Maintaining the Clear and Convincing Evidence Standard for Patent Invalidity Challenges in Microsoft Corp. V. I4i Limited Partnership, 131 S. Ct. 2238 (2011)

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The term "burden of proof" is one of the "slipperiest members of the family of legal terms," and the correct standard of proof when challenging the validity of a patent is no exception. (l) Section 282 of the Patent Act states that "[a] patent shall be presumed valid" and that "[t]he burden of establishing invalidity of a patent ... shall rest on the party asserting such invalidity." (2) Eighteen years before the Act's codification in 1952, the Supreme Court held that the presumption of validity must be overcome by clear and convincing evidence. (3) In the years following the Patent Act's enactment, the Federal Circuit similarly interpreted Section 282 to require a defendant seeking to overcome this presumption to prove invalidity by clear and convincing evidence. (4) The clear and convincing evidentiary standard is higher than the "preponderance of the evidence" standard commonly used in civil cases, but lower than the "beyond a reasonable doubt" standard for criminal cases. (5) The main rationale for requiring a higher evidentiary standard to prove the invalidity of patents is deference to the decision of the United States Patent and Trademark Office (PTO) to grant the patent in the first place after considering any relevant "prior art." (6) Prior art is defined as the knowledge of, usage of, patent on, or description relating to an invention already in existence before the invention described in the patent application. (7) As part of its duties, the PTO must search for any relevant prior art and consider any prior art relating to the subject matter of the claimed invention before granting a patent. (8)

Last Term, in Microsoft Corp. v. i4i Limited Partnership, the Supreme Court held that the clear and convincing evidence standard applies to all invalidity challenges to patents--even when the patent's prior art has not been considered by the PTO. (9) Purporting to defer to Congress's intent as expressed in the Patent Act, the Court found that because the presumption of patent validity articulated in Section 282 of the Patent Act already had a common law meaning at the time the Act was passed, Congress intended the clear and convincing standard to apply to all challenges based on a patent's invalidity. (10) In so doing, however, the Court ignored the fundamental logic behind the presumption, thereby setting the standard for proving patent invalidity higher than Congress actually intended for patents whose prior art was never reviewed by the PTO. Although this mistaken decision might decrease uncertainty about the burden of proof for invalidity defenses, the Court's opinion clears the way for holders of bad patents to stifle innovation and business growth.

i4i Limited Partnership (i4i) was a software consulting company that created customized software for its clients. (11) "In June 1994, i4i applied for a patent concerning a method for processing and storing information about the structure of electronic documents." (12) The PTO granted the application in 1998 and issued the patent. (13) In 2007, i4i brought suit against Microsoft for willful infringement, alleging that Microsoft infringed claims of the patent by "making, using, selling, offering to sell, and/or importing Word products capable of processing or editing custom XML." (14) Microsoft counterclaimed and sought a declaration that i4i's patent was invalid and unenforceable. (15) At trial, Microsoft alleged that i4i's patent was invalid under the on-sale bar of Patent Act Section 102(b), which states that an invention is not patentable if it was patented or described in a printed publication or in public use or on sale in the United States more than one year prior to the date of the application. (16) More than one year before filing the application, i4i's predecessor developed and sold a software program known as S4 in the United States. (17) Because the S4 software was never submitted to the PTO examiner, Microsoft challenged i4i's proposed jury instruction that Microsoft was required to prove invalidity by clear and convincing evidence. …