The Circuit Courts’ approach
|"Let's see what makes|
this darned thing tick ..."
|The Kat meditates|
a philosophical point
“the granting of patents that ‘ranged from the somewhat ridiculous to the truly absurd’”Because these factors lead to the PTO’s gate-keeping functions being too far stretched it is vital, Microsoft argues, that patent litigation is able to weed out patents that should not have been granted. The adherence to the clear and convincing evidence standard of proof is a bar to this process and was referred to by the 2003 Federal Trade Commission Report “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy” as
“creating potential for judicially confirming unnecessary, potentially competition-threatening rights to exclude.”Such a risk, Microsoft say, is even more so in cases where the evidence of invalidity was not even before the PTO at the time of grant.
“robust protection against erroneous invalidation of patents [and] recognizes and protects the enormous resources that go into the innovation process”
i4i also argue that any party at any time can bring validity challenges before the PTO which does not require the heighted burden imposed by section
282. The AmeriKat, however, finds this inadequate. Why should the standard of evidentiary proof for invalidity of a patent be different at the administrative level (PTO) than at the judicial level? I4i say that this divergence is acceptable:
“…there is no reason why the two paths should be identical, and Congress was obviously aware of the differences when it authorized re-examination without changing the standard of proof in litigation. Its policy judgment not to establish an exact parallel to litigation should not be second guessed by the courts…”Although the AmeriKat is sure that Congress appreciates this massive vote of confidence, the AmeriKat says that one should never underestimate Congress’s inability to recognize inconsistencies in their own legislation.
"The attack on patent holders and the adverse implications from the standard Microsoft is proposing is unprecedented and would deal a devastating blow to anyMicrosoft’s deputy general counsel for the litigation, David Howard, stated that:
patent holder, large or small. Naturally, the proposed standard would be particularly destructive to the value of patents for inventors, technology pioneers and entrepreneurial companies that don't have the resources of Microsoft and other giants." US
“We are gratified by the Court’s decision. It’s a clear affirmation that the issues raised in this case are critical to the integrity of our patent system.”However, the AmeriKat can’t help to wonder whether Microsoft’s arguments for a lower standard of proof may ultimately come to bite them when they find themselves again in a plaintiff’s position in later litigation.
The IPKat and AmeriKat are interested to know what readers believe a the standard of proof should be in litigated invalidity proceedings.