David slays Goliath - in the US courts

August 01, 2011

The US Supreme Court has validated an approach that makes US patents harder to defend against and, in the process, denied an appeal by the mighty Microsoft against an award of $290m in damages for infringing a small Canadian company's software patent.

i4i, sued Microsoft in 2007, alleging it’s patent US5,787,449 monopolised aspects of markup-language technology used in Microsoft's Word application. Microsoft claimed a judge in a lower court used the wrong standard of proof for invalidating a US patent. Microsoft had argued that the clear and convincing standard used was too high and should be replaced by a lower standard. They effectively wanted to make it easier to defend against patents. However, the Supreme Court have confirmed that the "clear and convincing" standard was the correct one. What does this mean? Although this does not change the law, it confirms the high value of US patents. Not only does a single patent cover a country of 300 million people with a total GDP $14 trillion but, once issued, it can be hard to invalidate. These factors in combination with the prospect of obtaining triple damages for willful infringement and the availability of no-win no-fee litigation make, the US a very attractive jurisdiction for patent filing. Please contact Paul Higgin for more details [email protected]

Swindell & Pearson has been helping businesses and individuals protect and defend their ideas, innovations and brands for over 130 years. With its head office in Derby, the firm also has offices in Stoke, Wolverhampton, Stafford, Sheffield and Burton. To find out how Swindell & Pearson can help you with any intellectual property requirements please get in touch via [email protected] or by telephone on 01332 367 051.