Microsoft v. i4i – Awaiting a Burdensome Decision by the Supreme Court

In the Microsoft Corp. v. i4i, the Supreme Court must determine whether the burden of proof for parties alleging patent invalidity should be changed from a clear and convincing standard to a preponderance of the evidence standard.   Oral arguments took place on April 18, 2011 and the Court’s decision is expected by the end of June 2011.  While we wait for this potentially precedential opinion, Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP, brings us up to speed with a comprehensive discussion on the history of the case, the oral arguments and possible outcomes.

In the pending case of Microsoft v. i4i, the Supreme Court must decide whether the Federal Circuit’s requirement of clear and convincing evidence is proper for an invalidity defense, even though the prior art relied upon by the Defendant was not considered by the Patent and Trademark Office (PTO).

The oral arguments were heard April 18, 2011. Prior to the oral arguments, the smart money was on Microsoft , but based on comments by the Justices during oral arguments, it is not clear that Microsoft has an advantage going forward. (more…)

The Supreme Court Argument in Microsoft v. i4i: Will the Court Lower the Burden for Proving Patent Invalidity in Infringement Litigation?

The much anticipated oral arguments in Microsoft Corp. v. i4i Ltd. took place at the Supreme Court yesterday, April 18, 2011.  The question on all of our minds is whether the Supreme Court will change the burden of proof for parties alleging patent invalidity in infringement litigation from a clear and convincing standard to a preponderance of the evidence standard?   Did yesterday’s proceedings bring us one step closer to the answer?  Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent in this alert she wrote with her colleagues wherein they highlight the key points from the oral argument and provide some insight as to what the outcome of this important case may be.

For nearly three decades, the Court of Appeals for the Federal Circuit has required litigants defending a claim of patent infringement to prove invalidity by clear and convincing evidence. On April 18, 2011, the U.S. Supreme Court heard oral argument in Microsoft Corp. v. i4i Ltd. P’ship, No. 10-290, the first case to squarely address whether the presumption of validity codified in the 1952 Patent Act mandates a heightened burden of proof for defendants challenging validity in a patent infringement action, e.g., where the prior art was never considered by USPTO. Microsoft contends that the burden should be no greater than a preponderance of the evidence when the USPTO did not consider the most relevant prior art during patent examination. i4i is one of the most significant patent cases in years, and one of the most significant business cases of the Court’s term. Beyond reducing the burden on accused infringers to prove invalidity in patent litigation, a lowering of the standard of proof could widely impact the value of patents. (more…)

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…)

Three References PLUS Predictable Variation Doom Utility Lighter Claims

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

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious. (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…)