Supreme Court to Decide Microsoft Patent Case that Could Make it Easier to Invalidate Patents

By Dennis Crouch

Microsoft Corp. v. i4i Ltd. (Supreme Court 2010)

The Supreme Court has granted Microsoft's petition for a writ of certiorari and will consider whether patent law requires clear and convincing evidence of invalidity in order to invalidate an issued patent. Microsoft asks that the standard be lowered – at least for the situation where the evidence of invalidity was not considered by the patent office before the patent issued. The Supreme Court has not directly ruled on the issue. However, in KSR v. Teleflex, the Supreme Court did note that the "the rationale underlying the presumption — that the PTO, in its expertise, has approved the claim — seems much diminished" in cases where the patentee "fail[ed] to disclose" the key prior art to the PTO.

I expect that the court will agree that the statutory presumption of validity does not require a clear and convincing standard and that the standard should be lowered when a court is presented with evidence that is substantially different from that considered by the USPTO. Without explanation, Chief Justice Roberts has recused himself from this case – leaving eight justices to decide. At this point, I expect that all members of the court will agree that the standard should be lowered with some disagreement on the exact rule.

Clear and Convincing Evidence: Felony criminal cases require that prosecutors prove their case beyond a reasonable doubt. Most civil cases only require a preponderance of the evidence – often referred to as "more likely than not." Thus, in patent infringement cases, the patentee need only prove that it is more likely than not that the defendant infringed. However, the Federal Circuit has long required that invalidity defenses be proven with clear and convincing evidence. The clear and convincing standard is somewhere between a preponderance of the evidence and beyond a reasonable doubt and is sometimes referred to as "substantially more likely than not." Microsoft has not directly challenged the CAFC's rule of corroborative evidence that a single person's testimony is never sufficient to invalidate a patent.

i4i's case: In 2009, an Eastern District of Texas jury awarded $200 million + interest to i4i after finding that Microsoft willfully infringed the Canadian company's patent. Judge Davis subsequently added-on $40 million for willful infringement. The judge also issued an injunction ordering Microsoft to stop selling Word Products with the capability of using "custom XML." That injunction was stayed by the Federal Circuit pending appeal. On appeal, the Federal Circuit affirmed the lower court's findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. In the meantime, the USPTO has concluded its reexamination of the i4i patent — confirming that the claims at issue are patentable. Microsoft filed a second reexamination request in August 2010 (shortly after it filed its petition to the Supreme Court). However, on November 24, 2010, the USPTO denied the request to begin a new reexamination – finding that the newly asserted prior art failed to raise a substantial new question of patentability (SNQ) as required by statute. Microsoft will likely appeal that denial. In addition, Microsoft apparently patched its software to prevent someone from using custom XML in Word in an effort to avoid the injunction and any further damages.

Microsoft has now moved-on to the Supreme Court — asking the high court to reject the "clear and convincing" evidence standard for proving a patent invalid. As Microsoft wrote in its petition for writ of certiorari, the question is "Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence" when the prior-art was not considered by the USPTO. This is essentially the same question that Microsoft raised in its 2008 petition in z4. That petition was withdrawn after the parties settled.

The Patent: i4i's asserted patent (U.S. Patent No. 5,787,449) covers a system for editing the metacodes of an HTML or XML document. The system uses a metacode map that is stored separately from the XML document and provides a menu of potential metacodes. The patent application was filed in 1994 and should remain in-force until 2015.

Microsoft's Invalidity Argument: Microsoft was not able to uncover any prior publication or patent that would invalidate the invention. However, the software giant argued at trial that i4i had sold an embodiment of the invention in the US more than one year prior to the 1994 patent application date. In particular, Microsoft argues that the invention was "embedded in a system called S4 - that the inventors of the ′449 Patent developed and sold to SEMI, a client of i4i's predecessor, over a year before applying for the ′449 Patent." That sale was not disclosed to the USPTO during the original prosecution and could not be presented during reexamination because reexaminations are limited to a review of prior art patents and publications. At the trial, the inventors (Vulpe and Owens) testified that the S4 system did not include a metacode map or separate the map from the marked-up document – two key features of their invention. Because the source-code for the 1993 custom software was no longer available, Microsoft primarily relied on testimony from a former i4i employee and upon written statements that Vulpe had made to investors and to the Canadian Government suggesting that the S4 software did separate metacode information.

The jury form asked "Did Microsoft prove by clear and convincing evidence that any of the listed claims of the '449 patent are invalid?" The jury answered "no." On appeal, the Federal Circuit held that the jury had sufficient evidence to rule that the patent was not anticipated by S4.

Importance of the Rule: A recent study conducted by Etan Chatlynne and published on Patently-O looked at all 119 Federal Circuit decisions on patent validity for the past several years. The study found that lowering the burden of proof would not have made any difference for 74% of those cases but might have made a difference in 26% of the cases. None of the decisions expressly stated that the result would be different if the standard had been reduced.

The clear and convincing standard probably has an important psychological impact in jury (and judicial) deliberations where the defendant's high burden for proving invalidity is contrasted with the plaintiff's lower burden for proving infringement.

227 thoughts on “Supreme Court to Decide Microsoft Patent Case that Could Make it Easier to Invalidate Patents

  1. Why were those two cases about the Cuff’S even carried on this Blog.(Even after we know the front page in one instance we know was changed in a case along with much more to fit the story they told) When there is 37 CFR 1.312 to correct the Playboy Cuff case and the other one about the breathing tube apparatus? Wouldn’t it have been just a matter of crying foul that the Examiner missed the Drawing or the Claim or the wording and it should have been corrected. and if that failed pay the dough to get it corrected later? SCHEEESSSSSEEEE

  2. I still dont understand why the standard why the standard should be lower if it wasn’t for the sake of providing a ‘lawful’ option for which to discredit/sabotage genuine innovation…

  3. “How does the clear and convincing standard prevent any of these things? People copy ideas with economic potential already, and if they’re going to fabricate evidence wouldn’t they do it as convincingly as possible? Who ever fabricates barely-sufficient evidence?”

    What could possible be the reason for wanting the standard lower if it wasn’t for the sake of allowing dubious evidence to be treated equally?

  4. That’s an incredibly tenuous argument.

    W

    T

    F

    Good God, IANAE, didn’t you just accuse someone of only holding analogies only if they satisfied their view?

    You are really something – bending over backwards in order to try to obfuscate the clean logic presented by TINLA. Oh wait, that’s right – you don’t believe in the property essence of patents. I had forgotten about your selective application of legal theory. Refresh yourself about the commerce act that holds traademark law and contrast that with the Quid Pro Quo of patent law, reminding yourself that the patentee is awarded that right as personal property.

    Your ideology is maddening non-real world.

  5. I recall from Trademark class, many years ago, that the “theory” of public protection is necessary for Congress to promulgate trademark regulations under the Commerce clause,

    In view of your closing paragraph, I don’t feel the need to respond to this argument at length.

    On the other hand, the Constitution specifically empowers Congress to issue property rights to inventors and authors for a limited time.

    Indeed. But that’s not in the interest of the Almighty Dollar. It’s to promote the useful arts, which is in the public interest. You wouldn’t have to promote the useful arts for the patentee’s benefit, because he already knows the new idea before it goes public.

    So patent rights do not need to require that the invention be practiced, or that the patent go abandoned if not practiced.

    They could never require that anyway, because by their very nature patents don’t permit the invention to be practiced by the patentee. I don’t consider that probative of whether a patent is less for the public benefit than a trademark.

    On the other hand, compulsory licenses used to be all the rage for patents that were not being practiced. Some people even say that eBay made them all cool and retro.

  6. That’s an incredibly tenuous argument. Trademarks are obviously for the benefit of the trademark owner, or he would never spend the money to get them and take care to keep them in force. Many of them are worth a whole lot of money (to the owner, not to the public), and the owner has to be vigilant against his competitors to keep them that way. If a trademark is diluted, it’s the owner who has a cause of action for his loss.

    I recall from Trademark class, many years ago, that the “theory” of public protection is necessary for Congress to promulgate trademark regulations under the Commerce clause, and the theory dictates a lot of policies, such as requiring that the Trademark registrant actually use the mark in commerce, and that the mark go abandoned if if no longer used in commerce.

    On the other hand, the Constitution specifically empowers Congress to issue property rights to inventors and authors for a limited time. So patent rights do not need to require that the invention be practiced, or that the patent go abandoned if not practiced.

    Of course, the “theory” about trademarks being for public protection was presented with a smile and a wink, both of which became even more pronounced when we reached the lesson on assessing damages for trademark infringement for “corrective advertising,” without any restriction that the registrant actually use the award for that purpose.

  7. I’d venture that trademarks, at least theoretically, protect the public rather than private property of trademark owners. In contrast, patents protect the patentee’s private property.

    That’s an incredibly tenuous argument. Trademarks are obviously for the benefit of the trademark owner, or he would never spend the money to get them and take care to keep them in force. Many of them are worth a whole lot of money (to the owner, not to the public), and the owner has to be vigilant against his competitors to keep them that way. If a trademark is diluted, it’s the owner who has a cause of action for his loss.

    Sure, a trademark may incidentally benefit the public in some ways, but let’s not forget that the stated purpose of patents in the Constitution is to ultimately, if indirectly, benefit the public.

    Also, trademarks are a lot easier for finders of fact to understand immediately and intuitively.

    The implication being that when it’s harder for a jury to understand the facts the jurors should require more convincing? More explaining, I can understand, but it’s not a logical basis for a higher legal standard of proof.

    If complexity is the key here, why shouldn’t infringement also require clear and convincing evidence? The infringement analysis is pretty much identical to the anticipation analysis. You’re comparing a (presumably complex) device to the construed meaning of a (presumably complex) claim. In both cases, you probably don’t even care about the entire big scary complex device, because only one or two features are likely in dispute.

    Also, not all patents are more complex than all trademarks. Plenty of patents deal with simple mechanical articles, or “software” that anybody could understand without any particular expertise. Design “patents”, for instance, are just about exactly as complex as trademarks, and are granted on the basis of a less thorough examination by the same administrative agency.

    And let’s not forget that the fact finder’s “confusion” is not a sufficient level of convincing to overcome even a bare presumption. Believe it or not, it is still possible for insufficient or equivocal evidence to lose the day against a bare presumption, even on a balance of probabilities standard.

    But if it’s confused jurors we’re worried about, how easy must it be to mislead a jury into invalidating a trademark on the balance of probabilities when confusion is the very basis of the analysis? After all, a trademark doesn’t even have to be the same as the “prior art” to be invalid, it only has to be close-ish, in the jurors’ opinions as uninformed ordinary people. Seems to me, trademarks could benefit from a higher standard of proof.

  8. Wil,

    I can’t read Homey’s mind, but I’d venture that trademarks, at least theoretically, protect the public rather than private property of trademark owners. In contrast, patents protect the patentee’s private property.

    Also, trademarks are a lot easier for finders of fact to understand immediately and intuitively. No expertise is required beyond eyesight and, for textual marks, the ability to read and/or speak the language. Thu, fact finders are a lot less likely to become confused and invalidate valid trademarks under a PotE standard than in the case of patents, where experise is needed to see clearly.

    The assumption is that it is better for invalid patents to remain valid under C&C then for valid patents to be invalidated under PotE. You are free to feel otherwise about that, but there is at least one plain and ready reason for you as to why there would be different standards for patents and trademarks.

  9. Nice story, Ping. Care to actually answer my question? When it comes to the standard of proof for validity, why does it matter that patent law and trademark law are two different areas of law? What is it about the validity of a patent that gives it such an exhalted status as to require the overprotection of C&C evidence when such standard is not afforded to trademark registrations?

    Oh, wait, I forgot: “homey don’t do answers.” Well, thanks for being so helpful.

  10. Excuse me while I digress. One case was closed because I ahem.. wasn’t in the right Jurisdiction.
    And the other was closed because I failed to name a non STUB BUB. At the time Bub was not a Stub? So if the rub was the STUB. Then what’s the RUB BUB?

  11. Possibly because his grammar represents that of a gang-banger and not that of a lawyer.

    As compared to Willton, whose knowledge and application of law represents that of a gang-banger and not that of a lawyer.

    Booyah!

  12. So what?

    The man in the distance looked very fuzzy, so I put my glasses back on.

    As I walked up to him, I could see that he was trying to read a book by holding the book out at arms length.

    I asked him why he was trying to read in such a peculiar way.

    He responded, “I misplaced my glasses and cannot see the print if I hold the book at a normal distance.”

    I (in my best Wilton-helpful manner), offered him my glasses and said “Here, use these. They work for me.”

    He tried them and said, rather disgustingly, “Bah, these are for nearsightedness.”

    I replied (in full deadpan Wilton-times),

    So what?

  13. Gosh, how could anyone possibly miss ping’s point?

    Possibly because his grammar represents that of a gang-banger and not that of a lawyer.

  14. Ya totally missed my point in that the construction I used explicitly skirts the (C)onstitutional right and totally relies on the Congress set laws. Ya still keep missin the fact that the two items have separate laws and dem laws simply don’t say the same thing.

    So what? Neither say that invalidity must be proven by clear and convincing evidence. And furthermore, in many different areas of law, a preponderance standard is all that’s necessary to prove a cause of action. So what’s your point?

    Unless you can point to something specific about patent law compared to trademark law that would justify a C&C standard, merely saying that they are different areas of laws is irrelevant.

  15. You must not have done very well in reading.

    Ya totally missed my point in that the construction I used explicitly skirts the (C)onstitutional right and totally relies on the Congress set laws.

    Gosh, how could anyone possibly miss ping’s point?

  16. Just for jakes, maybe I’ll repost my main man’s stuff from the Eskimo stuff giving more details about the differences between trademark and patents.

    Nah, I be too lazy – but here’s the link:
    link to ipwatchdog.com
    See especially Comment 32.

  17. Willton,

    You must not have done very well in reading.

    Ya totally missed my point in that the construction I used explicitly skirts the (C)onstitutional right and totally relies on the Congress set laws. Ya still keep missin the fact that the two items have separate laws and dem laws simply don’t say the same thing.

    Double chuckles here – you for bein so blatantly 6ish in your reading skills and me for my sophistication in recalling one of the largest chuckle fests seen on these boards. The cherry on top would be, of course, if this draws into the discussion the wits of AI.

  18. Misgivings, perhaps, that a law of patents is per se a restraint on commerce so, unless explicitly permitted in the Constitution, unconstitutional.

    Either that, or misgivings that a law of patents is, unless explicitly permitted in the Constitution, exclusively federal jurisdiction.

    I don’t think they considered borrowing money, regulating commerce, regulating bankruptcy, or standardizing weights and measures to be unconstitutional-unless-explicitly-mentioned, either. They simply wanted to make sure all those powers were available to Congress and uniform for all the states. Enter Section 8, “Powers of Congress”.

  19. What intrigues me is why The Founding Fathers thought it so important to state in the US Constitution that it would be constitutional for the Congress to pass a law of patents. Misgivings, perhaps, that a law of patents is per se a restraint on commerce so, unless explicitly permitted in the Constitution, unconstitutional.

    In that case, the patents clause in the Constitution is one more reason to try to balance carefully the interests of inventors with those of manufacturers and traders, struggling to earn an honest industrious crust.

  20. O, people done point it out – yous just dont wanna believe it. It’s called the value set forth by Congress instituting the patent system per the (C)onstituion (Hey my main man – ya like how I worded that? Nice play on the Constitution, without relying on actually saying that patents are a (C)onstituional right and firmly placing the right squarely in law that Congress has in fact put in place – the law that good ol Willton-policy-boy cannot grasp).

    You must not have done very well in Constitutional Law in school. Read Article I, Section 8, Cl. 8 again, and this time do so carefully. You’ll notice that the Constitution does not provide for patent rights; it merely gives Congress the power to provide for patents at its discretion.

    A patent is not a Constitutional right; it is a piece of property created by an act of Congress pursuant to a power given to Congress by the Constitution. Federal trademark registrations are created the exact same way, albeit through a different Constitutional power (i.e., the Commerce Clause). As IANAE has pointed out at least once, Congress could repeal the Patent Act if it wanted to, and there’s nothing in the Constitution that says it cannot.

  21. The Government has particurally set out a mechanism for correcting the mistake you yabber about – it’s called reexam. And as has been plainly pointed out – Congress especially set the limits there that happen to reinforce the C&C standard.

    Where? Show me the language of the Reexam statute that provides what the evidentiary standard of proof should be in evaluating an invalidity defense in court.

    Furthermore, why should the limits on reexam have any bearing on how a court may evaluate an invalidity defense? Last I checked, only certain types of evidence (i.e., issued patents and pre-grant publications) could be submitted during a reexam. A court is not so limited.

    So you see Sunshine, it aint just administrative deference, it is that deference combined with the particular law.

    The particular law (i.e., Section 282 of the Patent Act) says nothing about what the standard should be. Only the case law says so, and the case law is subject to review by the Supreme Court.

    You got some reason why ya wanna conflate law? Other than your obvious hatred of patents, that is? You got any esplanation of why you want a weaker system of patent protection, other than your Mesnichian perversity?

    First, I’m a patent attorney; I have no hatred of patents per se. What I do not like is patents being used to stifle innovation, and issued patents that do not comply with Sections 101, 102, 103 and 112 do exactly that.

    Second, using the same standard for patents and trademark registrations seems pretty clear to me. Both patent and trademark applications are examined by the same agency, and both patent and trademarks are subject to a statutory scheme outside of the APA. Further, both the Patent Act and the Lanham Act provide for a presumption of validity, but neither specifically states what the standard of proof should be for proving invalidity in court.

    So, it would seem to me that the real question is why we should treat them disparately.

  22. I’ll give the easy :

    Cause the law says so.

    The case law says so. The statutory law, however, does not. And guess what: the case law is subject to change by the Supreme Court.

  23. Willton: Typically, such a heightened standard of proof reflects a value judgment that one thing is more important than another. I have yet to see someone point out what that legitimate value judgment is.

    I think it’s “my client is more important than your client”.

  24. overprotects the administrative agency by shielding their mistakes from scrutiny at the expense of the public.

    Plain wrong Mesnickhead.

    The Government has particurally set out a mechanism for correcting the mistake you yabber about – it’s called reexam. And as has been plainly pointed out – Congress especially set the limits there that happen to reinforce the C&C standard.

    So you see Sunshine, it aint just administrative deference, it is that deference combined with the particular law.

    You got some reason why ya wanna conflate law? Other than your obvious hatred of patents, that is? You got any esplanation of why you want a weaker system of patent protection, other than your Mesnichian perversity?

    Didn’t think so.

    I have yet to see someone point out what that legitimate value judgment is.

    O, people done point it out – yous just dont wanna believe it. It’s called the value set forth by Congress instituting the patent system per the (C)onstituion (Hey my main man – ya like how I worded that? Nice play on the Constitution, without relying on actually saying that patents are a (C)onstituional right and firmly placing the right squarely in law that Congress has in fact put in place – the law that good ol Willton-policy-boy cannot grasp).

  25. If you think there’s a good reason for the disparate treatment, then you should explain why.

    I’ll give the easy :

    Cause the law says so.

  26. billy G: With the weaker standard they would do the following:

    1. copy ideas from patents with economic potential

    2. fabricate development files to ‘prove’ that the claimed inventions were already in use/existence many years before the priority date

    3. use FAKE evidence to invalidate the issued patents that were meant to be legitimate and valid.

    How does the clear and convincing standard prevent any of these things? People copy ideas with economic potential already, and if they’re going to fabricate evidence wouldn’t they do it as convincingly as possible? Who ever fabricates barely-sufficient evidence?

    Max: You are just the starting block against which I press, to get my arguments up and running.

    I, too, see him as a sort of intellectual block.

    Max: Litigation … in Europe … is getting ever quicker and ever cheaper

    Sounds like a great system. We’d love to adopt the better aspects of it and get the benefits of the increased efficiency, but you’re going to have to give us something in return first.

    Because you’re a bunch of foreigners, that’s why. We can’t be having any truck with good ideas that come from foreigners, unless you pay us to make our lives better.

  27. You just don’t realize, even after I have pointed it out so many times, that C&C is a good thing, not a bad thing, a strength, not a weakness.

    Ping, you haven’t pointed out squat. The only thing you use to trumpet the virtues of C&C is administrative deference. However, as I have pointed out at least once on this thread, administrative deference is given its due by instituting a burden-shifting presumption. A C&C standard, however, overprotects the administrative agency by shielding their mistakes from scrutiny at the expense of the public. Typically, such a heightened standard of proof reflects a value judgment that one thing is more important than another. I have yet to see someone point out what that legitimate value judgment is.

  28. Clearly, there are substantive differences between patents and trademarks in this particular area of law.

    Only a fool would seek to conflate the two.

    Merey stating that there are substantive differences between patents and trademarks does not explain why there should be a different evidentiary standard of proof for each case. If you think there’s a good reason for the disparate treatment, then you should explain why.

  29. Talk about “None so blind….” First Billy and now ping.

    I point out an egregious impediment, that is blocking David from filing and prosecuting his app at the USPTO and ping rubbishes it, saying instead:

    “We want more people submitting more applications – including those people who don’t know how to write applications well – having lots and lots of applications means the system is working”.

    Correct me if I am wrong, ping, but are not the Chinese filing more than anybody else, these days?

    ping where is your basis for your statement that David Patentowner has more success inside the USA than without? Litigation is a last resort but, in Europe, it is getting ever quicker and ever cheaper (that’s competition for you). How much experience do you have, of little guys in Europe, leveraging their issued patent rights to secure a fair return that is commensurate with their investment? Or is your statement about life in Europe no more than blind prejudice. Or is it based on Americans playing in Europe by US Rules, wondering why they fall flat on their faces and then blaming “Europe” for their loss of dignity?

    Sorry to say it but, often, the Asians are cleverer. And they file an awful lot of patent applications.

  30. Morning full of chuckles here.

    Maxie, you are in the saddle, yet continue to face the wrong way – you recognize the American love of the small guy and note the distinctiveness of American law in its treatment of C&C, but you continue to think this is a bad thing, and you have never explained how making a strong patent weaker can be a good thing.

    You seem to think that the David Patentowners have equal success elsewhere (here’s a hint – they do not) – and you are simply blind to the reason why the US has this love affair and the return of affection from the Davids of this country (and as you have backward-saddled noted the increasing Davids of the world).

    As a blimey, it is easy to see that you have not learned from history and cannot fathom why we sought independence oh so long ago. You just don’t realize, even after I have pointed it out so many times, that C&C is a good thing, not a bad thing, a strength, not a weakness. Billy boy may not be articulate like my man IANAE, but he at least understands that you don’t make changes to weaken something – especially when those changes are driven by the dominant party seeking only to protect their dominance.

    You state that “For the public, it brings the whole patent system into disrepute” without any support or understanding of what being an American means when it comes to our creativity and drive. It is simply not an inhuman task we seek – it is a difficult one and one that should be relentlessly pushed to be done correctly. The focus indeed should be on doing that pushing – not on weakening the system and accepting second rate work just because it is hard to do first rate work. Make no mistake that the onus is on the examiner rather than the applicant – but that is how it should be and that is how the system is designed. We want more people submitting more applications – including those people who don’t know how to write applications well – having lots and lots of applications means the system is working – the naysayers and Charles Duell’s of the world are facing backwards when the answer to how to handle the workload includes either weakening the system or trying to dissuade that workload from coming in – that’s just plain lazy and runs counter to the actual mandate of promotion. I say no thank you to that mindset.

  31. there is no need to think so deeply. the issue is not just about money and time its also about TRUST. anyway the politicians dont care they are only their for 8 years….screw the little guys..

  32. One more thing Bill. That wasn’t by any chance a whiney sort of comment that you just uttered, was it? Because, if it was, you should perhaps take the advice of your hero, and STOP WHINING.

  33. Billy, when you write:

    “inventors spend lots of money and time to protect a piece of property only to find that the judicial system they trust is not very interested in helping them protect their rights.”

    I sympathise. That, I agree, is a big issue. In your country the little guy is worshipped, but then gets screwed every time. To anybody of any sophistication this is notoriously well-known. But what to do about it. There’s the problem. If David Patentowner is routinely screwed by Goliath Infringer in your country, despite CandC, but not in other countries that run on a preponderance of evidence standard, why is that? Please think about it a bit more deeply.

  34. Nope i posted nothing offensive. I posted TRUTH. Obviously the owner of this site does not want the public to know that Google and Facebook are ideas thieves….why i wonder…:-)

  35. What i have disclosed in my last post was TRUTH. Something which i myself have experienced in the last 2 years – Industrial espionage involving venture capitalists that finance google and facebook.

    Rational readers won’t be convinced by your argument only readers who have little respect for the law would. Why should the standard be lowered? inventors spend lots of money and time to protect a piece of property only to find that the judicial system they trust is not very interested in helping them protect their rights.

    Your arguments are weak. Just quit your job and stop whining…..

  36. Bilg, for the sake of clarity, it is not you I am trying to convince. That would be a futile waste of my precious time. I’m aiming my arguments at the rational readers of this blog. They will decide, not you. You are just the starting block against which I press, to get my arguments up and running. So I should, if I were a polite person, say thanks for that. The help is much appreciated

    You comfort yourself by announcing that I am a whiner and a member of the MS gang. On both counts you are, sadly, deluding nobody but yourself. It ain’t that easy, to dismiss with a wave of the hand all points of view that differ from your own. Think again.

    You ask why your last offering was rejected. I imagine that it got filtered out. Must have been carrying something offensive. Is that a possibility, do you think?

  37. “That is an inhuman task to impose on a jury member.”

    lol…and stealing other people’s ideas/inventions thus making the legitimate owner of the invention upset and miserable is indeed..human?

  38. MaxDeri

    You have failed to convince me why the supreme court should lower the standard only because Microsoft and her bunch of whiners can’t compete with smaller and more innovative companies

    Why make it harder? Why not just quit your job so that you dont have to bother with protecting the rights of hundreds of thousands of inventors that pay your wage and keep the patent system alive?

  39. Why the heat on this issue, from folks like Bill G.? Seems to me folks like Bill value patent agents higher than patents. Here’s why.

    The PTO sorts apps. Either they go into the “Issued” bin or the “Refused” bin. Now, if the “issued” bin carries also the label “Untouchable” then getting your client’s app into that bin is worth a lot more money to that client.

    I practise before the EPO. The European Patent Convention defines the task of the EPO as being “to grant patents”. Even though not incessantly urged by ping to “Do your job” an EPO Examiner works assiduously and conscientiously. As of now, like every PTO Examiner in the world (except in America) a PTO Examiner is paid to check that the app on the desk meets the provisions of the governing statute. Unless the Examiner can demonstrate clearly that the claim is obvious, the claim will duly and without fuss go through to issue.

    But if, with every single app, I had to persuade a sceptical 3-member EPO examining division, only doing its job and no more, that my claim is so unobvious that nothing but clear and convincing evidence could possibly reveal it to be obvious, I would struggle to get anything to issue. I’m not a charity. If I struggle, my client has to pay for that, and it comes expensive.

    It is hard enough for the PTO to examine obviousness. Why make it harder, by equating the presumption of validity (again, found all over the world as well as in the trademark wing of the USPTO) with “valid except when there is clear and convincing evidence of invalidity” and thereby forcing on the Examiner a choice between “Saint” and “Sinner” on every claim examined. That is an inhuman task to impose on a jury member. In patent law, the CandC standard showers undue rewards on patent agents. For inventors, it is a double whammy: they have to pay for enormous effort from their prosecutors, and even then still might not get to issue. For the public, it brings the whole patent system into disrepute for, clearly, when obviousness is decided by secondary indicia like “commercial success” how can a PTO Examiner, engaged on the case promptly after its filing date, possibly know whether or not to sanctify the claim.

    It is because CandC is so unfair to inventors that it is nowhere in the world to be found, except in the USA.

    Or else, Bill, you disagree with ping and simply want PTO Examiners, for the sake of your inventor clients, to “not do your job”.

  40. the supreme court must understand why Microsoft and google support weaker standard of evidence.

    These companies may have the money but they don’t have the brains to compete with small and much more innovative companies from other parts of the world. With the weaker standard they would do the following:

    1. copy ideas from patents with economic potential

    2. fabricate development files to ‘prove’ that the claimed inventions were already in use/existence many years before the priority date

    3. use FAKE evidence to invalidate the issued patents that were meant to be legitimate and valid.

  41. Clearly, there are substantive differences between patents and trademarks in this particular area of law.

    Only a fool would seek to conflate the two.

  42. Trademarks are not my forte. Is there an trademark equivalent to the patent law ascribing the presumption of validity?

    Section 33(a) of the Lanham Act: “Evidentiary value; defenses. Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this Act and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b), which might have been asserted if such mark had not been registered.”

  43. Willton,

    Trademarks are not my forte. Is there an trademark equivalent to the patent law ascribing the presumption of validity?

  44. The real key is to have the office do the F’in job right the first time.

    What makes you think they aren’t doing their job the first time, pingaling? Because they aren’t allowing your applications? LOL. Surely you have some better evidence of the PTO’s incompetence. Maybe a recently issued patent that is plainly invalid? Or does that not ever happen?

    LOL.

  45. So…

    Willton, using your auspicious logic, given that the Office does crrp (as noted in a particular case per the Supremes), we currently should have the highest level of standard by which a patent could be invalidated to apply your appropriate level of protection?

    Methinks your logic is ss-backwards.

    You’re not hearing me. I’m advocating for a lowering of the evidentiary standard for invalidation either way. What I am saying is that those who advocate for improved examination are not justifying a higher standard of proof by doing so.

    But I put the cart in front of the horse. An observation to your questions: “but why should the strength of the USPTO’s examining corp have anything to do with the standard by which a patent is invalidated?” – it’s called administrative deference. Look it up (hint: some have this silly notion that examiners are supposed to actually do their jobs competently, and any issuing patent has been fully vetted and has earned the presumption of validity, notwithstanding the current squawking about the level of that earned presumption).

    Administrative deference is a perfectly valid reason for shifting the burden of proof upon the challenger. However, it is NOT a valid reason for raising the standard of proof for patents. As I have said repeatedly, the presumption of validity for federal trademark registrations does not result in an heighted evidentiary standard, despite the fact that both patents and trademark registrations issue from the same administrative agency. I see no reason why the Patent Act’s presumption of validity cannot operate in the same manner.

    Just another observation – if the so-called earned presumption is placed at the preponderance level, basically any Office work is given zero weight. This in itself defeats the legislative command to give patents a presumption of validity. In other words, the legislative command must be above a de novo review of validity which logically may be a preponderance standard. This is the little tidbit that keeps on getting people such as dim light to squawk about registration systems.

    That’s BS. The office’s work is given respect by shifting the burden of proof upon the challenger. What the burden-shifting framework does is acknowledge that the patentee should not have to prove validity in light of the USPTO’s examination. Furthermore, in many instances, a legal presumption results in a shifting of the burden of proof. See, e.g., the business judgment rule in shareholder derivative lawsuits and the presumption of validity for federal trademark registrations.

    The purpose of a heightened standard of proof like clear-and-convincing is based on a value judgment that holds certain things as being more important than others. Administrative deference is not a reason to create an overprotection scheme.

    Just because an “accused” infringer didn’t have a say in the examination process does not (and logically cannot) mean that that process never happened and all presumption is effectively washed away.

    True, but that’s not a reason for over-protecting the patentee in the event that such process did not happen. We can presume that the USPTO did its job, but we should be open to the notion that it did not do it’s job in a particular instance. Courts should not have to be hit over the head with a clear-and-convincing hammer in order to identify when the USPTO failed or when a patentee is not entitled to a patent. Otherwise you are encouraging applicants to game the system.

  46. So…

    Willton, using your auspicious logic, given that the Office does crrp (as noted in a particular case per the Supremes), we currently should have the highest level of standard by which a patent could be invalidated to apply your appropriate level of protection?

    Methinks your logic is ss-backwards.

    But I put the cart in front of the horse. An observation to your questions: “but why should the strength of the USPTO’s examining corp have anything to do with the standard by which a patent is invalidated?” – it’s called administrative deference. Look it up (hint: some have this silly notion that examiners are supposed to actually do their jobs competently, and any issuing patent has been fully vetted and has earned the presumption of validity, notwithstanding the current squawking about the level of that earned presumption).

    Just another observation – if the so-called earned presumption is placed at the preponderance level, basically any Office work is given zero weight. This in itself defeats the legislative command to give patents a presumption of validity. In other words, the legislative command must be above a de novo review of validity which logically may be a preponderance standard. This is the little tidbit that keeps on getting people such as dim light to squawk about registration systems.

    Some additional Middle Earth observations (those that tend to be Nazgul food, just look the other way): Just because an “accused” infringer didn’t have a say in the examination process does not (and logically cannot) mean that that process never happened and all presumption is effectively washed away.

    The real key here is not, as IANAE indicates, a too expensive litigation process. The real key is to have the office do the F’in job right the first time.

  47. Ned: If there is a problem here, it can and should be first addressed by strengthing the patent office by all reasonable means.

    IANAE: That should happen too, of course, but it’s a completely separate question from what the standard of proof should be to invalidate a patent.

    TINLA: Typical. You want to examine, argue, and decide the issue in a vacuum devoid of any context or consequences. An ideological quest for purity of law, absent application of wisdom and common sense, is a sure road to an absurd and disastrous outcome.

    Pardon me for interjecting, but why should the strength of the USPTO’s examining corp have anything to do with the standard by which a patent is invalidated? If anything, a stronger, more rigorous examination of patents by examiners would lead one to believe that the patents issuing therefrom would be so strong as to withstand scrutiny under a preponderance of the evidence standard. In other words, if we strengthened patent examination at the USPTO, there would be less reason to apply a clear and convincing standard, as the work of the examining corp would be able to stand on its own and not need such overprotection.

  48. There be trademark infringement on these pages. Maybe I should cry to Dennis to squelch the mofo.

    Wait, that’s someone else’s gig – Iza don’t need that.

    Iza just gonna launch one of dem big Trademark lawsuits ya here so much about.

    That or somethin – as even Ned almmost seems to make sense here. Damm scary.

  49. “proof of breach = proof infringement”

    Not really. Sure, there’s a preponderance standard for proof of infringement, but if we are talking about proof of infringement on an invalid patent, it’s not really infringement. Infringement is only on par with breach of contract if the patent is valid. Under the CaC standard for invalidity, there will still be many businesses that will lose infringement when they actually did not infringe on any valid patent.

  50. Why do I get the impression you only consider an analogy “apt” if it gives the result you want?

    Yes, this was said by IANAE.

  51. “Well, there’s zero chance of that happening now. Maybe you can come up with some unreasonable means of strengthening the patent office? Oh, I got it: freeze everybody’s pay and fire a bunch of people and threaten to keep doing it until the backlog disappears. That’ll work.”

    So sorry your pay’s being frozen, Examiner Mooney. Now get back to work searching for those DNA fragements.

    Lulz

  52. Ned: Trademarks -> not in constitution

    So what? Being explicitly mentioned in the Constitution doesn’t change the substantive law of patents, particularly since the Constitution doesn’t even require patents to exist. Trademarks are permitted in the Constitution too, under the Commerce Clause. The only difference is that they’re not mentioned by name.

    People have been saying that patents deserve higher deference because they were granted by an administrative agency, which trademarks are too. Trademarks are presumed valid just like patents, but they are invalidated on a balance of probabilities.

    Ned: Nothing here bears any analogy to patent validity.

    Really? Contracts don’t have any property analogous to validity?

    Ned: Now turn to Dennis’s Mine Patent analogy. Now that is apt.

    Why do I get the impression you only consider an analogy “apt” if it gives the result you want?

    TINLA: You want to examine, argue, and decide the issue in a vacuum devoid of any context or
    consequences.

    No, I don’t want to reject progress in one area for the sole reason that another area also needs work. And there is no “absurd and disastrous outcome” from a balance of probabilities standard, which should be plainly obvious because trademarks still work fine.

  53. “That should happen too, of course, but it’s a completely separate question from what the standard of proof should be to invalidate a patent.”

    Typical. You want to examine, argue, and decide the issue in a vacuum devoid of any context or
    consequences. An ideological quest for purity of law, absent application of wisdom and common sense, is a sure road to an absurd and disastrous outcome.

  54. Contracts -> proof of breach = proof infringement.

    Trademarks -> not in constitution

    Torts -> proof of breach = proof of infringement.

    The analogies here are not apt. Nothing here bears any analogy to patent validity.

    Now turn to Dennis’s Mine Patent analogy. Now that is apt.

  55. Ned: If there is a problem here, it can and should be first addressed by strengthing the patent office by all reasonable means.

    Well, there’s zero chance of that happening now. Maybe you can come up with some unreasonable means of strengthening the patent office? Oh, I got it: freeze everybody’s pay and fire a bunch of people and threaten to keep doing it until the backlog disappears. That’ll work.

  56. But, there remains the valuble incentive of reliability even here. If the patent is not clealy and convincingly invalid, it should be maintained because otherwise the reliabilty of patents will be greatly diminished.

    Circular again. The reliability of patents is important to ensure the reliability of patents.

    But the same could be said of contracts, trademarks, or any other right that is generally important and litigated from time to time. Their stability and reliability is important, but so is invalidating the bad ones.

    The balance of probabilities standard is the droids you’re looking for. It maintains the good patents, and invalidates the bad ones, all at the same time.

    The shibboleth that we are beset by thousands of invalidly granted patents that harm the true developers of new produces such as the illegal monopolies we now see advancing this argument to their benefit and our harm, is misleading at best.

    Considering how many of the relatively small number of litigated patents actually are invalidated in court every year, “thousands” is probably an understatement. What is misleading is the idea that we have to keep the bad patents so people have confidence in the good ones, and the idea that somehow all the valid patents out there will be randomly invalidated based on spurious evidence under a balance of probabilities standard that hasn’t done much to undermine the reliability of contracts or trademarks.

    If there is a problem here, it can and should be first addressed by strengthing the patent office by all reasonable means.

    That should happen too, of course, but it’s a completely separate question from what the standard of proof should be to invalidate a patent.

  57. Granting a legal monopoly on a known trade was one of the causes of the Revolution. But, in hindsight, the monopoly on trade granted the British East India company was effective for the stated goal: to expand British trade into remote and dangerous areas. But that benefit accrued primarily to England rather than to those who wished to reap where they did not sow, our founding fathers.

    If a patent is granted on a new machine, etc., that never existed before, surely it does not harm competition in existing machines. It enhances that competition.

    The problem arises primarily in the context of obviousness where the patent is blocking the natural and known progression of the arts. Here, there may be palpable harm.

    But, there remains the valuble incentive of reliability even here. If the patent is not clealy and convincingly invalid, it should be maintained because otherwise the reliabilty of patents will be greatly diminished.

    The shibboleth that we are beset by thousands of invalidly granted patents that harm the true developers of new produces such as the illegal monopolies we now see advancing this argument to their benefit and our harm, is misleading at best. If there is a problem here, it can and should be first addressed by strengthing the patent office by all reasonable means.

  58. Whatever the decision, there is certain to be a hysterical over-reaction. That is the way things work. The actual decision will probably be moderate and good sense, as was KSR.

  59. Quarter:Merely reading the notes on this blog indicate that you Sir Wilton, are the one who needs to brush up on your history.

    Really? Feel free to show me where I need such brushing up, especially with regard to this discussion. I’d love to hear it.

  60. Annoy, according to their cert petition, Microsoft apparently has a letter from the inventor written at the time of the invention claiming the product in question practiced the patent (along with software manuals, testimony, etc). So the question is not whether they have evidence — the question is whether that evidence meets the preponderance bar.

    The fact that the court accepted the case makes it extremely unlikely that they are going to decide it is moot. I4i didn’t even argue in their opposition brief that their patent would survive preponderance review. When the Supreme Court considers they question, they are only going to consider the legal question. They will likely remand to lower courts for the ultimate determination of whether Microsoft’s evidence meets the preponderance bar.

    As for the substantive legal question, while it certainly wouldn’t be “odd” to grant cert and then affirm, the fact that they granted cert (combined with the unanimous KSR dicta) indicates that are more likely than not going to make some changes. The decision will almost certainly have precedential effect whichever way they decide (given the above),

  61. Or 8-0 that the issue is moot since Microsoft never did get actual evidence of the alleged sale that would violate the on sale bar.

    Then in dicta the Supremes could argue whatever they want, but it would have no precedential effect since the decision would be 8-0 against Microsoft as being moot.

  62. Why does everyone assume that the SCOTUS granted cert to lower the standard?

    Perhaps the SCOTUS granted cert because they are tired of similar petitions coming over the years challenging the standard and want to reinforce the standard. It would not be odd at all for 4 justices to grant cert but 8-0 decide that the Court of Appeals did not err in applying the clear and convincing evidence standard for invalidity as to prior art not before the PTO when the application was being examined.

  63. the notion is that it is better that some invalid patents survive lest one invalid patent be lost.

    In taking that position you must side with anti-competitive statutory rights over free commerce. This country was founded on freedom. Patents are a grudgingly accepted restraint on that freedom, tolerated only because they promote innovation, and they should not exist insofar as they are not in full compliance with the law.

    Once the patent is granted, it should not lightly be taken away because the patent is intended to incent investment in development of the invention.

    That’s circular reasoning, because the argument for taking the patent away is that it does not claim an invention. An invalid patent incents only the removal of prior art from the public domain.

    Nobody disputes that patents are important to promote innovation. That’s precisely why we think patents should not be granted or upheld when it can be shown that there was no innovation.

    This, my amici, has more to do with the constitutional purpose of patents than it has to do with the statutory presumption of validity.

    There is no constitutional purpose to grant patents other than for actual inventions, or to restrict commerce in articles that were previously freely traded. The constitutional purpose is that the inventor describe and claim an invention in exchange for his patent. If he hasn’t, the patent should be invalidated at the earliest possible opportunity.

  64. “We vitally need reliability in patents in order for them to incent R&D.”

    Just because reliability is a desirable goal does not bean every potential method of achieving reliability is a desirable or correct method of doing so. The reliability of enforcement of contract law is even more fundamental to the operation of our economy than the reliability of patent law. That does not mean we make contract law cases have a burden of “clear and convincing” for one side or the other.

    So as a purely substantive matter, the desire for reliability does not imply that it is correct to subject companies to liability for “infringing” on invalid patents.

    In addition, as an economic matter, you mention the standard of proof’s affect on incentives to innovate, but you don’t mention the disincentives of such a burden on innovations. Given the patents out there, sustaining invalid patents can be a tremendous tax on actual innovation.

    This does not mean that NO method for achieving reliability makes sense. Having specialized courts that make these decisions might help. But just because a goal is desirable doesn’t mean any law we have in place that happens to serve that goal is desirable.

  65. Better that 10 invalid patents survive lest one volid patent be lost?

    Without arguing the exact ratio, the notion is that it is better that some invalid patents survive lest one invalid patent be lost. The reasoning is expressed in the Mine Patent analogy offered up by Dennis. The MP is intended to incent investment in mine development. Once the patent is granted, it should not lightly be taken away because the patent is intended to incent investment in development of the invention.

    I found it telling the discussion at the AIPLA about the role of a patent attorney at a drug company monitoring the early stages of drug development. His role was to identify patentable subject matter for further investigation, because without patent protection, it is impossible to justify the costs of development of a new drug.

    We vitally need reliability in patents in order for them to incent R&D. They should only be overturned upon clear proof that is convincing: proof that convinces one that the patent has a high probability that it is invalid.

    This, my amici, has more to do with the constitutional purpose of patents than it has to do with the statutory presumption of validity.

  66. Uh, you need to brush up on your history, sir. The Federal Circuit came up with the clear and convincing standard for patent invalidity, not SCOTUS.

    Merely reading the notes on this blog indicate that you Sir Wilton, are the one who needs to brush up on your history.

  67. Wilton, does the “presumption” that a man is innocent “merely” shift the burden of proof?

    No.

    Actually, yes it does. As the presumption goes, “a person is innocent until proven guilty.” That means that some entity (i.e., the government) must prove that a person indicted for a crime is guilty of said crime; the indicted need not prove his innocence. The presumption, however, says nothing of what standard of proof the government must meet. The burden of proof and the evidentiary standard of proof are two different things.

    The standard of proof had a lot to do with the value one places on one’s liberty. It had a lot to do with the wisdom of brought by a long history of easy accusations made for ulterior motives and backed by no proof. One thinks of the French Revolution and the Reign of Terror.

    No argument here.

    Once we had a patent system where patents were not respected. That system was dysfunctional. The heightened standard of proof of invalidity was developed by the Supreme Court precisely to give patents respect and to make them really effective for their constitutional purpose.

    We should not forget history lest we repeat it.

    Uh, you need to brush up on your history, sir. The Federal Circuit came up with the clear and convincing standard for patent invalidity, not SCOTUS. Please do not overstate your case.

    A higher standard of proof for patent invalidity makes it easier for invalid patents to remain enforceable. As SCOTUS said in KSR, this causes the patent system to “stifle, rather than promote, progress in the useful arts,” therby cutting against its constitutional purpose.

    Again, if the presumption of validity for federal trademark registrations does not heighten the standard of proof for invalidity, then I do not see why patents need such overprotection.

  68. My prediction for how this will shake out:

    The Supreme Court will hold that, where a reference was not considered by the USPTO, the validity of the patent it is being used to invalidate will be adjudged under a preponderance of the evidence standard rather than a clear and convincing standard. Patent holders suddenly realize that many, if not all, of their valuable patents have suddenly become unquantifiably weaker. Patent attorneys, wishing to avoid such a fate for applications still in prosecution will begin to cite hundreds, if not thousands, of references that would not ordinarily have been cited, and will conduct searches not ordinarily conducted to identify such references. These references will land on the desks of already-overburdened examiners, who will complain to management, who will, in turn, promulgate regulations requiring that patent attorneys actually read everything being cited. This, of course, will be done for no substantive grounds, but only to reduce to a trickle the sudden river of reverences the PTO will have begun to receive. Meanwhile, patent attorneys will go back to clients to explain why getting patents is suddenly so much more expensive, time-consuming, inefficient and burdensome, and clients will decide that a lot of patent applications suddenly aren’t worthwhile, and a lot of innovation that could otherwise have been protected won’t get persued because it begins to look economically infeasible, or foolish, to do so.

    And the Supreme Court will go back to drafting a few other semi-nonsensical opinions in their litle ivory tower before adjourning.

  69. Ned, we don’t just have a high standard of proof for criminal cases because we value one’s liberty. It is that we value one’s liberty OVER the interests/safety of society. We would (correctly) rather let 10 guilty people go free than hold 1 innocent person.

    To analogize patents to criminal law is to say much more than an assignment of value to patents. It is to say that the rights of patentees have value OVER the rights of patent defendants not to be sued for infringing upon invalid patents. You are essentially arguing that it is better to let 10 invalid patents be sustained as valid than it is for 1 valid patent to be ruled invalid.

    While I’m sure this would be a patentee’s dream, we don’t create law based on the self interest of one side. The reason we have a preponderance standard for almost everything is because it does not make sense to give an unfair advantage to either party. This obviously holds true in cases where we are not deferring to an administrative agency on a piece of evidence that they never considered.

  70. does the “presumption” that a man is innocent “merely” shift the burden of proof?

    Yes, it does actually. The burden of proof and the standard of proof are two completely different things. It’s only coincidental that they both exist for the same reason – to keep innocent people out of jail by due process of law.

    In any event, it’s difficult to imagine a tenable reasonable-doubt standard without a presumption going the other way. But that’s the reverse of the causality you suggest. The standard of proof shifts the burden.

  71. From where I’m writing, a “coin flip” is not the same thing at all as the outcome of a piece of patent litigation in which that outcome depends on the preponderance of evidence.

    Is it really like that where you are, Phil? In that case, setting the burden at preponderance or CaC is the least of the problems within that jurisdiction.

    How about whether or not you get a claim to issue, in your jurisdiction? Is that like a coin flip?

    And I think you are being a bit like Chicken Little in your assessment of why people apply for patents. Expecting a drastic reduction in filing numbers are we, if SCOTUS plumps for a preponderance standard. Might it not, equally likely, have the opposite effect. You know, like if you are going to lose half your children before they get to five years old, then better make plenty of them so at least one will make it through to maturity to care for you when you get old.

  72. Wilton, does the “presumption” that a man is innocent “merely” shift the burden of proof?

    No.

    The standard of proof had a lot to do with the value one places on one’s liberty. It had a lot to do with the wisdom of brought by a long history of easy accusations made for ulterior motives and backed by no proof. One thinks of the French Revolution and the Reign of Terror.

    Once we had a patent system where patents were not respected. That system was dysfunctional. The heightened standard of proof of invalidity was developed by the Supreme Court precisely to give patents respect and to make them really effective for their constitutional purpose.

    We should not forget history lest we repeat it.

  73. if the burden changes to a coin flip for determining validity or infringement,

    Firstly, it’s the standard, not the burden. The burden is always on the defendant to prove invalidity. That’s in the statute, and it’s not changing anytime soon.

    Secondly, infringement is already determined on a balance of probabilities. Has the patent system crumbled yet, and society with it?

    Finally, don’t say “coin flip” as if it would be random. The outcome of the case is still based on the evidence, just like in every other civil case. The good patents would still be upheld. The only difference is that the dubiously valid ones wouldn’t.

    the long term economic impact will further reduce competitiveness of US products worldwide.

    Have you been to the “worldwide” lately? They all have a balance of probabilities standard for invalidity.

    And why would US law affect US products worldwide? Wouldn’t that depend on the patents US companies obtain in the “worldwide”, that are not and have never been subject to US law?

  74. This is not encouraging… if the burden changes to a coin flip for determining validity or infringement, the incentive to pursue patenting is diminshed considerably. Should Microsoft prevail, the long term economic impact will further reduce competitiveness of US products worldwide.

    Expect a flood of amici briefs from all those large entities who have a dominate market position.

  75. Of course it should matter why the art wasn’t considered.

    The statute doesn’t think so. The statute says a person is entitled to a patent unless the invention was previously disclosed to the public. Period.

    Seems to me, once the invention has been disclosed to the public, that’s all you need to know. It doesn’t matter who found the art or when. The law says the patent is invalid. Next, please.

  76. IANAE: Of course it should matter why the art wasn’t considered. The presumption extends to cover all the art the PTO could have discovered. (so it just not being on the patent or on the search report doesn’t matter). The art that was withheld through fraud should not have the same standard as the PTO didn’t consider it because of the patentee.

  77. Max, there you go again, making controversial and unsupported statements to stir up arguments.

    As usual, I’ll leave it to the others to disagree with you.

  78. Anonymous: IANAE,
    Overpaid? Seriously? So, are you a grinch or just a jealous private practice attorney with a low salary?

    I don’t think you’re talking to me. I never said examiners were overpaid. I think the PTO should pay examiners whatever the market requires so that they can get enough good people and keep them for longer than it takes to train them.

    NWPA: Would the prior art be there if it were not for patents?

    The patents we’re talking about here are the invalid ones. The ones that claim what was already prior art. Those patents deserve no credit for adding anything to the body of human knowledge, and should be invalidated at every opportunity.

    Please try to stay on topic.

    OWK: It does not take a rocket scientist to understand that if Microsoft is for it, everyone else should be against it.

    Oh, you’re letting Microsoft tell you what to think now? Republicans say the same thing about Obama – if he’s fer it, I’m agin’ it. Even when Obama proposes something they’d ordinarily agree with.

    Why don’t you take the time to form your own opinions?

    OWK: It’s Admin Law 101

    Explain trademarks, then.

    NWPA: Because it is contemplated that prior art may not be available to the PTO and that the inventors may have special knowledge.

    Yes, but those are two independent contemplations. If the art is not before the PTO through no fault of the inventor, you have an incompletely-examined patent and nobody to blame.

    Patents that are invalid over the art should be found invalid over the art. The prior art should be the only consideration. There’s no reason to twist inequitable conduct beyond all recognition when we already have a test for invalidity – let’s make the test for invalidity work properly, and someday maybe we can do the same for inequitable conduct.

  79. >>on the reason for prior art not being >>considered by the PTO?

    Because it is contemplated that prior art may not be available to the PTO and that the inventors may have special knowledge. If they are not keeping their end of the bargain by giving the prior art that they know to be material, then the PTO’s issuance of the patent should not have the higher standard.

  80. Funny, after Bilski, I have some faith that the Supremes might get this one right… the potential impact on other agencies would be devastating and would tend to undermine the strength of every final agency determination out there – essentially what every issued patent represents – a final agency determination, and therefore subject to a higher standard of deference, regardless of whether “new” evidence exists. It’s Admin Law 101 – which is why it’s funny that many academics are going down this dead end road.

    A patent’s presumption of validity is not a creation of the Administrative Procedure Act; it’s a creation of the Patent Act. Therefore, whether a patent invalidity challenge requires a higher standard of proof is not a question of administrative law; it is a question of patent law. Whether changing the standard of proof for patent invalidity would undermine final determinations of other agencies is (1) irrelevant; and (2) a slippery slope argument.

    I’ll say it again: the presumption of validity of federal trademark registrations merely shifts the burden of proof to the defendant; it does not create a higher evidentiary standard of proof. Why should the presumption of validity for patents operate any differently?

  81. “This seems to be the central issue. If something is withheld through fraud, then there might be a point in reducing the standard. But, prior art that was not specifically included on a patent is not something that should reduce the standard.”

    Why should the liability of a patent infringer depend on the reason for prior art not being considered by the PTO? It seems that the justification for deference for a given piece of evidence is either there or it isn’t.

  82. >>”new” evidence

    This seems to be the central issue. If something is withheld through fraud, then there might be a point in reducing the standard. But, prior art that was not specifically included on a patent is not something that should reduce the standard.

  83. >>the NYT carries an article about Malcolm Mooney

    Maxie to take me literally is to say the least, well, dense.

  84. Funny, after Bilski, I have some faith that the Supremes might get this one right… the potential impact on other agencies would be devastating and would tend to undermine the strength of every final agency determination out there – essentially what every issued patent represents – a final agency determination, and therefore subject to a higher standard of deference, regardless of whether “new” evidence exists. It’s Admin Law 101 – which is why it’s funny that many academics are going down this dead end road.

    Everything else is red herring. Sorry to all of the paid shills out there.

    Could you please pass the delicious cream filled snacks?

  85. “Since there is never a shortage of prior art that was not considered, lowering the standard is a terribly ill-conceived idea.”

    Actually, doesn’t that cut the other way? If there is never a shortage of prior art that was not considered, why isn’t the standard preponderance in the first place?

    The CaC standard makes logical sense when the PTO considered evidence in question. But if there is “never a shortage” of evidence that was not considered by the PTO, that seems to cut more strongly in favor of a preponderance standard than a CaC standard.

  86. You really have to laugh. Troll #1 tells us that the NYT carries an article about Malcolm Mooney. When one clicks on the link, one finds nothing about Malcolm (one of the few on this blog with something to say that is relevant, provocative, amusing and incisive), but plenty on the subject of trolling.

  87. It does not take a rocket scientist to understand that if Microsoft is for it, everyone else should be against it. The presumption of validity and attendant standard of proof for invalidation is not some arbitrary rule to be deconstructed with impunity. Microsoft will use this to present any arbitrary art that was not presented before the PTO to undermine legitimate patents based on poorly proved “invalidity.” Since there is never a shortage of prior art that was not considered, lowering the standard is a terribly ill-conceived idea.

  88. “Show me where in our constitution the importance of contracts and torts are given the same endorsement as are patents to the welfare of the body politic.”

    Actually, looking at the Constitution, it seems that contracts and torts are considered far more important to the welfare of the body public than patents. In fact, the phrase

    “To promote the Progress of Science and useful Arts”

    tends to limit the grant of power contained in the copyright/patent clause, not enshrine some higher standard not applicable to normal civil trials. I think it is obvious that the Constitution really says nothing about the burden of proof or deference to an administrative agency determinations.

    But if we were to follow your logic and determine the burden of proof from the “importance” in the Constitution, it would seem to me that deferring to the patent office on evidence that was never considered couldn’t possibly “promote the progress of science and useful arts.” In fact, sustaining invalid patents by unreasonably tipping the scales toward the patentee would seem to hinder the progress of science and useful arts, not promote it. Everything you say about the clearness of evidence required for invalidating a patent can just as easily be said about unclear evidence sustaining its validity.

  89. Trolling, defined as the act of posting inflammatory, derogatory or provocative messages in public forums, is a problem as old as the Internet itself, although its roots go much farther back. Even in the fourth century B.C., Plato touched upon the subject of anonymity and morality in his parable of the ring of Gyges.

    There is an article about Malcolm in the NYT:link to nytimes.com

  90. ping, I’m mystified. In any patents system that is “strong” the patent owner is, by definition, a menacer. If he cannot menace, his little piece of Government-issue paper is useless. Ask JAOI if you won’t take it from me.

    So why do you write “All of a sudden”? Since eBay, the patentee is not the menacer he once was, right?

    Now me, I really am in facer of menacer’s rights. But only on claims that are resistant to a preponderance assault on their validity.

    In fact, i think a preponderance standard is essential to the long term viability of any “strong” patents system. For, if the public does not respect duly issued claims, bad things happen (like eBay).

    Will you comment on what Michael Barclay wrote here at 12.44 yesterday. I think he makes the definitive real world point here.

  91. The ability to freely trade in the prior art, without somebody menacing you with an injunction.

    My what lovely sheepskin you put there on infringers’ rights. All of a sudden, the patentee is the menacer.

    Oh I realize
    It’s hard to take courage
    In a world full of people
    You can lose sight of it all
    And the darkness inside you
    Can make you feel so small

  92. no more than short-sighted self-interest

    fixed.

    Sides, such judicial activism is generally (but not always) frowned upon. Judges are supposed to be blind to such considerations.

  93. Now that aliens are getting more than half of the patents issuing from the USPTO, I should have thought it no more than enlightened self-interest, on the part of the courts of law of the USA, to reduce the opportunities for holders of duly issued patent claims to use them to put Americans out of work, when the claims being asserted are more likely invalid than valid.

  94. JNG:”As a “practical” matter if the Court is not going to give any deference to the issuance of a patent using a higher standard, then there is no reason for the PTO’s 4-5 year examination and review of the prior art in the first place. Instead we can save a lot of time, $$ and delay, and simply move to a registration system. Then anyone can sue anyone on any registered patent,with the infringer being allowed to kill the patent with the same “level playing field” standard of POE. That will then “level” the playing field. ”

    JNG, isn’t that how the patent system works on Belgium? I think they rubber-stamp patent applications too. I’m not making a point, just an observation. It’s not the worst system in the world.

  95. IANAE,

    Overpaid? Seriously? So, are you a grinch or just a jealous private practice attorney with a low salary?

    Isn’t one of the problems with the PTO high turnover, resulting in inexperienced examiners? Well, I’d think examiners not getting pay raises will result in even more turnover. (Though, maybe there aren’t other jobs for them to take. When the economy gets going again, these dissatisfied examiners will jump at the first opportunity though.)

  96. Proof is proof.

    Onus is important. As it is the defendant who is asserting invalidity the onus is on him to prove his case. If he cannot do that, then the patent stands.

    But standard is simply the degree of gloss finish on the proof that must be there. Would you like the brushed metal or the shiny chrome sir? Very important for the trial lawyers. But proof is a matter of substance.

    Much sound and fury. Significance? Less than might be thought

  97. Last I checked, those causes aint got no administrative agency granting a plaintiff’s right.

    Seems pretty straight forward there.

    And yet, there’s no such higher standard of proof when it comes to invalidity of a federal trademark registration. The presumption of validity in trademark law merely shifts the burden of proof to the defendant. Why not have a similar mechanism in patent law?

  98. Show me where in our constitution the importance of contracts and torts are given the same endorsement as are patents to the welfare of the body politic.

    Well, there’s the minor detail that the Constitution doesn’t even require Congress to enact a patent system in the first place. One could argue that the prohibition on titles of nobility is even more important to the welfare of the body politic, because that’s mandatory whereas patents are optional.

    And there’s also the minor detail that “importance” doesn’t translate into “higher standard of proof”. You know what else is important to the welfare of the body politic? The ability to freely trade in the prior art, without somebody menacing you with an injunction.

    Criminal law is vitally important to the body politic, and yet we still prefer to let ten guilty men go free rather than imprison one innocent man. Why not give patents that same treatment?

  99. I would also put it to you that the 7th amendment is an endorsement of the idea that our civil justice system is an important component of citizens’ ability to obtain remedies for torts.

  100. Nedo,

    Don’t ya have a USCATO section of your IMHO-Law? That would be United States Contract and Tort Office. Ya know, where all good contract and tort matters are blessed by an administrative body that provides plaintiffs their rights.

    When IANAE misses the boat, he misses big time.

  101. “Show me where in our constitution the importance of contracts and torts are given the same endorsement as are patents to the welfare of the body politic.”

    The Constitution forbids states from making any law that impairs the obligations of contracts. See Article 1, section 10, clause 1.

  102. IANAE: “I would hope that for the sake of our patent system that we not likely choose the preponderance of evidence standard.
    Why is it good enough for everyone else, then? Why doesn’t a defendant in contract or tort have to show the absence or invalidity of the plaintiff’s right on clear and convincing evidence?
    Posted by: IANAE | Nov 29, 2010 at 03:26 PM”

    Show me where in our constitution the importance of contracts and torts are given the same endorsement as are patents to the welfare of the body politic.

  103. As a “practical” matter if the Court is not going to give any deference to the issuance of a patent using a higher standard, then there is no reason for the PTO’s 4-5 year examination and review of the prior art in the first place. Instead we can save a lot of time, $$ and delay, and simply move to a registration system. Then anyone can sue anyone on any registered patent,with the infringer being allowed to kill the patent with the same “level playing field” standard of POE. That will then “level” the playing field.

  104. TINLA, it’s obvious you have a very specific fact scenario in mind. Would you be so good as to post the citation so I can get the facts all at once, rather than in piecewise-counterfactual format?

  105. if the evidence is “confusing” and the trier of fact “doesn’t know one way or the other”, a preponderance standard still requires him to side with the patentee on validity if he discards all unclear evidence, instead of deferring to it as a “mountain of doubt.”

    There’s nothing fundamental about combining 12 different references, 11 of which would be rendered inoperable for their intended purposes if modified to arrive at the invention, that would make it less “clear and convincing”. In fact, combining 12 different references, 11 of which would be rendered inoperable for their intended purposes if modified to arrive at the invention, is probably the most likely evidence to seem clear and convincing, considering how tempting it is to agree with. A higher standard of proof is not a reliable way of discounting combining 12 different references, 11 of which would be rendered inoperable for their intended purposes if modified to arrive at the invention,. A better way would be some sort of specific rule against combining 12 different references, 11 of which would be rendered inoperable for their intended purposes if modified to arrive at the invention,, which we merely give lip service to.

    ^^^FIXT^^^

  106. Why doesn’t a defendant in contract or tort have to show the absence or invalidity of the plaintiff’s right on clear and convincing evidence?

    Last I checked, those causes aint got no administrative agency granting a plaintiff’s right.

    Seems pretty straight forward there.

  107. Maybe Microsoft is betting on its own patents being of higher quality than i4i’s patents. Or higher quantity, at the very least.

    LOL

    No wait,

    LOL LOL LOL

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOL.

    Seriously, IANAE, you crack me up with your zingers.

  108. I would hope that for the sake of our patent system that we not likely choose the preponderance of evidence standard.

    Why is it good enough for everyone else, then? Why doesn’t a defendant in contract or tort have to show the absence or invalidity of the plaintiff’s right on clear and convincing evidence?

  109. “I guess it was all that being underworked that left me burnt out.”

    You’re burned out from working at the PTO for a couple of years?

    Well, burned out or not, you can examine at your current level of incompetence for at least another 30 years.

    So you got that going for you.

    Lulz

  110. one would think Microsoft would have been more careful about that which it prays (preys) for.

    Maybe Microsoft is betting on its own patents being of higher quality than i4i’s patents. Or higher quantity, at the very least.

    Y’know, for all of Microsoft’s patents and general anti-competitiveness, isn’t it funny that you only hear about them getting a court decision on the merits when it’s someone else’s patent at stake? Maybe that has something to do with their strategy, as well.

  111. Anon, I see your point regarding the limitation of re-examinations to patents and printed publications implying Congress’ endorsement of a “clear” standard with regard to evidence that must be adduced to begin a re-examination.

    As a corollary, the “substantial new question of patentability standard” also suggests that Congress would not accept that the examiner had made an error if an issue of patentability was before the patent office in the prior examination and had been decided in favor of patentability.

    I would find it hard to believe that Supreme Court board would endorse a standard where unclear evidence would be used to invalidate a patent unless the burden was substantially heightened, along the lines of its own cases which said that such evidence had to be convincing “beyond a reasonable doubt.”

    But I think the most important issue before the court is this:

    When the issue is obviousness, just how convinced must be the trier of fact be before he’s entitled to hold a patent invalid? Must he be convinced to the degree required by the clear and convincing standard or to the degree required by the preponderance of evidence standard? The former requires that the trier fact be convinced that it is highly probable that the proposition advanced by the proponent be true. The preponderance of evidence standard requires only that is more likely than not that the proposition advanced by the proponent is true.

    I would hope that for the sake of our patent system that we not likely choose the preponderance of evidence standard.

  112. As a company who at this very moment as we all posit and pontificate is asserting a fair number of its own patents against others, one would think Microsoft would have been more careful about that which it prays (preys) for.

    Such others may be wise to use MS’s i4i Supreme args in their defense args against MS.

  113. “By many with whom I work, appeal is now viewed as the immediate goal of initial examiner-level prosecution–they don’t even waste their client’s time expecting anything of enduring merit from an examiner.”

    I can only tell you you’re incompetent failures so many times every day.

    “Do you know how many people ask prospective questions of government, in an attempt to ensure that their future actions are in compliance? TONS. Do you know how the government rewards this good-faith effort at compliance? By telling people to hire a lawyer.”

    Blame the lawlyers. They’re the ones with the monopoly.

    “EVEN IF THEY ARE ALL COMPETENT, THEY ARE STILL OVERPAID AND UNDERWORKED”

    lulz I guess it was all that being underworked that left me burnt out. And I guess it was all that overpayment that provided me with a house to live in and own. Let’s not even discuss a new car or anything of that sort.

    “You will NEVER see a public-sector employee staying late, uncompensated, to keep the business afloat.”

    O, I guess all those people at the office late and on weekends are really ghosts of the people themselves. Funny, they interact with me as though they were real. Sometimes they even give me food, and eat for themselves.

    “This case is about whether to make patents weaker vs maintaining the current standard. Now who’s viewing what from one side only now? Balance indeed.”

    Nah, not really. This case is about whether the federal circuit are patent protectionist tools. Plainly they are. You can take that to the fact bank and deposit it because I just found it and gave it to you.

  114. I think it’s “clear” that the SCOTUS is going to signal that this heightened standard is in appropriate in litigation involving a party (the infringer) who did not have an opportunity to challenge a patent grant. The deference given the PTO is undue as between a patentee and an accused infringer.

    The statute merely requires that a patent be presumed valid — not that it IS valid and not that it is valid unless shown by a clear and convincing evidence otherwise.

    Furthermore, if you consider the amount of money spent in patent litigation or even in response to an assertion of infringement, it pales in comparison to the cost to actually obtain the patent.

    I for one, welcome the SCOTUS reviewing the Fed. Cir. on this point.

  115. IANEA: The patent system is designed to be a balance between the patentee and the public. This issue can’t be properly viewed from one side only, and the right answer can’t always be “make patents stronger”.

    Who said anything about making patents stronger? This case is about whether to make patents weaker vs maintaining the current standard. Now who’s viewing what from one side only now? Balance indeed.

  116. There is no doubt that that level of evidence belongs to a clear and convincing standard.

    What makes you think the PTO ever applies a clear and convincing standard in re-exam? The only thing there’s “no doubt” about is that they don’t want re-exams on the basis of evidence that is subject to an assessment of credibility, which tends to require protracted adversarial proceedings.

    And why should the standard for re-exam be relevant in any way to the standard for litigation?

  117. No matter how you disclaim it, administering a legal statute or rule is rightly considered “the practice of law”.

    That’s a curious interpretation. Do you have any sort of basis for it? I presume there’d be a series of complaints and investigations by now if it were at all reasonable. Have you personally filed any complaints yet in that regard?

    “free legal advice”? Last time I checked, federal employees were compensated for their time.

    So are associates in big law firms. If I call one up, should I expect some off-the-cuff legal advice without a bill?

    Do you know how many people ask prospective questions of government, in an attempt to ensure that their future actions are in compliance? TONS. Do you know how the government rewards this good-faith effort at compliance? By telling people to hire a lawyer.

    Well, “tons” is really only a handful of people. But still. If your question involves the meaning of a statute that is subject to reasonable interpretation, you really do need to hire a lawyer. If you ask what the agency’s requirements are, they’ll answer you. But they can’t tell you whether agency policy complies with the law, nor can they warrant same. Look at Beauregard claims. Allowing claims in that format is PTO policy, and I’m sure if you call them up and ask if Beauregard claims are an acceptable format, they’ll say yes, but they have absolutely no basis for saying whether or not such claims will stand up in court and they’d be breaking the law if they tried to tell you.

    an agency should be able to give prospective guidance, to which that agency should be held, in individual cases.

    Ah, but that would be even worse than giving legal advice. That would be tantamount to the agency legislating. Why should you be able to hold the agency accountable if it promises you something to which the law does not entitle you? All the more reason for the agency to tell you to get a lawyer. And a judge, if need be.

    You will NEVER see a public-sector employee staying late, uncompensated, to keep the business afloat.

    Actually, any examiner who spends more than the allotted time per count is doing just that. And the PTO gets more fees as a result. But there’s no need to keep the PTO “afloat”, because it’s self-funding and even runs a surplus that Congress happily appropriates.

    What I said was that many don’t EXPECT anything of enduring merit from the examiner.

    That’s probably why they aren’t getting it. I get lots of value from dealing with examiners. But then you have to explain to your client why he has to pay all those issue fees, and you also have to explain to your partners why you couldn’t bill hours for another response. Which brings me to my next question: by “anything of enduring merit” do you mean this year’s bonus?

  118. The references above to reexam bring a clear point to be made about the standard under question here.

    From my November 18 post on the thread Untouchable: Sham Reexamination Requests, the following point is offered:

    There is an analogy from what Congress did here in the Reexam Statutes to the standard for the presumption of validity.

    Congress, knowing all the possible ways a patent could be in error, specifically and intentionally cabined the ability of the Office to correct errors and take away a patent’s presumption of validity in reexamination only in those cases and for the grounds of evidence that could be independently corroborated – those significant new questions of patentability traceable to patents and published articles.

    There is no doubt that that level of evidence belongs to a clear and convincing standard.

    Had Congress instead leaned towards a preponderance standard, there can be no doubt that the ability to inititate reexam would have been opened much further.

  119. That irritation known in the private sector as “work” requires my attention. I chafe at the thought that future posts endorsing at least the status quo will go unchallenged.

  120. “If you can’t get anything of value from the examiner, you’re doing it wrong. If you’re not even trying anymore, you’re doing it even more wrong.”

    I didn’t say you can’t GET anything of value from the examiner.

    What I said was that many don’t EXPECT anything of enduring merit from the examiner.

    The two are completely different things.

    Even the most ignorant examiner can occasionally screw up and get something right, purely by accident. Because he or she really has no idea what it is that they are doing, anything they do that affirmatively benefits an applicant can only be the result of happenstance, save for trivial technical issues.

  121. IANAE–

    No matter how you disclaim it, administering a legal statute or rule is rightly considered “the practice of law”.

    By using the phrase “illegal practice of law”, you are assuming what you set out to prove. You require that it be illegal BY DEFINITION. It is not.

    “free legal advice”? Last time I checked, federal employees were compensated for their time.

    On your last point, if it was MY JOB to “give legal advice”, i.e. administer a legal scheme and assist individuals in navigating and complying with said scheme, I WOULD NEVER REFUSE ANYBODY LEGAL ADVICE, and if I did, I should expect to be held accountable for non-performance of my duty.

    Do you know how many people ask prospective questions of government, in an attempt to ensure that their future actions are in compliance? TONS. Do you know how the government rewards this good-faith effort at compliance? By telling people to hire a lawyer.

    In addition to the obvious differences between the two approaches, there is this: an agency should be able to give prospective guidance, to which that agency should be held, in individual cases. Better for everybody.

    Your argument rests on the built-in assumption that somebody administering a legal scheme is not engaged in the “practice of law”. On the contrary, it is the most direct possible example of the “practice of law”.

    All of this is beside the point, and obscures the real issue:

    EVEN IF THEY ARE ALL COMPETENT, THEY ARE STILL OVERPAID AND UNDERWORKED

    and should have total compensation not only frozen, but greatly reduced to a level AT LEAST commensurate with those in the public sector, and ON AN HOURLY BASIS, at that. You will NEVER see a public-sector employee staying late, uncompensated, to keep the business afloat.

    If their ridiculously inflated total compensation was converted to an hourly basis (the number of hours they actually spend working, not “on leave”, “sick”, “training”, whatever), it would reach the level of the absurd.

    Don’t even get me started on productivity.

  122. By many with whom I work, appeal is now viewed as the immediate goal of initial examiner-level prosecution–they don’t even waste their client’s time expecting anything of enduring merit from an examiner.

    That shows where the real incompetence and laziness are.

    If you can’t get anything of value from the examiner, you’re doing it wrong. If you’re not even trying anymore, you’re doing it even more wrong.

  123. It doesn’t matter if you shift the incompetence to the level of policy, it remains incompetence.

    Scrupulously avoiding the illegal practice of law is institutional incompetence?

    And YES, all government employees should have some legal education.

    Of course they should. And the very first bit of legal education they should get is not to give out free legal advice to the general public. No matter how much additional legal education they eventually wind up getting. Because when people have questions about the interpretation of statutes they really do need an actual lawyer.

    You are confusing the inability to lawfully give legal advice with the absence of legal education. How would you feel if you refused somebody legal advice (because of a conflict, let’s say) and they went around telling the world you were incompetent and had no legal education because you couldn’t even answer the simplest legal question?

  124. This helps one understand why the PTO is increasingly viewed as a mere prelude to appeal, where what is important is getting evidence into the record, raising and preserving issues such that they can be appealed.

    By many with whom I work, appeal is now viewed as the immediate goal of initial examiner-level prosecution–they don’t even waste their client’s time expecting anything of enduring merit from an examiner.

  125. IANAE–

    It doesn’t matter if you shift the incompetence to the level of policy, it remains incompetence.

    They are there to administer the laws. They have no idea what those very laws mean, and they know it. That is the very definition of incompetence.

    The costs of this incompetence are born by the citizenry.

    And YES, all government employees should have some legal education. For the amount they get paid, you could hire a legally-educated individual, train them in the specifics of the scheme they will be administering, and eliminate all sorts of dispute-related costs.

    Make no mistake, some government employees are burned by the existing paradigm, too. Take the case of military personnel who can be held criminally liable for following an unlawful order. How is some 18-year-old going to make a good-faith determination of what is and is not lawful, within the context of a combat operation?

    Everything needs to change. First and foremost, government employees need to know what they are doing, why they are doing it, and how their actions fit within a legal framework, and they should be able to explain all of that to the individual citizen, and engage in an informed discussion aimed at resolving an issue, rather than disclaiming responsibility as just another cog in the procedural machinery.

    The current model serves nobody well–just look to the PTO for verification.

  126. Currently USPTO Examiners are directed to only cite the best art they find. Thus, while the Examiner may have explicitly considered references A and B, they may have found references C, D, E, and F in their search and decided, upon review, that they were not relevant or weren’t as good as references A and B as prior art.
    If an alleged infringer brings up references C, D, E and F, can they state definitively that they “weren’t considered” by the Examiner and therefore should have a lower burden of proof to overcome? In effect, wouldn’t this give “not the best art” more legal weight than the best art, which *was* found by the Examiner?

    The counterargument, of course, is that the Examiner sucks, didn’t find the best art, etc. But should we be assuming those to be true, as a matter of law?

  127. For the most part they are ignorant and incompetent–go ahead and try to ask any government employee to help you with the meaning of a statute or a rule–they will tell you flat-out that they cannot, that you should hire a lawyer.

    Aren’t they pretty much required by law to tell you that? And isn’t that therefore the only competent answer they could possibly give?

  128. There is a huge “practical” difference between the two standards — “practical” in terms of the dynamics of how patent cases are actually litigated. Under the current regime, patent owners say throughout the litigation that they have to prove infringement only by a preponderance, but that the defendant has to prove invalidity by clear and convincing evidence. They say this at initial case status conferences, at summary judgment, and at trial. And in particular patent owners use the different standards of proof during settlement talks to obtain negotiating leverage. Creating a level playing field will make a huge “practical” difference.

  129. Mooney–

    “Regular working people”?

    Far from it.

    They are paid vastly more than the private sector and they are largely unaccountable.

    For the most part they are ignorant and incompetent–go ahead and try to ask any government employee to help you with the meaning of a statute or a rule–they will tell you flat-out that they cannot, that you should hire a lawyer.

    Mooney, do you even know what percentage of the federal budget is attributable to total employee compensation? Of course you don’t. Here is some information for you:

    “The current federal budget shows that direct compensation — cash — for executive branch employees will be $170 billion, or 5 percent of total fiscal 2011 expenditures. The portion that goes to compensation has not increased recently. The critics who voice plans to freeze or cut salaries or to furlough workers already have stated they would exempt the Defense, Homeland Security and Veterans Affairs departments. The remaining payroll, based on OPM data, is roughly $50 billion for Cabinet-level agencies and another $16 billion for the smaller agencies, including the Federal Deposit Insurance Corporation, General Services Administration, Securities and Exchange Commission, and Social Security Administration. The judicial and legislative branches together add another $5.5 billion. The military and uniformed personnel payroll is $104 billion more.

    The cost of benefits for current civilian employees adds $64 billion, and military benefits account for $53 billion. Benefits for retired civilians come in at $78.5 billion and those for retired military personnel add $59.5 billion (both include retiree health benefits).

    Furthermore, what might be termed the hidden “payroll” cost includes the salaries and benefits of all the personnel working on federal contracts. No one, it seems, knows the total number of federal workers, or their aggregated compensation.” (Howard Risher, Nov. 2, 2010)

    Of course, the real issue is NOT HOW MUCH IT COSTS, BUT WHAT VALUE WE GET FOR OUR MONEY.

    I don’t care if it’s 0.0001% of the total budget–if it’s a rip-off, it’s a rip-off. If it is economical to investigate and fix it, it should be fixed. Period.

    Furthermore, a salary freeze is totally inadequate. There needs to be a salary decrease, a benefits and other compensation decrease, a complete dismantling of public-sector unions, a disallowance of collective bargaining, and greater consequences for non-performance and breach of duty.

    This measure should not be applauded, it is meant only to placate the ignorant voters.

    Like Mooney.

  130. “Right, because civilian federal workers consume such a huge part of the Federal budget and, really, why give regular working people raises when there are hungry bankers to feed?”

    Seriously.

    “The beatings will continue until morale improves.”

    lulz.

  131. No pay raises at the PTO?

    WASHINGTON — President Obama plans to announce a two-year pay freeze for civilian federal workers later Monday morning, according to an administration official, the latest White House move intended to demonstrate concern over sky-high deficit spending.

    Right, because civilian federal workers consume such a huge part of the Federal budget and, really, why give regular working people raises when there are hungry bankers to feed?

  132. Key prior art not disclosed to the PTO would seem to meet the clear and convincing evidence standard or else the prior art wouldn’t be “key” prior art. Also, the “in its expertise” portion of the clear and convincing evidence of invalidity presumption rational– “that the PTO, in its expertise, has approved the claim” —- only requires that the patentee legitimately play its role in the USPTO application of the USPTO’s expertise, not that the USPTO has in fact has reviewed a particular document.

    In sum, Dennis’ noted KSR v. Teleflex blurb probably stands for the proposition that patentee inequitable conduct can help get over the clear and convincing evidence standard of invalidity.

  133. Mere preponderance allows defendants to shift the burden simply by piling on more and more confusing evidence until the finder of fact doesn’t know one way or the other, and that’s too easy to do in technological fields.

    Is the plaintiff also unable to make sense of this evidence in your bizarre, otherworldly hypothetical? One would think he’d be quick to shed some light on the situation, and well placed to do so.

    Not to mention that if the evidence is “confusing” and the trier of fact “doesn’t know one way or the other”, a preponderance standard still requires him to side with the patentee on validity.

    Anything can be made to look obvious in hindsight, especially to a someone not skilled in the art.

    There’s nothing fundamental about hindsight that would make it less “clear and convincing”. In fact, hindsight is probably the most likely evidence to seem clear and convincing, considering how tempting it is to agree with. A higher standard of proof is not a reliable way of discounting hindsight. A better way would be some sort of specific rule against hindsight, which we already have.

  134. “What I’m saying is that fact finders should be convinced by evidence that is more persuasive than the other side’s evidence.”

    This is where we differ. If the defendant puts on a 4 week presentation with 30 witnesses, but there is no clear and convincing evidence admitted, the patentee should not have to present any evidence at all.

  135. “You seem to be only concerned about the clearness of evidence when showing invalidity — not sustaining validity.”

    That’s called “burden of proof.” If the a”eged infringer can show more likely than not invalidity by clear evidence, then I have no problem with the patentee being required to shift the burden back by eveidence that is also clear.

    I just see a huge difference between evidence that is clear, and lots of unclear evidence. Mere preponderance allows defendants to shift the burden simply by piling on more and more confusing evidence until the finder of fact doesn’t know one way or the other, and that’s too easy to do in technological fields. Anything can be made to look obvious in hindsight, especially to a someone not skilled in the art.

  136. Oh, here’s another policy reason. If the rule ends up being that only art that was before the examiner is entitled to deference, fewer defendants will file endless re-exam requests because it would weaken their litigation position.

    Patentees generally dislike third-party re-exams, right?

  137. Bobs: does the Supreme Court actually decide anything in patent cases these days?

    Yes. They decide the case before them.

    Bilski was a bad case to generalize, because it was so plainly invalid. It wouldn’t have been appropriate to give a new general rule. We were never going to get good guidance from Bilski. Even saying MoT was not the only test was a stretch, considering that MoT gave the correct result and there was no explanation of how MoT might differ from the actual test.

    The cases that give guidance are the ones that change the established rule, because the court has to explain the change. Like eBay, for example.

    TINLA: Please also state your erroneous assumption that replacing the “clear and convincing” standard with “preponderance of the evidence” will not result in invalidation of valid patents,

    I don’t assume that preponderance will never result in the invalidation of valid patents. I merely note that it doesn’t systematically get validity wrong in the same way as clear-and-convincing, so it should arrive at the correct result more frequently.

    TINLA: and provide the precise metric by which you measure validity of patents.

    It’s the same “precise metric” that is good enough for every other civil trial that takes place before the very same District Court judges and juries. They’re well equipped to deal with such things. What precise metric do you use in the “clear-and-convincing” analysis?

    TINLA: Please also state the policy reasons for encouraging fact finders to allow themselves to be convinced by evidence that is less than clear.

    Nobody is saying the evidence should be “less than clear”. What I’m saying is that fact finders should be convinced by evidence that is more persuasive than the other side’s evidence. The policy reasons for that are (1) that one party’s evidence is more persuasive than the other party’s evidence, and (2) whatever policy reasons support the exact same standard in every other civil trial.

  138. I’d like to see the “clear and convincing” standard tossed out. But if it remains, it should be limited to cases where there is no substantial new question of patentability, as used in reexam, where you can’t infer that the particular question was considered just because the art was initialed by the examiner.

  139. “Please also state the policy reasons for encouraging fact finders to allow themselves to be convinced by evidence that is less than clear.”

    Aren’t you the one suggesting that? Your proposal (which happens to be current law) is to allow fact finders to be convinced of the validity of a patent by evidence that is less than clear (even when the prior art in question was never before the PTO).

    You seem to be only concerned about the clearness of evidence when showing invalidity — not sustaining validity.

  140. In theory, the evidence sufficient for preponderance should be sufficient to satisfy clear-and-convincing because (in either case) you’ll likely need documentation that speaks for itself both clearly-and-convincingly as well as by-a-preponderance.

    However, I think there is a risk that patentees can leverage the clear-and-convincing standard to get juries to discount documentary evidence, even if their contents are clearly-and-convincingly demonstrated.

  141. “do I need to meticulously rephrase my previous post”

    Yes, please. Please also state your erroneous assumption that replacing the “clear and convincing” standard with “preponderance of the evidence” will not result in invalidation of valid patents, and provide the precise metric by which you measure validity of patents.

    Please also state the policy reasons for encouraging fact finders to allow themselves to be convinced by evidence that is less than clear.

  142. I would suggest that there is no PRACTICAL difference among “preponderance”, “clear and convincing”, and “beyond a reasonable doubt.”

    I would suggest there’s a huge practical difference in how a defendant might present evidence between an ordinary civil trial and a criminal trial, because of how much evidence is required to win.

    After all, ever READ a legal decision that says “the evidence would have been sufficient for preponderance, but was insufficient for clear and convincing?”

    Well, no, because it’s virtually never the case that the standard of proof is in doubt, and juries don’t give detailed reasons anyway. Still, it makes a difference how convinced the trier of fact thinks it needs to be before it can side with the infringer. When you instruct a jury that even if they lean slightly toward the infringer they are still required to side with the patentee, I’m sure that tips the balance in at least some cases in a completely unverifiable way.

    And that’s not even considering the theoretical point that the exact same conduct before and after the patent could respectively be non-anticipating and infringing solely because of the different standards of proof. Think Adams v. Perrigo.

  143. Given the level of guidance they provided with their decision in Bilski, does the Supreme Court actually decide anything in patent cases these days?

  144. presuming the material raised in litigation was considered in re-exam, shouldn’t this question now be moot within the facts and history of the controversy on appeal?

    It should, but as you note, this presumes that the material raised in litigation was considered in re-exam. If I remember correctly, the potentially invalidating prior art was not the type of prior art that could be submitted in a re-exam.

  145. presuming the material raised in litigation was considered in re-exam, shouldn’t this question now be moot within the facts and history of the controversy on appeal?

  146. “Your honor, when you look at the record, you will see that the Johnson patent and our expert’s affidavit provide the necessary factual basis to move the amount of evidence from preponderance to clear and convincing.” Anyone ever made that argument?

    I would suggest that there is no PRACTICAL difference among “preponderance”, “clear and convincing”, and “beyond a reasonable doubt.”

    When it comes to applying the facts, the entity making the determination (judge or jury) decides which side should prevail and then says that the legal burden has been met.

    After all, ever READ a legal decision that says “the evidence would have been sufficient for preponderance, but was insufficient for clear and convincing?”

  147. ^^^FIXT^^^

    Unlike patentees, who are oh so quick to give up on the invalid ones out of the goodness of their hearts.

    Now, do I need to meticulously rephrase my previous post, or can we have a discussion about what you know I meant?

  148. Well then, let’s raise all the PTO fees (the PTO needs the money anyway), and only invalidate patents on proof beyond a reasonable doubt.

    Or we could take a step back, and realize that the patentee’s cost to obtain a patent without any involvement from the infringer shouldn’t be the infringer’s problem. All the infringer cares about is that he escape liability for invalid patents, and that’s a very reasonable thing to want and expect.

    The patent system is designed to be a balance between the patentee and the public. This issue can’t be properly viewed from one side only, and the right answer can’t always be “make patents stronger”.

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