In i4i v. Microsoft, the issue was whether new information not before the Patent Office during prosecution of the patent can be used to invalidate the patent under a reduced “preponderance of the evidence” standard. The patent law (35 USC 282) states that “a patent shall be presumed valid” and “the burden of establishing invalidity … rest[s] on the party asserting such invalidty.” Although the statute does not expressly state the level of proof, prior case law has always applied the heightened clear and convincing standard of proof to invalidate a patent and not the lower “preponderance of the evidence” standard.
The Supreme Court, through statutory construction, review of the statutory history, stare decisis etc. held that the party asserting invalidity bears the burden of providing invalidity under the heightened clear and convincing standard regardless of whether the evidence was previously considered by the Patent Office. The heightened standard strengthens patents because arguments that might have invalidated patents are now less likely to prevail.
- Clear and convincing standard strengthens patents “because arguments that might have invalidated patents are now less likely to prevail.”
The Court also clarified the proper role of new information or evidence not previously before the PTO. The Court recognized the commonsense principle “that new evidence supporting an invalidity defense may ‘carry more weight’ in an infringement action than evidenced previously considered by the PTO.” For example, “the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.” As such, new evidence not before the PTO is more important or better able to prove invalidity compared to evidence previously considered by the PTO during patent prosecution.
In the concurring opinion, Justices Breyer, Scalia and Alito made the distinction that the clear and convincing standard only applied to questions of fact and not questions of law. Questions of law include questions such as “do the facts show that the product was previously ‘in public use’ “? 35 USC 102(b). Do they show that the invention was novel and that it was non obvious? Sections 102, 103. Do they show that the patent application described his claims properly? Section 112.” “Where the ultimate question of patent validity turns on the correct answer to legal questions – what these subsidiary legal standards mean or how they apply to the facts as given – today’s strict standard of proof has no application.”
I invite you to contact me with your patent questions at (949) 433-0900 or [email protected]. Please feel free to forward this article to your friends. As an Irvine Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.