Microsoft v. i4i Revisited

Written by Brandon Baum , of baum legal and Practice Center Contributor.

I recently commented that the Microsoft v. i4i case did not change the law. After all, the Supreme Court simply confirmed that the statutory presumption of validity afforded patents under 35 U.S.C. 282 could only be overcome with “clear and convincing evidence” of invalidity — nothing new. However, upon a more careful reading (prompted by a Facebook post by Fordham Prof. Jeanne Fromer), I now realize I was mistaken.

In the following passage, the Supreme Court explains that a patent provides the user with a “right to use” the patented invention, and not merely the right to exclude others from using the patented invention.














That changes everything, and will make patents ever so much more valuable. By the stroke of a pen, the wealth of America’s inventors has been vastly increased. I sure hope they don’t try to “fix” this.



Microsoft v. i4i: The Amici Have Spoken

On April 18, 2011, the Supreme Court will hear the much anticipated oral arguments on the Microsoft v. i4i case. This case is being hailed as one of the most important patent cases to reach the Supreme Court in the last 10 years as it has the potential to change long standing precedent in patent law. The Supreme Court is being asked to determine how much proof must be provided when an accused infringer alleges that a patent is invalid.  As the law stands now, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing evidence.”  Microsoft is now asking the Court to lower the burden of proof for an invalidity defense to a preponderance of the evidence standard.

To date, 20 amicus briefs were submitted to the Supreme Court on behalf of Microsoft and as of last Friday, 22 amicus briefs were filed on behalf of i4i (including one filed by the U.S. solicitor general).  As you can imagine, the patent community has been furiously writing about the numerous amici briefs that have been filed on behalf of both parties.  Here’s a sample of what the patent world is saying about this potentially landmark case……..

1.  US government sides against Microsoft in Supreme Court patent case (Computerworld)

2.  BIO’s Amicus Brief: Microsoft v. i4i (Patently BIOtech) (more…)

Microsoft v. i4i: Amici Make Strong Argument for Supreme Court Review of Patent Invalidity Standard

Clement S. RobertsThe following post comes from one of our newest Practice Center Contributor’s Clement S. Roberts.  Mr. Roberts is a founding partner at Durie Tangri where his practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component.

A broad spectrum of academics and industry lined up Friday to support Microsoft’s request for Supreme Court review of its ongoing patent litigation against i4i.  In the underlying litigation, i4i won a pile of money on a patent dealing with the idea of separately storing metacodes and text in a markup language document.    While the litigation has an interesting factual history, the issue on appeal is a purely legal one – namely the application of the “clear and convincing evidence” standard to questions of invalidity.

As most people reading this blog already know, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing” evidence.  Ostensibly, this rule exists in order to reflect deference to the fact that the patent has been examined and found valid by an expert at the Patent and Trademark Office.    See e.g. American Hoist & Derrick co. v. Sowa & Sons, Inc, 725 F.2d 1350 at 1359 (Fed. Cir. 1984) (taking note of “the deference that is due to a qualified government agency presumed to have properly done its job.”).

Especially when taken together, however, the amicus briefs in Microsoft v. i4i overwhelmingly show that this is an exceptionally bad rule – at least when applied (as it is now) to all questions of invalidity. (more…)