Written by Mark Terry 

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.