Microsoft v. i4i US Amicus Brief

March 22, 2011 – Blog Post

The acting Solicitor General recently filed an amicus brief on behalf of the United States in support of respondent i4i in its case against Microsoft in the Supreme Court. In doing so, the Solicitor General urged the Supreme Court to rule that courts must find “clear and convincing evidence” to declare a granted patent invalid, rather than merely a “preponderance of the evidence” as Microsoft would have courts require (on which we previously reported).

In this appeal before the Supreme Court, Microsoft challenges the currently-used clear and convincing evidence standard for patent invalidity. The United States amicus brief opposes Microsoft’s position, arguing first that both courts and Congress have long understood and intended for the presumption of validity in 35 U.S.C. § 282 to require clear and convincing evidence for a finding of invalidity. The brief then invokes arguments that the clear and convincing evidence standard, not the preponderance of the evidence standard, best applies administrative law principles, giving proper deference to USPTO decisions. Even where invalidity defenses rely wholly or partially on previously-unexamined references, the brief argues, the clear and convincing evidence standard still best reflects Congressional intent, an argument that the Patents Post Grant blog examined in further detail from the i4i brief and correctly predicted would appear in amicus briefs in support of i4i.

If the Supreme Court affirms the Federal Circuit decision in favor of i4i, as the Solicitor General’s brief proposes, the law will retain the current standard requiring clear and convincing evidence. Thus, certainty in patent validity and value would remain largely unchanged as far as this decision is concerned. If the Supreme Court reverses the Federal Circuit, parties asserting invalidity defenses or seeking declaratory judgment of invalidity could more easily satisfy the evidentiary requirements. Such a ruling could be broad, applying to validity challenges generally, but would more likely apply more narrowly, only to validity challenges based on previously-unexamined matter. Regardless, any change to a preponderance of the evidence standard would decrease the certainty of patent rights.

As discussed previously, the parties will present oral arguments on Monday, April 18.