June 17, 2011

Snippets: Microsoft V. i4i decision

25 USC 282 states that:
“[a] patent shall be presumed valid” and “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.”

The much awaited decision of the US Supreme Court in microsoft v. i4i has come. The facts of the case were described by me in my previous post. SCOTUS in its 9-0 ruling has affirmed the Federal Court's judgment and microsoft has lost. Court held that under 35 USC 282 the standard for patent invalidity is still clear and convincing standard and not prepoderance of evidence. The majority judgment written by Justice Sotomayor is lucid. Court's decision is based on two major reasons. First, if the intention of the Congress was not to adopt a higher standard then it should have written so in the statute itself. The interpretation followed by different Federal Circuits was clear to Congress, yet it never changed the law, hence Congress by its acquiescence agreed with the courts' interpretation. 

Second reason is very interesting. Court says that by enacting section 282 Congress codified the existing common law relating to patents' invalidity. It is so because, when a patent is challenged it is also a parallel attack on the USPTO, a government agency. Therefore, the standard must be higher. Also the common law meaning of the terms "presumed valid" and "..lies on one who challenges the patent" is that the standard of proof has to be higher than preponderance of probabilities.

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