Proposals to make invalidation of US Patents easier

March 01, 2011

A US patent is presumed to be valid unless a party proves that it is invalid. At present, the standard of proof for proving that a US patent is invalid is set at a high level. Matters may, however, be changing.

Microsoft Asks US Supreme Court to Make Patent Invalidation Easier The US Supreme Court is to consider a request from Microsoft to lower the standard of evidence required to invalidate a US patent. At present, US law requires “clear and convincing evidence of invalidity” in order to invalidate a US patent. However, in order for a patentee to prove infringement, the patentee need only prove that it is “more likely than not” that a defendant infringed. The “clear and convincing” standard sits somewhere between “more likely than not” and the criminal standard “beyond a reasonable doubt”. Microsoft’s request relates to a dispute with Toronto-based i4i. Back in 2009, a court in Texas awarded over $200 million in damages to i4i after finding that Microsoft willfully infringed a patent owned by i4i. Microsoft was unable to find a prior publication or patent that would invalidate the i4i patent. Microsoft argued at trial that i4i had sold a product relating to the invention well before the filing date of the i4i patent. However, the jury said that Microsoft’s evidence was not “clear and convincing” and declined to invalidate i4i’s patent. Many commentators believe that this case highlights the importance of patents to small companies when trying to compete with large companies like Microsoft. It will be interesting to see whether the US Supreme Court accedes to Microsoft’s request in this case. For further information contact Scott Harrison [email protected]

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