Another venerable institution of patent law is under siege. Microsoft is challenging the longstanding rule that invalidity of patents may only be overcome by clear and convincing evidence. Patents may be held invalid if prior art existed which shows that the invention is not “novel” because it already previously existed. However, because of the judicial policy of presuming that patents are valid, evidence presented by an accused infringer which simply meets the “more likely than not” standard is not enough. While that standard is good enough to prove patent infringement, it is insufficient to challenge validity. In other words, if a jury simply believes that the patent is “probably” invalid (i.e., more likely than not) due to prior art, it cannot find invalidity. The rule requires that the evidence be “clear and convincing.”
Microsoft has set out to change that. In i4i Limited Partnership v. Microsoft, it lost at the Court of Appeals level on the issue. It has now filed a petition for certiorari with the United States Supreme Court. Its reasoning is that in certain cases the “clear and convincing” standard is too high. They argue that it is too high when the Patent Office was unaware of the prior art in considering issuance of the patent, and thus did not consider it. Thus, the rationale of the higher standard, it argues, should not apply.
Microsoft was emboldened to take this leap by a prior Supreme Court case which dealt with a different basis for invalidity: obviousness. In the 2007 Supreme Court decision of KSR, Int'l v. Teleflex, the Court broadened the standard for finding obviousness as a basis for invalidity. In so ruling, the Court had said the rationale for the presumption of patent validity was “much diminished” when the relevant prior art was not before the PTO.
We will know soon enough whether the Supreme Court accepts the case for hearing. If it does, brace yourself to hear more about one of the biggest intellectual property cases of the year.