I4i v. Microsoft ruling by the US Supreme Court on 9 June 2011

In i4i v. Microsoft, the US Supreme Court made it more difficult to invalidate patents.

In the USA, patents are presumed to be valid in court. Microsoft was accused of violating i4i's patent. Microsoft argued that the patent was invalid, which raised the question: what standard of proof is necessary to overturn the presumption of validity? Microsoft argued that "a preponderance of the evidence" is sufficient, i.e. if the invalidity more likely than not. i4i argued for a more demanding requirement of "clear and convincing evidence". The Court agreed with i4i.

What does this mean for software developers?

This is bad news. This gives more power to the patent office because it strengthens the value of their decision to grant.

The only good aspect is slightly reduces the advantage that large companies have over small companies. Usually small companies can't afford to go to court, so they get shafted. Big companies have the money and lawyers to go to court, but with this ruling they'll have a harder time invalidating the patents. This might lead to some medium or big companies supporting the abolition of software patents.

Question posed

The Patent Act provides that "[a] patent shall be presumed valid" and that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § l02(b) by "clear and convincing evidence," even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is: Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence.

Related pages on ESP Wiki

• I4i v. Microsoft (2009, USA)
• US Supreme Court
• Case law in the USA
• Drafting the next US amicus brief (no longer relevant)

External links

• ScotusBlog's page about ms v. i4i
  • ScotusBlog's explanation - see the three paragraphs starting with the 5th last paragraph
• Supreme Court docket 10-290
• Cert granted
• Supreme Court to Decide Microsoft Patent Case that Could Make it Easier to Invalidate Patents, 29 Nov 2010, Patently-O
• Microsoft’s Supreme Court Case May Have Huge Benefits For Patent Defendants, 29 Nov 2010, paidcontent.org
• Previewing Likely Arguments In Microsoft Corp. v. i4i Ltd., 17 Dec 2010, ipeg