Microsoft v. i4i Petitioner and Amici Briefs

February 8, 2011 – Blog Post

Petitioner Microsoft filed its brief last month before the Supreme Court in Microsoft v. i4i. As we previously reported, this case calls into question the “clear and convincing evidence” standard for challenging the validity of an issued patent. A number of amici curiae have also filed briefs in support of Microsoft or in support of neither party.

In 35 U.S.C. § 282, the patent statutes establish a presumption of validity for issued patents. The Federal Circuit has repeatedly ruled (e.g. the recent decision inTokai v. Easton Enterprises) that this presumption requires that challengers to patent validity prove their case by clear and convincing evidence, a relatively high standard that the Federal Circuit applied in its decision in the case at hand.

On appeal, Microsoft argues that the clear and convincing standard for proving patent invalidity undermines, rather than advances, the proper functioning of the patent system. The presumption in § 282, Microsoft argues, does not itself set forth clear and convincing standard, or any other particular standard. Rather, Microsoft argues, courts should apply a lower preponderance-of-the-evidence standard for showing invalidity because that standard is the default standard for civil cases and would best support a balanced patent system. Furthermore, Microsoft opposes citing proper deference to the USPTO as grounds for the clear and convincing evidence standard for invalidity. Microsoft argues that the Administrative Procedure Act, which grants judicial deference to government agencies, does not govern patent invalidity suits or USPTO decisions to issue patents.

Throughout its arguments, Microsoft emphasizes that the references underlying the validity challenge here had not been before the USPTO. Microsoft argues that, even if courts should apply a higher standard against invalidity where the USPTO decided to issue a patent over certain references, a validity challenger based on other, unexamined references should only have to prove its case by a preponderance of the evidence. The Patents Post Grant blog recently analyzed the interplay between standards in Article III court validity challenges as they may emerge from this decision and the standards the USPTO uses in determining validity upon patent reexamination..

Among the amici curiae filing briefs nominally in support of Microsoft are technology giants Google, Apple, and Cisco as well as generic pharmaceutical companies Apotex and Teva. IBM, the American Intellectual Property Law Association (AIPLA), and the Patent, Trademark, and Copyright Section of the District of Columbia Bar, among others, filed amicus briefs in support of neither party. Respondent i4i’s brief and amicus curiae briefs in support of the respondents are forthcoming.

Regardless of the outcome of this case, the ruling from the Supreme Court should clarify whether invalidity determinations require the higher standard of clear and convincing evidence, or whether courts can find invalidity if the challenger merely shows that the patent is more likely than not invalid. A clear and convincing standard, as the Federal Circuit has been applying, makes validity challenges more difficult, increasing the value of issued patents but requiring much of a party challenging any obvious or anticipated claims. On the other hand, a preponderance of the evidence standard would facilitate a greater number of validity challenges, decreasing the reliability of the rights in an issued patent.