Published on: 6/10/2011
Meaghan H. Kent of Venable LLP

On June 9, 2011, in a clearly written and straightforward opinion, the U.S. Supreme Court unanimously affirmed the Federal Circuit’s decision in Microsoft Corporation v. i4i Limited Partnership, thus upholding the clear and convincing evidence standard for overcoming the presumption of patent validity set forth in 35 U.S.C. § 282. 

Justice Sotomayor delivered the opinion of the Court, which was joined by all of the Justices except Justice Thomas, who filed a concurring opinion, and Chief Justice Roberts who recused himself.  Justice Breyer, though he joined in the majority, also filed a concurring opinion in which Justices Scalia and Alito joined. 

The Court rejected both Microsoft’s primary argument that invalidity need only be shown by preponderance of the evidence and its alternative argument that the preponderance standard must at least apply where the evidence before the factfinder was not before the PTO during the examination process. 

As to Microsoft’s primary argument, the Court’s opinion rests on the language of section 282 of the Patent Act, specifically, the language that a patent is “presumed valid.”  The Court holds that although section 282 does not explicitly articulate a standard of proof, because Congress used the common-law term “presumed valid,” the general rule provides that the “common-law term” must come with its common law meaning.  It then explains that the common law meaning of “presumed valid,” as articulated in RCA v. Radio Engineering Labs, 293 U.S. 1 (1934), is that the presumption is “not to be overthrown except by clear and cogent evidence.”

As to Microsoft’s alternative argument, the Court acknowledges that the rationale underlying the argument is sound, but insists that it is bound to fall back on the express statutory language, explaining that had Congress wanted to draw that distinction as to new prior art, it needed to do so expressly.  Further, it maintains that none of the pre-1952 case law implied a varying standard, as argued by Microsoft. 

Instead of changing the standard of proof, the Court praises the “common sense principle that the Federal Circuit has recognized throughout its existence – namely, that new evidence supporting an invalidity defense ‘may carry more weight’ in an infringement action than evidence previously considered by the PTO.”  In fact, in dicta, the Court encourages jury instructions to that effect, stating, “although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should be given.”

The Court acknowledges the extensive policy arguments offered by the parties and the amici, but quite simply responds that it is “in no position to judge the comparative force of these policy arguments” because Congress specified the applicable standard of proof in 1952 and since then has allowed the Federal Circuit’s interpretation to stand despite making numerous other amendments.  The Court concludes by emphasizing that “[a]ny recalibration of the standard of proof remains in [Congress’] hands.”

Justice Breyer joined in the opinion, but filed a separate concurrence to emphasize that the clear and convincing evidence standard affirmed by the Court applies to questions of fact and not to questions of law.  He emphasizes that the strict standard of proof “has no application” where “the ultimate question of patent validity turns on the correct answer to legal questions.”  He says that this distinction is key to increasing “the likelihood that discoveries or inventions will not receive legal protection where none is due.”

Finally, Justice Thomas concurred in the judgment, explaining that he does not agree that the “presumed valid” language of the statute did not clearly convey the standard of proof, but that because the statute is silent as to the standard of proof, it did not alter the common law rule, which was clear and convincing evidence. 

By letting the current standard stand, the Court has affirmed the deference placed in the PTO and ensured that patentees can rely on their bargained for presumption of validity.  Nonetheless, the Court has acknowledged that prior art not previously before the PTO should be given a certain amount of additional weight, and through its opinion is encouraging jury instructions to this effect. 

Meaghan Kent is an attorney at Venable in Washington D.C.  Contact Meaghan here.