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Supreme Court Ruling Maintains Tight Invalidity Standards
in i4i L.P. Patent Infringement Case
What this means for you
Earlier this month, the U.S. Supreme Court issued a decision in Microsoft Corp. v. i4i L.P., 589 F.3d 1246 (Fed. Cir. 2009), upholding a Federal Circuit Court of Appeals decision affirming an award of close to $300 million in damages to software developer i4i for willful patent infringement. Download Microsoft Corp. v. i4i L.P.
Microsoft argued that i4i’s patent, for programming language used in Microsoft Word, was invalid because during prosecution of the patent application resulting in the patent at issue, i4i did not disclose to the Patent Office Examiner that it had sold a similar system (S4) more than a year before its application was filed. Since the alleged invalidating prior art was never considered by the Patent Office Examiner during prosecution of the patent at issue, Microsoft claimed it only needed to prove invalidity by a preponderance of the evidence, not the traditional standard of “clear and convincing” evidence.
Attorneys for i4i responded that Microsoft should be held to the higher standard; in other words, Microsoft was required to prove invalidity by "clear and convincing" evidence even if the Patent Examiner had not considered S4.
Ruling in Microsoft’s favor could have given a considerable boost to defendants in future patent litigation cases as it would have made it easier to invalidate patents. The Supreme Court, however, ruled in i4i’s favor and upheld the requirement that invalidity must be proven by clear and convincing evidence––even for prior art not considered by the Patent Office Examiner.
It’s no great surprise that the Supreme Court ruled this way. However, the Supreme Court did make clear that ordinarily the jury should be instructed to consider in its deliberations of patent invalidity whether new prior art evidence presented at trial is material, and to consider that fact when determining whether an invalidity defense has been proven by clear and convincing evidence.
If you or your client have questions about how this ruling could effect your patents, or any other questions regarding intellectual property law, contact Rod directly at 310.201.3517, or RBerman@jmbm.com
About Rod S. Berman
As Chairperson of the Firm’s Intellectual Property Law Group, Rod Berman focuses on patent, trademark, copyright, unfair competition and internet issues. He is recognized by one of America’s foremost legal publications, the Daily Journal, as one of the top 30 intellectual property attorneys in the State of California, and by the Los Angeles Business Journal as one of the top 100 attorneys in Los Angeles. His practice includes counseling, litigation, opinions, licensing and prosecution. He represents many nationally and internationally known clients, and has been involved in a number of published patent, trademark and copyright cases in a wide variety of industries.
About JMBM’s Patent Litigation Group
JMBM’s Patent Litigation Group is a team of experienced patent litigators. Whether pursuing patent violations or defending infringement claims, you need attorneys that provide successful results — and the patent litigators at Jeffer Mangels Butler & Mitchell LLP know how to deliver. We represent inventors and entrepreneurs, family-owned businesses, middle-market companies and the FORTUNE 500 in patent litigation. Our approach is aggressive and efficient, and we have an impressive record of wins. Call on us to see how we can help. www.JMBM.com
