In an en banc petition to the United States Court of Appeals for the Federal Circuit, Microsoft challenges the “clear and convincing” standard of proof required to render a patent invalid.
It is black letter law in the field of patents that once a patent is issued, it is presumed to be valid and “clear and convincing” evidence is required to overturn the presumption of validity to prove a patent invalid. In its petition in the Lucent v. Gateway litigation originating in the United States District Court for the Southern District of California, Microsoft argues that the standard of proof for an invalidity defense should be “preponderance of the evidence” for prior art defenses where the prior art had not been before the U.S.P.T.O. examiner during prosecution of the patent-in-suit.
In this case, Microsoft employed prior art that had not been before the U.S.P.T.O. during prosecution of one of the Lucent patents-in-suit as a basis for a 35 U.S.C. 103 obviousness defense. Not only had the prior art reference not been before the U.S.P.T.O. during original prosecution of the patent-in-suit, but upon reexamination of the patent, the U.S.P.T.O. declared the claims invalid based upon the prior art in question, showing that the prior art did make a difference in patentability of the claims of the patent-in-suit.
Based upon Federal Circuit precedent, the district court denied Microsoft’s request for jury instructions including a “preponderance of the evidence” standard rather than the “clear and convincing” standard.
Microsoft now asserts that the higher burden of proof should not apply to prior art that had not been considered by the patent examiner when determining the claims to be patentable. Microsoft argues that U.S.P.T.O reexamination proceedings do not employ a presumption of validity and heighten standard of proof to question patentability of claims. Microsoft leans of United States Supreme Court dicta in the KSR decision and notes that the presumption of validity is based upon an assumption that the U.S.P.T.O. did its job correctly in determining patentability over prior art, and that this does not and should not apply where the prior art was not considered by the U.S.P.T.O. Basically, Microsoft argues that the underlying rationale for the heightened standard does not exist in these situations. Notably, Microsoft’s petition primarily cites academic and other articles advocating a change in the law, rather than case law, since it seeks the Federal Circuit to change what has been known as black letter law in the patent arena.
I take particular interest in this case since I litigated it both as outside counsel at its inception and also while in-house at Microsoft managing patent litigation. It is about time that someone made this bold challenge to the standard for validity.
For further information regarding the standard for validity, see this article:
Crouch, Dennis "Microsoft Questions Strong Presumption of Patent Validity over Newly Found Prior Art." PATENTLYO Law Blog, 13 October 2009.
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