Friday, February 4, 2011

Opening Round Briefs in Microsoft v. i4i

In two previous posts (here and here), I discussed the Microsoft v. i4i case presently pending before the U.S. Supreme Court.  I'm not going to repeat those lengthy posts, but in summary, Microsoft is asking the Court to make it easier to invalidate U.S. patents.  Microsoft seeks to lower the standard of proving invalidity from "clear and convincing evidence" to "preponderance of the evidence."  The case will be argued in April 2011, and likely decided by June 2011.

The opening round briefs have now been filed.  Microsoft filed its brief, along with 20 amicus briefs supporting Microsoft and an additional 5 briefs "supporting neither party."  Microsoft's brief discusses all the issues and gives a detailed explanation of the case.  The amicus briefs tend to focus on different points -- here's what a few of them say:
  • I co-authored the EFF brief (joined by Public Knowledge and the Apache Software Foundation).  This brief discusses how the existing clear and convincing standard harms open source software developers and small software innovators.  It explains how the existing standard results in an unfair playing field in software patent litigation.
  • The CTIA brief has an interesting discussion of the empirical effects of the clear and convincing standard.  It discusses how the existing standard results in excessive deference to the Patent and Trademark Office (PTO) and how the standard affects licensing negotiations.
  • The CCIA brief discusses a number of the deficiencies in the patent examination process.  Because the PTO is far from perfect, this means that there is no justification for excessive deference to the PTO's decision to grant a patent by making the standard of proving invalidity one of clear and convincing evidence.
  • The brief by 37 law and economics professors also discusses constraints on the PTO's decision making process.
  • A brief by Internet Retailers contained an interesting 40-page appendix of federal statutes that explicitly require "clear and convincing" proof.  Since the section of the Patent Act in question -- 35 U.S.C. §282 -- doesn't contain such a standard, the plain inference is that Congress didn't intend §282 to require clear and convincing evidence.

(I might add to this list after I read more of the briefs.)

Here are links to all of the briefs:

Microsoft's Opening Brief (backup location)

Briefs supporting Microsoft:
1. Apotex, Inc. by Roy Englert,  Mark Stancil, and Daniel Lerman at Robbins Russell
2. Apple Inc. and Intel Corporation by Deanne Maynard, Seth Galanter, and Marc Hearron at Morrison Foerster
3. Business Software Alliance by Andrew Pinchus and Paul Hughes at Mayer Brown
4. Cisco Systems,  Ebay Inc., Netflix, Inc., Office Depot, Inc., Toyota Motor Corporation,  and Trimble Navigation Limited by John Vandenberg and Joseph Jakubek at Klarquist Sparkman
5. Computer & Communications Industry Association (CCIA) by Jonathan Band of Jonathan Band PLLC
6. CTIA -- The Wireless Association by Michael Kellogg and Greg Rapawy of Kellogg Huber
7. Electronic Frontier Foundation, Public Knowledge and the Apache Software Foundation by Michael Barclay, Julie Samuels, Corynne McSherry and James Tyre of EFF (backup location)
8. EMC Corporation by Paul Dacier of EMC Corporation
9. Google Inc., Verizon Communications Inc., Consumer Electronics Association, Comcast Corp., Dell Computer Corp., Hewlett-Packard Co., HTC Corp., Intuit Inc., L-3 Communications Corp., Linkedin Corp., Lockheed Martin Corp., Mastercard Worldwide, The New York Times Company, Rackspace Hosting Inc., Red Hat,  Inc., Shutterfly,  Inc., Software & Information Industry Association, Time Warner Inc., Wal-Mart Stores, Inc., and Zynga Inc by Paul Clement,  Daryl Joseffer,  and Adam Conradat of King & Spalding
10. Hercules Open Source Project by Joshua Rosenkrantz and Mark Davies at Orrick
11. Internet Retailers by Peter Brann, David Swetnam-Burland,  and Stacy Stitham at Brann & Isaacson
12. 37 Law, Business, and Economics Professors by Mark A. Lemley at Stanford.
13. Professor Lee A. Hollaar by David Bennion at Parsons Behle
14. SAP America,  Inc., Acushnet Company, Facebook, Inc., General Motors LLC, Pregis Corporation,  Symantec Corporation, Terex Corporation,  and Yahoo! Inc by James Dabney and John Duffy at Fried Frank
15. Securities Industry and Financial Markets Association and The Clearing House Association by John Squires at Chadbourne & Parke
16. Synerx Pharma, LLC by Christopher Ohly and Douglass Hochstetler at Schiff Hardin
17. Teva Pharmaceuticals USA Inc. by Henry Dinger and Elaine Herrmann Blais at Goodwin Procter
18. The Public Patent Foundation by Daniel Ravicher at PubPat Cardozo School of Law
19. Timex Group USA, Inc., Macdermid, Inc., Gem Manufacturing, Inc., Perfect 10 Antenna Company,  Inc.,  Carson Optical, Inc. by John Horvack and Fatima Lahnin at Carmody & Torrance
20. William Mitchell College of Law IP Institute by Carl Moy and Jay Erstling of William Mitchell

Briefs supporting neither party:
DC Bar Association
Professor Roberta Morris
     Of these briefs, the AIPLA and IBM briefs argue for affirmance and the existing clear and convincing standard -- it's not clear why these briefs were filed now, instead of in March when the amicus briefs supporting i4i are due.

The EFF post on the amicus brief filing is here.  Patently-O's discussion is here.


  1. This is a marvelous resource for anyone trying to get a handle on who filed briefs in this case. Two supplemental resources are: 1. my pdf of all the TOCs of all the briefs (for people who may not want to read everything, and may want to know which briefs raise which points); and 2. my list of filers, where I break out all the different entities that Barclay's list indicates filed jointly. See

  2. It's an encouraging sign that heavyweights like the DOJ and BIO are supporting i4i. If their arguments succeed, then i4i and future patentees can have it both ways -- they can keep the clear-and-convincing standard, but with certain evidence being given greater "weight." Brilliant. As far as I'm concerned, i4i won this patent litigation fairly at the lower courts, and Microsoft should have just let it go long before now.