10 June 2011

Newsflash - US Supreme Court Upholds 'Clear and Convincing' Standard

Microsoft Corp. v i4i Limited Partnership et al (US Supreme Court, No. 10-290, 9 June 2011)

Overnight, Australian time, the Supreme Court of the United States issued its mch-anticipated decision in Microsoft v i4i.  And for the second time this week it has upheld a decision of the Court of Appeals for the Federal Circuit (CAFC), by ruling that section 282 of the US Patent Act, which provides that '[a] patent shall be presumed valid' and '[t]he burden of establishing invalidity . . . shall rest on the party asserting' it, requires an invalidity defense to be proved by 'clear and convincing evidence.'

For those unfamiliar with the case, i4i (and co-respondents) are the proprietors of US Patent No. 5,787,449, which claims an improved method for editing computer documents.  i4i sued Microsoft for willful infringement of the patent, and Microsoft asserted, in its defense, that the patent was invalid the claimed invention had been on sale in the United States more than one year prior to the filing of the patent application.

The parties agreed that, more than a year before filing its patent application, i4i had in fact sold a software program known as S4 in the United States.  However, i4i contended that this software did not implement the claimed invention.  It was also undisputed that the S4 software was never presented to the US Patent and Trademark Office (USPTO) during examination of the patent application.

At the original trial, in the United States District Court Judge in the Eastern District of Texas, the jury was instructed that the invalidity defense must be proved by clear and convincing evidence.  This was somewhat problematic, from Microsoft's perspective, because by the time of the trial there was no evidence available that would prove exactly what functionality was included in the S4 software.  Microsoft had therefore argued that the 'clear and convincing' standard was too high, particularly in the circumstance that the USPTO had never had the opportunity to consider the pertinence of the prior art in question, and had proposed an alternative jury instruction applying a 'preponderance of the evidence' standard.

On appeal, the CAFC confirmed that the District Court had correctly instructed the jury, based upon its own consistent case law dating back to 1984.

The Supreme Court has now placed beyond doubt that, barring action by the US Congress to change the law, a patent, once issued by the USPTO, can only be invalidated in the courts on the basis of 'clear and convincing evidence'.

The Supreme Court decision was unanimous (seemingly a rare event).  Justice Sotomayer penned the opinion of the Court, in which Justices Scalia, Kennedy, Ginsburg, Breyer, Alito, and Kagan joined.  Justice Breyer filed a concurring opinion, in which Justices Scalia and Alito joined.  Justice Thomas filed a concurring opinion.  Chief Justice Roberts took no part in the consideration or decision of the case (we understand that he owns Microsoft stock).

This is good news for US patent holders, who can rest assured that their issued patents retain a strong presumption of validity (regardless of the actual quality of examintion in the USPTO).  In combination with the recent en banc decision of the CAFC in Therasense v Becton, Dickinson, the past few weeks have been good to US patent owners!

Read more on the Supreme Court decision:
  1. at IPWatchdog
  2. on the Patently-O blog
  3. on the PharmaPatents blog

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