Intellectual Property, Technology, and the Law

Category Archives: Supreme Court

An Argument for the “Clear and Convincing” Standard

Earlier this week, on April 18, 2010, the Supreme Court heard oral arguments in the Microsoft v. i4i case. As with any patent related case that makes its way to the Supreme Court, the intellectual property community is eager to see what the outcome is, and what effect it might have on their day to day activities.

Unfortunately, as with most patent cases that make their way to the Supreme Court, the Court is likely to offer a very narrow opinion that leaves many important questions unanswered. Time will tell.

The issue at hand is best summarized by the question presented:

The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he
burden of establishing invalidity of a patent or any claim thereof shall rest on the party
asserting such invalidity.” 35 U.S.C. § 282. The Federal Circuit held below that Microsoft
was required to prove its defense of invalidity under 35 U.S.C. § l02(b) by “clear and
convincing evidence,” even though the prior art on which the invalidity defense rests
was not considered by the Patent and Trademark Office prior to the issuance of the
asserted patent. The question presented is: Whether the court of appeals erred in
holding that Microsoft’s invalidity defense must be proved by clear and convincing

The “clear and convincing” standard lies somewhere between the “reasonable doubt” standard for criminal cases and the “preponderance of the evidence” standard for civil cases.

Microsoft is essentially arguing that during litigation regarding the validity of a patent, that prior art not considered by the examiner during prosecution of the patent should be subject to the lower “preponderance” standard. i4i, of course, argues that the existing “clear and convincing” standard should remain intact. The rationale behind the current standard is that a certain amount of deference is provided to the United States Patent and Trademark Office (USPTO). Put another way, merely getting more than 50% of the evidence on your side should not allow you to overcome the opinion of an expert body such as the USPTO.

Yours truly isn’t nearly the first to comment on this topic and take a side.

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