Supreme Court Affirms Heightened Burden of Proof to Invalidate Patents

• By:
• Duane Morris LLP
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Emphasizes Value of Evidence Presented to USPTO During Patent Prosecution In a unanimous decision issued on June 9, 2011, the U.S. Supreme Court affirmed the Federal Circuit's holding in Microsoft v. i4i Limited Partnership1 that clear and convincing evidence is required to overcome the presumption of validity to issued patents, codified in section 282 of the Patent Act. Although the Court affirmed the clear and convincing evidence standard, the Court also endorsed the Federal Circuit's qualification that evidence not considered by the U.S. Patent and Trademark Office (USPTO) during the prosecution of the patent may "carry more weight" than evidence before the USPTO.2

As such, the ruling preserves a heightened standard to protect patent holders, but also encourages patent applicants to provide as much relevant information as possible to the USPTO. The patent at issue claimed an improved method for editing computer documents.3 I4i sued Microsoft for willful infringement of the patent.4 Microsoft counterclaimed and sought a declaration that the patent was invalid. Microsoft argued that an i4i product (S4) anticipated the same invention as that claimed in the patent and that i4i had sold S4 in the United States more than one year prior to the filing of i4i's patent application. The date, subject of the sale, and the fact that this evidence was not considered by the USPTO were undisputed. The parties disputed whether the S4 software program embodied the invention claimed in i4i's patent.

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