Oral argument: Apr. 18, 2011
Appealed from: United States Court of Appeals for the Federal Circuit (Mar. 10, 2010)
Intellectual Property, Patent INFRINGEMENT, Presumption of Validity, Burden of Proof
The software entity i4i Limited Partnership and Infrastructures for Information, Inc. (“i4i”) sued Microsoft, alleging that Microsoft Word's XML processing and editing capabilities infringed on i4i’s patent. Microsoft counterclaimed, contending that i4i's patent was invalid under 35 U.S.C. § 102(b)'s on-sale bar. At trial, the jury was instructed that Microsoft must prove the patent's invalidity by clear and convincing evidence, even though the evidence Microsoft presented had never been reviewed by the United States Patent and Trademark Office ("PTO"). Microsoft argues that this high standard, which longstanding Federal Circuit precedents support, is contrary to congressional intent, at least where the PTO never reviewed the "prior art" on which the alleged invalid patent was based. On the other hand, i4i contends that the Federal Circuit's caselaw, combined with Congress's enduring failure to legislatively overrule it, reveals that Congress intended a higher standard to apply to the presumption of validity. Amici in support of the clear-and-convincing-evidence standard argue that strong patent protection is essential to encourage innovation. Others, however, encourage the Supreme Court to overturn the Federal Circuit's precedent and require only a preponderance of the evidence. The Supreme Court's decision in this case is likely to affect the certainty of all patents, and consequently is likely to affect the calculus faced by all patent-law litigants when deciding whether to settle or litigate a suit.