Briefs Filed In Supreme Court Case On Lowering Patent Validity Test

A list of briefs were filed Friday in support of maintaining the high standard in the United States for questioning the validity of patent. They join a series of briefs for the other side. The decision of the Supreme Court expected in the coming months could have a major impact on patent law.

Under current US law, a challenger of a US patent’s validity must prove the case by “clear and convincing evidence,” a higher standard than normal in civil litigation, where it is based on a preponderance of evidence (IPW, IP Law, 12 January 2011).

The latest filings, available here, in the case known as Microsoft v. i4i were pointed out by attorney Hal Wegner of Foley & Lardner.

The current rule is seen by some as favouring invalid patents, but is also seen as an acknowledgement of the expertise of the US Patent and Trademark Office, which grants the patents. But an outcome changing the current system also could be an aid to large companies that have been the target of so-called patent trolls that obtain patents in order to sue firms for infringement.

In 2009, the small Canadian company i4i won a case in Texas in which the jury said Microsoft had wifully infringed its patent and awarded it $240 million. Microsoft asserts, however, that i4i’s patent is invalid because the Canadian firm violated the on-sale bar, 35 USC § 102(b). That is, more than one year before i4i filed for its US patent, i4i’s predecessor company had sold software in the US incorporating the claimed invention.

Microsoft has challenged the decision but so far courts have sided with i4i based on the basis that Microsoft must show clear and convincing evidence, but now the US Supreme Court is preparing to rule, possibly by end of June.

The final stage of the pleadings is the filing of the Petitioner’s Reply Brief, which will then be followed on 18 April by the oral argument at the Supreme Court, according to Wegner.