US DOJ: Invalidating an Issued Patent Should Require Clear and Convincing Evidence

Microsoft v. i4i (Supreme Court 2011)  Download Msftvi4i.usgovt

US Acting Solicitor General Neal Katyal took over the job after Elana Kagan was nominated to the US Supreme Court. In his role as solicitor, Katyal recently filed an amicus brief strongly supporting i4i's position that invalidity can only be proven with clear and convincing evidence "even if the defendant relies on evidence of invalidity that was not before the PTO." As a back-stop, however, the Government argues that newly presented evidence may be "given greater weight, making the defendant's burden easier to satisfy."

The brief justifies its conclusions based upon several factors:

  1. The clear and convincing standard follows longstanding Supreme Court precedent. See Radio Corp. of Am. v. Radio Eng'g Labs., Inc., 293 U.S. 1, 8-10 (1934) (RCA).
  2. The presumption of validity found in 35 U.S.C. § 282 is the result of an attempt to codify the existing judge-made presumption of validity.
  3. The Federal Circuit has a longstanding and well settled rule that clear and convincing evidence is required.
  4. The clear and convincing standard "best accommodates … the principles of deference to agency authority and expertise."
  5. The clear and convincing standard serves patent holder's property interest.
  6. Although the standard for proving invalidity is high, this is balanced by the collateral preclusive effect of an invalidity finding.

On the agency-deference issue, the government argues that a "jury should not be permitted to overturn the considered decision of the PTO when the evidence is substantially in equipoise, but rather should be allowed to take that step only if it possesses a high degree of confidence that the PTO erred."

The government also distinguished the high presumption of patent validity with the preponderance standard for registered copyrights and trademarks. The copyright and trademark statutes specifically state that registration serves as "evidence of validity" rather than bestowing a presumption of validity. In addition, the copyright and trademark systems are designed simply to encourage registration "rather than to recognize the agencies' expertise" in granting rights.

In many ways, the patent law is something of an enigma when compared with our usual approach to agency decisions. The government writes:

Ordinarily, when a court reviewing agency action concludes that the agency's decision was based on incomplete evidence, the proper course is to remand to the agency. In an infringement suit, however, that option is not available, and both of the options before the court are in some tension with usual administrative-law principles. Applying the preponderance standard that petitioner advocates would permit the jury to determine for itself what the PTO would or should have done had it considered the new evidence, while the clear-and-convincing evidence standard has the practical effect of according deference to an agency decision that did not consider potentially material facts.

As between those alternatives, applying the clear-and-convincing-evidence standard across the board reflects the better reading of Section 282 in light of that provision's text, history, and purposes.

Finally, the brief spends some time considering (and rejecting) the suggestion that a high standard be applied for evidence considered by the PTO and a low standard be otherwise applied.

[I]mportantly, the text of Section 282 does not suggest that the standard of proof governing questions of patent validity varies depending on the nature of the evidence that a challenger introduces. Such a variable-proof regime, moreover, would reflect a substantial departure from the way in which evidentiary burdens typically operate. Although juries routinely give different weight to different types of evidence, petitioner identifies no statute under which the standard of proof governing a particular determination depends on the type of evidence that the parties introduce. The Federal Circuit's longstanding approach to the question presented here, under which evidence that was not before the PTO "may * * * carry more weight and go further toward sustaining the attacker's unchanging burden," American Hoist, 725 F.2d at 1360, is thus much more consistent with the usual application of evidentiary burdens than is a regime under which the introduction of new evidence changes the standard of proof itself.

29 thoughts on “US DOJ: Invalidating an Issued Patent Should Require Clear and Convincing Evidence

  1. “On the agency-deference issue, the government argues that a “jury should not be permitted to overturn the considered decision of the PTO when the evidence is substantially in equipoise, but rather should be allowed to take that step only if it possesses a high degree of confidence that the PTO erred.”

    Surely that goes against the basis of the executive overriding the judiciary system!

  2. The government argues that a “jury should not be permitted to overturn the considered decision of the PTO when the evidence is substantially in equipoise, but rather should be allowed to take that step only if it possesses a high degree of confidence that the PTO

  3. I like i4i’s argument. If it succeeds (and having the DOJ on your side is certainly a valuable advantage), then i4i can have it both ways — they can keep the clear-and-convincing standard, but with certain evidence being given greater “weight.” Brilliant. Anyway, I’m on their side. As far as I’m concerned, i4i won this patent battle fairly, and Microsoft should have just let it go long before now.

  4. lulz, pingerdoodle you make those, as well as spelling errors and grammatical errors every day of your life. Don’t try to lie to us, we know you wayyyyyyyy to well for that.

  5. At least ping doesn’t make frequent vocabulary and spelling errors

    …or legal errors, or logic errors, or reading errors…

    The list goes on and on.

  6. At least ping doesn’t make frequent vocabulary and spelling errors, as you are wont to do, 6.

  7. Edward, I agree. Anything that would get this poster to be polite or leave would be a major step in the right direction. Ping seldom actually engages in any conversation. For example, one cannot use the Socratic method with him because he simply refuses to answer any questions. But the most annoying aspect of his presence is his persistent ad hominem manner of argument. Rather than rebut the argument, he personally attacks the poster.

  8. Ping just tries to emulate me because he recognizes the awesome. But then he fails. As he is want to do, considering who he is trying to emulate.

    Pay him no mind.

  9. Learn ta read Sunshine – things be plural. Ya gotta learnto synthesize more than one document atta time ta see the big picture.

    Give it a try sometime.

  10. The case is made that the public cannot tell what the agency looked at or not

    Really? That’s part of the DOJ’s argument?

  11. Eddie boy – takin your first time ta post and doin nothin but be otchin done place you below my sophomoric level.

    Hops ya dont mind me steppin on ya.

    Next time, maybe – just maybe, add something of substance, m’k?

  12. Ping has got to be the most obnoxious commentator I have ever come across. Why other commentators respond to him is beyond me. Dennis, what have you done to deserve his absolutely sophomoric behavior?

    Bemused

  13. With the DOJ supporting the Federal Circuit’s “clear and convincing” standard for determining validity, that is very good news for those supporting keeping the current standard. The Supreme Court tends to listen to what DOJ has to say, especially in the patent law area. i4i would also be wise to give DOJ some of their time at oral argument.

  14. CTAKA,

    non sequitur – O really? Ya need ta actually read some of these things.

    The case is made that the public cannot tell what the agency looked at or not – so your view is the non sequitur.

    Keep up will ya? I aint gonna do all your homework for ya.

  15. On the agency-deference issue, the government argues that a “jury should not be permitted to overturn the considered decision of the PTO when the evidence is substantially in equipoise, but rather should be allowed to take that step only if it possesses a high degree of confidence that the PTO erred.”

    Non sequitor.

    One cannot defer to an agency on something the agency did not do; in this case review certain prior art. The idea that the jury should presume that the PTO would have granted an invalid patent even if it had considered invalidating prior art that wasn’t in front of it is not deference, it’s delusion.

    And that’s not what the statute says, which is simply that the patent shall be presumed valid. As in the burden of proof of invalidity is on the defendant, and absent some evidence of invalidity, the plaintiff wins. The difference between the “presumption” in patent law and the “evidence” in copyrights/trademarks is that in the later types of cases, the plaintiff has the burden of proof on all the elements.

    In a copyright case, if the defendant defeats the plaintiff’s evidence of copyright the defendant wins. The defendant does not need to affirmatively prove anything.

  16. Ah, a breath of fresh air. Thank you Mr. Katyal for simply making sense in the midst of all the chicanery.

  17. The only remaining problem I have with this case after reading the government brief is this: I believe the Federal Circuit rested its holding in part on its judgment that the kind of proof offered by Microsoft could not, as a matter of law, amount to “clear and convincing” evidence. How this is consistent with the government brief’s argument that evidence, not before the patent office, should (ordinarily?) be given “more weight.”

  18. And it appears it did so in this case as well. Microsoft argued for a jury instruction pointing out that the evidence of invalidity they submited was not before the patent office and that they, the jury, were not called upon to reconsider a decision by the PTO.

  19. “As a back-stop, however, the Government argues that newly presented evidence may be ‘given greater weight, making the defendant’s burden easier to satisfy.’”

    Isn’t that what happens already. A defendant always tells the jury that the patent office didn’t have reference X, and argues how that reference changes everything.

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