Thursday, September 30, 2010

Microsoft Asks the U.S. Supreme Court to Make it Easier to Invalidate Patents

In August Microsoft filed a petition for certiorari in the U.S. Supreme Court that asked the Court to make it easier to invalidate an issued U.S. patent.  Since its creation in 1982, the U.S. Court of Appeals for the Federal Circuit required that a defendant seeking to invalidate a patent prove invalidity by "clear and convincing evidence" -- meaning that it is highly probable that the patent is invalid.  Normally, the standard of proof in civil cases is "preponderance of the evidence," meaning that something is more likely than not.  For example, a patent owner need only prove that the defendant infringes the patent by a preponderance of the evidence.  "Preponderance" is a much easier standard to meet than clear and convincing evidence, so patent defendants have been at a disadvantage. 

Yesterday (September 29), eleven amicus briefs were filed in support of Microsoft's request that the Supreme Court hear the case and change the Federal Circuit's long-time standard of proof.  One of those was filed by the Electronic Frontier Foundation, Public Knowledge, the Computer and Communications Industry Association, and Apache Software.  I was counsel of record and a co-author of that brief.  EFF's blog post about the case is here.

Joe Mullin has a detailed article about the case that includes links to all eleven briefs.  The companies supporting Microsoft span much of the technology industry, including Google, Intel, Yahoo!, Apple, Dell, Hewlett-Packard, Facebook, and many others.  36 law, business and economic professors also filed a brief supporting Microsoft.

Other articles about this case are here, here, here, here, here and here.

The Supreme Court will likely decide in December whether to hear the case.

UPDATE:  Dennis Crouch has a detailed discussion at Patently-O.   And IPWatchdog has a detailed interview with Mark Lemley about this subject (Mark is counsel of record on the professors' brief.)  Also, here is Techdirt's post.


  1. Welcome to the blogosphere! It just so happens that my kids agree that the duck is the funniest animal. I asked them to make up a funny song about an animal, and they came up with five songs about ducks.

  2. Greetings Mike!
    Good blog... I read your brief and agree with some of the points, but not the overall conclusion... as to MSFT, didn't see where Lemley bothered pointing out that MSFT probably didn't sustain any harm in this case, since they already had a chance to invalidate the PTO under an even looser standard. Didn't they use this reference in the PTO as well, and even without having to produce source code? I fail to see how letting them have another bite at the apple with a higher standard than that used by the PTO (but lower than clear and convincing) caused them any harm.

  3. To JNG: The reference Microsoft used in the litigation, and the subject of the Supreme Court cert. petition, was an on-sale bar under §102(b). Specifically, a sale by the plaintiff of a product called S4 before the critical date. The last I checked, you couldn't use this type of prior art in a reexamination, which is limited to patents and printed publications. Did the reexam include S4?