Supreme Court Confirms Standard of Proof Required to Overcome a Patent’s Presumption of Validity
Microsoft v. i4i (decided 6/9/11)By: Lawrence M. Green
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What This Means to You
- When determining whether an invalidity defense is proven by “clear and convincing evidence”, an alleged infringer should request a jury instruction to consider whether the evidence of invalidity 1) differs from that evaluated by the US Patent and Trademark Office (PTO); and 2) is materially new.
- A jury instruction must be requested in a timely fashion or that instruction will be forever waived.
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Overview
In its June 9, 2011 decision in Microsoft Corp. v. i4i Limited Partnership, the US Supreme Court confirmed that the statutory standard of proof required to invalidate a patent in court is clear and convincing evidence, regardless of whether the evidence was or was not considered by the PTO, although the evidence of invalidity carries more weight if it was not considered by the PTO.
Case Background
This appeal resulted from the decision of the district court which rejected Microsoft’s defense that i4i’s patent was invalid because of a prior sale of a product. This evidence was not before the PTO, and Microsoft requested—but did not get—a jury instruction that it need only prove invalidity by a “preponderance of the evidence”.
The US Court of Appeals for the Federal Circuit affirmed and the Supreme Court agreed to hear the case.
Decision Analysis
Under US statute, a patent is presumed valid, and a challenger has the burden of proving invalidity. Microsoft wanted the standard of proof to be a “preponderance of the evidence”, requiring only that Microsoft prove that i4i’s patent was more likely invalid than not.
The Supreme Court’s job was to decide what standard of proof a challenger has to meet by determining what Congress meant by “presumed valid.” The Court decided that, while the statute did not specify the standard of proof, when Congress uses a term that already has an established common law meaning, that “settled meaning” of that term is how the term should be interpreted, absent evidence to the contrary. The common law meaning of presumption of validity at the time the statute was enacted required a “clear and convincing” standard of proof.
The Court further stated that a “preponderance of the evidence” standard would be too easy to meet; therefore, Congress intended to adopt the tougher “clear and convincing” evidence standard when it enacted the Patent Act. The Court also noted that Congress did not intend the standard of proof should fluctuate depending on the facts of a case.
Takeaways
An accused infringer that asserts a prior art defense should request a jury instruction at the proper time that tells the jury to consider whether the invalidity evidence differs from that considered by the PTO and whether this evidence is materially new when considering whether the invalidity defense is proven by clear and convincing evidence.
