Patent Law

Microsoft (Again) Asks Supreme Court to Lower Clear and Convincing Standard

By Dennis Crouch

Microsoft Corp. v. I4I Limited Partnership (on petition for writ of certiorari 2010)

In 2009, an Eastern District of Texas jury awarded $200 million + interest to i4i after finding that Microsoft willfully infringed the Canadian company's patent. Judge Davis subsequently added-on $40 million for willful infringement.  The judge also issued an injunction ordering Microsoft to stop selling Word Products with the capability of using 'custom XML.' That injunction was stayed by the Federal Circuit pending appeal.  On appeal, the Federal Circuit affirmed the lower court's findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. In the meantime, the USPTO has concluded its reexamination of the i4i patent — confirming that the claims at issue are patentable. In addition, Microsoft apparently patched its software to prevent someone from using custom XML in Word.

Microsoft has now moved-on to the Supreme Court — asking the high court to reject the 'clear and convincing' evidence standard for proving a patent valid. As Microsoft writes in its petition for writ of certiorari, the question is 'Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence' even when the prior-art was not considered by the USPTO. This is essentially the same question that Microsoft raised in its 2008 petition in z4. That petition was withdrawn after the parties settled.

The patent statute (35 U.S.C. § 282) indicates that an issued patent is 'presumed valid' and that the 'burden of establising invalidity' rests with the party asserting invalidity. The Federal Circuit has held that the presumption of validity is properly realized by a clear and convincing standard.  The Supreme Court has not directly ruled on the issue. However, in KSR v. Teleflex, the Supreme Court did note that the 'the rationale underlying the presumption — that the PTO, in its expertise, has approved the claim — seems much diminished' in cases where the patentee 'fail[ed] to disclose' the key prior art to the PTO.

By Dennis Crouch

File Attachment: Microsoft.I4I.CertPetition.pdf (172 KB)

Full post as published by Patently Obvious on August 31, 2010 (boomark / email).