Microsoft vs. i4i: What the Patent Lawyers Are Saying

The SCOTUS decision in Microsoft vs. i4i impacts the process to invalidate patents in some unusual ways. Read the reviews of lawyers on JD Supra on what it means to your intellectual property. Links to the Court’s Brief, Petitioner’s and Respondent’s Briefs, and the Amicus Curiae Brief are included.

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Supreme Court Affirms Clear and Convincing Standard of Patent Invalidity Proof (McDermott Will & Emery)

“Delivering what is likely the final blow to its battle against a $240 million infringement judgment, on June 9, 2011, the Supreme Court of the United States unanimously rejected Microsoft’s plea to modify the clear and convincing evidence standard of proof required to invalidate a patent.” Read more »

Supreme Court Holds That Facts Underlying Patent Challenge Must Be Proved by Clear and Convincing Evidence (Foley Hoag LLP)

“Under 35 U.S.C. § 282, ‘[a] patent shall be presumed valid’ and ‘[t]he burden of establishing invalidity … rest[s] upon the party asserting’ such invalidity. Writing for the Court, Justice Sotomayor interpreted this language as codifying not only the burden of proof to establish invalidity, but also a heightened standard of proof rooted in the common law and recognized in Supreme Court jurisprudence dating back to the 19th century. Read more »

Supreme Court Affirms Heightened Burden of Proof to Invalidate Patents (Duane Morris LLP)

“The Court’s decision preserves nearly 30 years of Federal Circuit jurisprudence giving patent holders protection against invalidity arguments by imposing the heightened clear and convincing standard on challengers. Significantly, however, the decision reinforces the benefits of presenting as much evidence as possible to the USPTO when prosecuting a patent. Those seeking to invalidate patents will emphasize the evidentiary value of material not presented to the USPTO. This portion of the Supreme Court’s decision may likely be the most heavily litigated as courts continue to work to fashion jury instructions to address the weight of such evidence.” Read more »

The U.S. Supreme Court Upholds a Clear and Convincing Evidentiary Standard for Patent Invalidity Under 35 U.S. C. §282. (Fenwick & West LLP)

“At trial, Microsoft alleged that the ‘449 patent was invalid because the technology claimed in the patent was practiced by an S4 software product, a product undisputedly sold by i4i more than a year before the patent application was filed, and not considered by the USPTO during the prosecution of the ‘449 patent. However, the parties disagreed over whether the software actually included the invention claimed in i4i’s patent.” Read more »

Supreme Court Leaves Standard for Patent Invalidity Unchanged (Morgan Lewis)

“The Court did not accept Microsoft’s alternative argument that the burden of proof should be different for invalidity defenses based on prior art references not considered by the U.S. Patent and Trademark Office (PTO) in granting an asserted patent. The Court did, however, recognize the ‘commonsense principle’ that…’if the PTO did not have all material facts before it, its considered judgment may lose significant force.’” Read more »

Supreme Court Upholds Clear and Convincing Standard for Invalidity but with a Twist (Armstrong Teasdale) 

“An interesting twist comes in the Court’s recognition that ‘new evidence’ of invalidity likely carries more weight than evidence already considered by the Patent Office.” Read more »

IP Update – A Summary of the Supreme Court’s Microsoft Corp. v. i4i Limited Partnership Decision (Finnegan)

“Justice Breyer wrote a concurring opinion (joined in by Justices Scalia and Alito) in which he joined the Court’s opinion ’in full’ but wrote separately to emphasize that the clear-and-convincing standard applies only to questions of fact and not to legal questions.” Read more »

Supreme Court Unanimously Maintains High Hurdle for Invalidity Defense (Bracewell & Guiliani LLP)

“The accused infringer, however, is not without options. Although the Court steadfastly affirmed the heightened standard of proof…[it recognized that] the Patent Office’s judgment may lose significant force if it did not have all the material facts before it. In turn, this may make it easier for the accused infringer to satisfy its burden.” Read more »

U.S. Supreme Court Affirms the Rule That Patent Infringers Must Prove Invalidity Defense by Clear and Convincing Evidence (Schnader Harrison Segal & Lewis LLP)

“This result was good news for patent owners, who faced the possibility that the Court would reduce the standard of proof for invalidating a patent. But there was good news for alleged infringers as well: in affirming the existing standard of proof, the Court stated its approval of a jury instruction that may make some patents easier to invalidate.” Read more »

Related Documents:

Microsoft Corp. vs. i4i LP: Supreme Court Decision 

Brief For Petitioner 

Brief for Respondents 

Brief of Amicus Curiae Electronic Frontier Foundation et al., in Support of Petitioners