Patent Law Practice Center

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…)

US Supreme Court Accepts Microsoft Appeal in i4i Case

The following was sent in by Gene Quinn, of IPWatchdog and Practice Center Contributor.

Yesterday, the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. The Supreme Court did not request the views of the Solicitor General, choosing rather to accept the matter with no input from the United States government.  The decision to grant cert. comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question.

Microsoft had filed an ex parte reexamination request on the patent in question, US Patent No. 5,787,449. The ‘449 patent exited reexamination unchanged. Microsoft then filed a second ex parte reexamination request, and it is this second request that was denied by the Patent Office on Wednesday, November 24, 2010. The denial of this second request means that the Patent Office did not believe there to be a substantial new question of patentability. (more…)