Continuing its recent history of adjudicating an increasing number of cases involving substantive patent law, the United States Supreme Court will hear Microsoft Corp.’s appeal of the Federal Circuit’s decision in Microsoft Corp. v. i4i Limited Partnership, et al. The Court granted a petition for writ of certiorari on November 29, 2010.
For years, the Supreme Court decided a patent case very rarely, something on order of once every 5 years or so. Nowadays, opinions involving patent issues are handed down at least once or twice every term. This trend has been developing for the better part of a decade – this time, the issue to be tackled involves the standard of proof to be used when determining a patent’s validity in court.
The case began when i4i brought suit against Microsoft in March 2007 in the United States District Court for the Eastern District of Texas. The suit alleged that Microsoft infringed US Patent No. 5,787,449 (the “‘449 patent”), entitled “Method and System for Manipulating the Architecture and the Content of a Document Separately from Each Other.” The lawsuit alleged that Microsoft’s Word products were capable of processing documents having elements of a markup language known as Extensible Markup Language, or XML. After a jury trial in May 2009, Microsoft was found liable for infringement of the ‘449 patent and ordered to pay huge damages – more than $200 million (plus interest), and an injunction to stop selling infringing Word products.
Microsoft attempted to invalidate the ‘449 patent at trial using non-patent prior art – an i4i product which Microsoft claimed that i4i failed to disclose to the USPTO during examination. However, Microsoft was unable to overcome the high burden of proof – by demonstrating with “clear and convincing evidence” that the claims of the ‘449 patent were invalid. Microsoft argued in its petition for writ of certiorari that where prior art was NOT considered by the USPTO during examination, the burden of proof should be less onerous. Microsoft is therefore asking the Court to introduce a second standard for proving a patent is invalid, to be used depending on whether the potentially invalidating prior art was available to the USPTO at the time of examination.
While it may appear at first glance to be narrowly focused only on situations where the USPTO did not consider the potentially invalidating prior art during examination, the case could have widespread ramifications. In many patent lawsuits where invalidity is asserted, it is often the case that litigation uncovers potentially invalidating prior art that was never available to the USPTO. It is also the case, however, that different claims in a patent may have different prior art asserted to invalidate them. Further complicating matters, more than one patent is frequently at issue as well. Therefore, courts will likely have to address the issue often – and use different standards of proof for invalidating patents in the same case, and even perhaps different claims within the same patent. The result may well be difficulties in applying the standard(s) as well as confusion to juries that must try to wrap their arms around whether different burdens of proof have been satisfied.