference, a U.S. Patent referred to as "Mazuy," disclosed the use of steel for a heat shield and therefore the use of aluminum would have been "an obvious design choice." The BPAI disagreed, taking the Applicant's argument, supported by evidence, that substituting aluminum for steel in the heat shield of Mazuy would have resulted in a non-working heat shield. The BPAI further stated that the Examiner's rationale did not explain how the use of aluminum, instead of steel, would have produced a working gadget. It should further be noted that, as explained in the Manual of Patent Examining Procedure (MPEP), modifying a reference is not proper if "the modification renders the device of the primary reference inoperable for its intended purpose" (MPEP. 2143.01). Therefore, the BPAI reversed the Examiner's rejection of the patent application's claim directed to a heat shield formed of aluminum.

This case illustrates an important tool that should be kept in every patent practitioner's toolbox. Be sure to challenge an Examiner's assertion that a claimed feature is just an "obvious design choice." It may be that there is a good reason, like the expansion coefficient of a metal, for using a certain material over another, other than just a mindless design choice. Also, it may be that the Examiner's prior art reference, assuming it doesn't disclose your design choice explicitly, simply does not operate when it is modified to encompass your design choice. Winning on either of those arguments could result in a reversal of a Patent Examiner's rejection.

As a Florida Patent Attorney with a sizable patent prosecution docket, I frequently deal with rejections from the U.S. Patent and Trademark Office (USPTO). A common form of rejection is an anticipation rejection under 35 U.S.C. sec. 102. This type of rejection is used in cases where the Patent Examiner believes that a single prior art reference (usually an existing U.S. Patent) anticipates or discloses every element of your patent claim. How do you respond to these types of rejections and succeed? The answer to this question is illustrated in today's decision by the Board of Patent Appeals and Interferences (BPAI) in a case involving Dow Chemical Company.

Today, the BPAI issued a decision affirming a Patent Examiner's 35 U.S.C. sec. 102 rejection of Dow Chemical Company's patent application for a crystalline drug particle invention that increases bioavailability and dissolution rates of a pharmaceautical product. High bioavailability and dissolution rates are desirable attributes of a pharmaceutical end product. Bioavailability is a term meaning the degree to which a pharmaceutical product, or drug, becomes available to the target tissue after being administered to the body. Poor bioavailability is a significant problem encountered in the development of pharmaceutical compositions, particularly those containing an active ingredient that is poorly soluble in water. Poorly water soluble drugs tend to be eliminated from the gastrointestinal tract before being absorbed into the circulation. Dow Chemical Company's patent application claimed a new process that increases bioavailability and dissolution rates of drugs. Thus, this is a patent application of interest to the chemical and drug industries.

The Patent Examiner rejected certain Dow claims under 35 U.S.C. sec. 102 for being anticipated by a U.S. Patent to Kipp. In the rejection, the Patent Examiner made a prima facie case of anticipation by providing a detailed explanation of where each and every element of the pertinent claims were found in the Kipp patent. Once a prima facie case of anticipation has been established, the burden shifts to the Appellant, i.e., Dow, to prove that the prior art does not necessarily or inherently possess the characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). This is where Dow's counsel made a big mistake.

In responding to the Patent Examiner's rejection, Dow stated only the following "Kipp does not teach or suggest particles having crystalline domains, and more specifically, Kipp does not teach or suggest particles having crystalline domains of less than about 400 Angstroms." Dow did not provide an adequate explanation as to why Kipp did not disclose the elements of the claims, Dow did not proffer any evidence to support its conclusions and Dow did not provide any scientific reference in line with its argument. The BPAI responded: "This argument misplaces the burden. The Examiner has provided significant evidence which supports [his] conclusion ... Consequently, under Best, the burden of proving that the particles of Kipp do not inherently satisfy the claims is placed on Appellants .. Appellants have proffered no evidence that the particles of Kipp differ from those claimed."

The lesson to be learned in this case is that once a Patent Examiner makes a prima facie case of anticipation under 35 U.S.C. sec. 102, the Applicant must respond with arguments as to why the prior does NOT disclose his invention AND the Applicant must come up with substantial evidence that supports his conclusion. An Applicant can't simply respond with a blanket "I disagree." The Applicant must do his research and come up with hard evidence, such as scientific literature, that supports his argument. Without good, hard evidence that supports his conclusion, an Applicant will not be able to rebut an Examiner's prima facie case of anticipation under 35 U.S.C. sec. 102.

It is common for the trademark of a business or product to at least partially describe the product or service the business sells. But can you register that trademark with the U.S. Patent and Trademark Office? This is an issue I often deal with as a Florida Trademark Attorney. In short, the answer is that the non-descriptive and non-generic portion of the trademark, if any, is registrable. This is an issue illustrated by last week's decision of the Trademark Trial and Appeal Board (TTAB) in Washington, DC.

Last week, the TTAB issued its decision in the Jonathan Drew, Inc./Drew Estate case, which involved an appeal from a refusal to register the INFUSED CIGARS mark used in connection with the sale of cigars. The Trademark Office refused to register the INFUSED CIGARS mark on the basis that the mark is generic and descriptive. The Trademark Office cited vast amounts of literature, ranging from magazine and newspaper articles to third party web sites, supporting its position. Apparently, an infused cigar is a cigar that has been imbued with a flavor. For example, some cigars are infused with a liquor or a wine. The Applicant did not rebut this evidence.

The Applicant's main argument was that Drew Estate was a pioneer cigar company - the first to infuse cigars commercially and the company that coined the term "infused cigars." The TTAB responded:

"We do not question that applicant may be a "leading maker" or perhaps a "pioneer" of "infused cigars" or even that applicant coined the term. The problem is that none of these facts overcomes the generic meaning of "infused cigars" or makes this generic term registrable. See, e.g., In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) ("Even if applicant was the first... user of a generic term or phrase,...that does not entitle applicant to register such a term or phrase as a mark."). While sellers may recognize applicant as a well known maker or blender of cigars and that applicant is a significant source for "infused cigars," they nevertheless use the term "infused cigars" to refer to a type of cigar, rather than to brand of cigar. The record is clear that they do not recognize "infused cigars" to indicate the source of those cigars only in applicant.

Thus, the TTAB was very clear that a generic or descriptive term cannot be registered, even by the first user of the term or the party that coined the term. Drew Estate is out of luck.

If Drew Estate had sought my services as a Patent and Trademark Attorney, I would have advised him to seek other forms of protection for the "infused cigar" concept, including patent protection for the final infused cigar product and/or for the infusing process. This type of protection, if attainable, would have allowed Drew Estate to stop other cigar makers from making or selling infused cigars.

As a practicing Florida trademark attorney, I'm often asked about what is registrable as a trademark. Can you register a slogan? Can you register a work of art? Can you register the name of a work of art? Google's current trademark dispute illustrates the answers to some of these questions.

After much fanfare, yesterday Google made its Nexus One phone available for purchase. As promised, the phone operates Google's Android operating system. But science fiction buffs might notice the literary allusion to Phillip K. Dick's novel "Do Android's Dream of Electric Sheep?" made famous by the movie adaptation, Blade Runner, featuring Harrison Ford. The novel features androids, i.e., robotic humans, gone awry. Specifically, the novel focuses on the "Nexus-6" line of androids. The owners of Mr. Dick's estate noticed this similarity and are now threatening to sue Google for trademark infringement. But does Mr. Disk's estate own a trademark?

Phillip K. Dick's "Do Android's ... ?" novel was a single creative work not part of a series, as was the Blade Runner movie. Single creative works and, by extension, characters in those works, are generally not afforded trademark rights (see TMEP sec. 1202.08). Further, to my knowledge, the characters in the Dick movie and novel were never merchandised (such as in "action figure" form) by Dick, Dick's estate or any other licensed party. Without "use in commerce" of the "Android" term in connection with the sale of goods, trademark rights could not have been created.

Mr. Dick's estate will surely point to Verizon's licensing of the "Droid" mark from LucasFilms. The Droid mark, used in the Star Wars films to denote a robot, is now used under license by Verizon as a mark associated with its new smart phone. The Nexus One situation, however, is quite different because LucasFilm has manufactured and sold merchandise featuring the word "Droid" as far back as the 1980s. Thus, LucasFilm created trademark rights dating back decades. Further, LucasFilm's Star Wars franchise spawned a series of movies and books, not a single creative work. The title and the characters used in a series of works can be registered as a trademark (see TMEP sec. 1202.08c)

Therefore, it seems that Mr. Dick's estate is out of luck. Returning to my client's inquiries about items that are registrable as trademarks: slogans and works of art are registrable, but the title of a single creative work is not registrable unless it subsequently becomes the title of a series of works.

Much has been written recently about Apple's alleged plans to come out with a mobile tablet PC. According to the rumors, Apple has developed a commercially viable tablet PC that will be announced later this month at an Apple conference. One well-reported prediction is that the tablet will go by the name of iSlate. So far, however, this is all speculation since none of the rumors have been officially confirmed by Apple.

The U.S. Patent database, however, confirms that the Cupertino, CA company owns a patent application on tablet PCs, which was published a few weeks ago by the U.S. Patent and Trademark Office. Savvy blogger Gus Sentementes found patent application number 20090303231 which describes and claims various methods managing the manual manipulations of 3D objects via a touchscreen. Apple's patent application claims priority to a provisional patent application that was filed in June of 2008. Under the federal rules, a patent application must be published 18 months after its priority date, which is the earliest date to which the patent application claims priority. In this case, Dec. 2009 was the 18-month date, and therefore the patent application was published on the web site of the U.S. Patent database.

This illustrates an important feature of the U.S. Patent system: your patent application is kept confidential for at least 18 months. This can be a valuable benefit for companies that want to keep their research and development secret for a certain period of time, so as to minimize speculation and keep its stock value stable. Public companies prefer to make announcements about new products in a controlled manner so they can monitor and manage the effect of the announcement on company stock value and the market in general. As such, many public companies take full advantage of the 18-month confidentiality period and make as much headway as possible during that time. For this reason, as a Miami patent attorney, I advise my corporate clients to move their patent pending products to market as soon as possible after filing a corresponding patent application. Because once the patent application publishes at the 18-month mark, anyone with an Internet connection can view the specifics of their invention and attempt to copy it.

In a move exhibiting clever gamesmanship, today Nokia one-upped Apple in the much-watched patent fight between the two behemoths. Here is a recap of the fight so far: Nokia files a patent infringement suit against Apple claiming the iPhone infringes 10 Nokia patents; Apple counter-sues for patent infringement claiming Nokia products infringed 13 Apple patents related to GSM; Nokia spurs the U.S. International Trade Commission to start an investigation of Apple in light of Apple's alleged violations. And now, in a final punch, today Nokia filed yet another lawsuit against Appled in Delaware claiming the iPhone infringes 10 additional Nokia patents.

All the legal wrangling will probably take at least a year to work out, since patent rocket dockets generally take about 12 months to a decision, assuming a settlement isn't reached before then. During the next year, however, Apple will have released at least one major revision to the iPhone, which begs the question of whether Apple will seek to design around the Nokia patents so as to render Nokia's lawsuit moot going forward. Another fact to note is that Nokia's share of the growing smartphone market has continued to decline with the rise of the iPhone. This has led some to characterize Nokia's lawsuits as the final throes of a smartphone player. The next 12 months will shed light on this question.

As a Florida patent lawyer that files a multitude of technology patent applications with the U.S. Patent Office each year, I follow patent enforcement proceedings such as these closely. This case illustrates that patents can be used both as a sword and as a shield. Apple fired back at Nokia with a patent infringement lawsuit of its own. This move puts Nokia at least partially on the defense, which allows Apple to potentially gain the initiative.

When asked about the value of patents, I always advise my clients that in addition to obtaining an exclusive right to stop others from making or using your technology, a patent is also a valuable tool for use against an adversary that asserts his patent rights against you. Companies know this and therefore having a patent portfolio can have a deterrent effect against intellectual property litigation. Much like the Cold War-era philosophy of Mutually Assured Destruction, a potential adversary may think twice about suing you for patent infringement if you have a portfolio of patents yourself, which can be used against him.

This past Tuesday (the U.S. Patent and Trademark Office awards patents once a week on Tuesday), the U.S. Patent Office awarded Microsoft Corp. a nice New Year's present in the form of a utility patent for key search engine technology. The patent, entitled "Using automated content analysis for audio/video content consumption" relates to a novel way of indexing audio/video files so as to make it easier for users to find the audio/video files, as well as the data within those files. This technology opens up an entire genre of data to the world of search engines. And with Microsoft recently making in-roads into the search engine market with its Bing search engine, it is instructive to keep abreast of the patents awarded to this tech giant.

Microsoft's Patent No. 7,640,272 has a short Summary of the Invention section which says it all: "Audio/video (A/V) content is analyzed using speech and language analysis components. Metadata is automatically generated based upon the analysis. The metadata is used in generating user interface interaction components which allow a user to view subject matter in various segments of the A/V content and to interact with the A/V content based on the automatically generated metadata." A review of Microsoft's patent reveals that the claimed subject matter is directed to a system that performs natural language processing on an audio/video file and then provides an interface that visually illustrates the identity of the speakers in the A/V file and provides a text transcript of what the speakers said. The interface also allows a user to click on an area of interest to view or listen only to a desired segment of the A/V file.

This patent is highly relevant to the search engine industry and its use should be closely watched. Today, there is no extensive method by which search engines catalog videos available on the web. Typically, videos are indexed by their titles or descriptions of the video entered by a user, usually the provider or a viewer of the video. This results in incorrect and incomplete cataloging of videos. Microsoft's patent, however, provides an ingenious way of progressing the current state of the art. The patent describes a system where A/V files are processed to garner the information within, thereby allowing the A/V files to be indexed by a search engine and easily viewed by a user. Imagine a system where you can search every YouTube video for a conversation of a topic of choice. For example, imagine that you're interested in finding out what the Fed Chief Bernanke has specifically said about Chinese steel imports. The system described by Microsoft's patent would allow a user to easily search for and find a short snippet of a television interview where Bernanke briefly mentioned this issue.

Although Microsoft's patented system has not been implemented yet, and there are questions of availability of computing resources necessary to process so much data, Microsoft's patent does appear as a logical next step in the search engine industry. There is a mountain of data located at online video sharing sites and Microsoft has found a way to index it and easily view it.

As a Miami patent attorney, I am constantly advising my clients that a valuable patent is one that accurately predicts the path of an industry. Microsoft may have done just that. Time will tell.

As a Florida patent attorney, I am frequently faced with situations where a company is infringing upon the intellectual property rights of a client. As I explore different approaches for enforcement with my client, we often discuss the various forums in which an intellectual property owner can have his grievances heard. A formerly little-known, but now an increasingly popular, venue is the U.S. International Trade Commission (ITC) in Washington, D.C. Faced with the duty to protect the rights of intellectual property owners in the course of international trade in the U.S., the ITC provides a forum for U.S. patent and trademark owners to stop copiers from importing their copies into the U.S. Yesterday's announcement by the ITC illustrates this process.

On the first day of 2010, the U.S. ITC decided to investigate claims of patent infringement by both Sharp and RIM. The complaint (click here) against Sharp was made by Samsung and alleges that certain televisions sold by Sharp in the U.S. infringe on Samsung's U.S. Patent Nos. 5,844,533, 6,888,585 and 7,436,479.

Interestingly, back in Nov. 2009, the ITC ruled on a similar television-related dispute between Sharp and Samsung. In that case, Sharp alleged Samsung infringed on Sharp television patents and the ITC ruled in favor of Sharp. Perhaps seeing they had curried favor with the ITC, Sharp filed the current complaint against Samsung last month.

The complaint (click here) against RIM was made by Prism Technologies of Nebraska and alleges that certain smart phones sold by RIM in the U.S. infringe on Prism's U.S. Patent No. 7,290,288). Prism, by the way, has been branded by some as a patent troll, seeing as they 1) do not actually manufacture any of the technologies covered by their patents and 2) their revenue comes solely from licensing their patents.

These two investigations illustrate how the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents. The main reason for this recent popularity is financial, since: 1) litigation before the ITC is less costly and 2) the amount of time necessary to achieve a final decision in an ITC case is highly reduced compared to litigation in a federal court. The biggest drawback of the ITC forum, however, is the reduced scope of power of the forum. The ITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party. If your client, however, is only interested in stopping the infringement, not a big damage award, and the infringer imports the accused products, then the ITC is a less-expensive and expedient avenue for having his case heard.

Happy New Year to all! But not so happy for Applied Materials, Inc., a semiconductor manufacturer in California. Yesterday, the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office issued a decision largely affirming a Patent Examiner's rejection of an Applied Materials patent application covering a key semiconductor manufacturing process.

Yesterday's decision revolves mainly around the issue of "optimization of ranges." To illustrate this issue, assume that the prior art for car-wash technology discloses the placement of water-dispensing nozzles in certain locations inside the car-wash. Let's say that a client invents a car-wash with water-dispensing nozzles placed in locations not disclosed in the prior art. Is this client's invention patentable? As a Florida patent attorney with over 10 years of experience dealing with patent applications, I get this question a lot. The answer is not so simple to explain.

With regard to the issue of "optimization of ranges," the Manual of Patent Examining Procedure states that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454 (CCPA 1955).

Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).

The Applied Materials case involved a claim including the optimized calibration of a thin film-depositing element. The claim was rejected under 35 U.S.C. 103(a) for obviousness in light of the prior art, which generally disclosed optimization of thin-film depositing elements. The Board upheld the obviousness rejection due to a lack of criticality in the Applicant's choice of calibration of the thin film-depositing element, as evidenced by a lack of unexpected results.

This decision sheds light on the car-wash example above. If the water-dispensing nozzles are placed in novel locations with the expected result being increased car-washing capabilities, then the client's car-wash invention is probably obvious and not patentable. But if the locations of the water-dispensing nozzles leads to an unexpected result, such as the buffing of car paint, then the client's car-wash invention is non-obvious and may very well be patentable.

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.