|Much to give thanks for ...|
Something else that seems to keep nearing an end only to grasp at one last gasp of air is the i4i v Microsoft litigation (see previous AmeriKat posts here – and there are many). On the same day that the Supreme Court declined to grant Tiffany’s petition for writ of certiorari in the eBay case, the Supreme Court granted Microsoft's writ of certiorari. This follows an epic battle between the two companies which saw Microsoft mostly as the "losing" party as the case journeyed from the Eastern District of Texas's courts to the Court of Appeals for the Federal Circuit. The case, which Microsoft emphasized non-too passively in their petition to the Supreme Court, was the largest patent infringement verdict ever to be affirmed on appeal to the tune of $290 million. Such an award would indicate that even if it wasn't a question of law which made Microsoft petition the Supreme Court, it was surely a question of money. Now that the Supreme Court will be charged with hearing the case, the AmeriKat has set out in brief the parties’ arguments from their petitions which provide a preview of their upcoming oral arguments.
i4i contended at trial that that Microsoft Word infringes their US Patent No 5,787,449 (the “’449 Patent”) which relates to markup languages, specifically Extensible Markup Language (“XML”) used in electronic documents. Markup languages indicate how and where text is displayed in documents. The ‘449 patent covers a method whereby the software can process and store custom XML separately and distinctly from user-imputed content. The separation of the XML is called a “metacode map” which, according to the patent, allows a computer to manipulate the structure of a document without reference to the content entered by the user. Since 2003, Microsoft Word has allowed users to edit documents containing XML.
"[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."The Federal Circuit for the Court of Appeals held in the i4i case that Microsoft was required to prove its defence of invalidity under section 102(b) of the Patent Act by "clear and convincing evidence", notwithstanding that the prior art on which Microsoft's invalidity defence relied was not before the Patent and Trademark Office (PTO) prior i4i's patent being granted. The basis of section 282 is argued to mean that patents granted by the PTO are presumed to be valid because, in brief, the examiner has the facts and the expertise to properly grant or reject a patent application before it and is therefore “presumed to do its job” (Am. Hoist & Derrick Co. (1984)). Therefore, to rebut the presumption that the PTO has done its job, a party must prove invalidity based on a higher evidential standard of "clear and convincing evidence". This evidential standard is a higher burden than that of a "predominance of evidence", which Microsoft argues should be the standard of proof.
Microsoft argues that the presumption that this higher standard of proof is always automatic is wrong in cases where the PTO did not have the evidence, on which a party relies, before it at the time of granting a patent. Given that the PTO never had an opportunity to see the evidence of prior art, the presumption that they were undoubtedly correct to grant the patent is diminished and thus a lower standard of proof should be allowed, i.e., that of a predominance of evidence.
"appropriate to note that the rationale underlying the presumption - that the PTO, in its expertise, has approved the claim, seems much diminished."In that case, the Court held that claim 4 of the plaintiff’s patent included subject matter that was obvious and therefore not patentable due to an earlier patent not before the PTO during the prosecution of claim 4. Although the Court was not specifically charged with deciding whether the failure to present the earlier patent voided the presumption of validity, the court nevertheless noted that the arguments for requiring a higher evidential standard in such circumstances is diminished – although not destroyed, i4i would point out.
This dictum from the Court was, according to Microsoft, affirmed by all twelve regional circuits prior to the Federal Circuit’s creation in 1982. Ever since the Federal Circuit assumed jurisdiction, Microsoft contends that it has
"repeatedly disregarded KSR's invitation to reconsider its heightened evidential standard. Instead, it has clung to its pre-KSR caselaw and continued to apply the clear-and-convincing-evidence standard even to invalidity defences based on prior-art evidence that the PTO never considered."
More in Part II