Microsoft v. i4i: Supreme Court Affirms Strong Presumption of Patent Validity

Microsoft Corp. v. i4i Limited Partnership (Supreme Court 2011)

The patent act indicates that issued patents are “presumed valid.” 35 U.S.C. § 282. In this case, Microsoft challenged the strength of that presumption — arguing that a low “preponderance” standard for proving invalidity should be sufficient rather than the higher “clear and convincing” standard required by the Court of Appeals for the Federal Circuit. In straightforward language, the Supreme Court writes: “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.” Microsoft will now likely be forced to pay the $250+ million judgment for infringing i4i’s patents.

With unanimous agreement, the Supreme Court has rejected Microsoft’s argument and affirmed the Federal Circuit’s strong presumption of proof. Justice Sotomayor delivered the opinion for seven of the justices. Justice Breyer joined the majority but also wrote a concurring opinion that was signed by Justices Scalia and Alito; Justice Thomas concurred, but based upon his own unique historical reasoning. Chief Justice Roberts recused himself. With the absence of Justice Stevens, the court appears to now be tilted to the right on core patent issues. (I.e., toward patents as property rights and away from a more policy-based regulatory paradigm).

The court’s opinion rests largely on its 1934 RCA opinion that required “clear and cogent evidence” to overturn an issued patent and a conclusion that the 1952 patent act intended to codify the common law holding of RCA.

[B]y the time Congress enacted §282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense bore “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence. That is, the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof. Under the general rule that a common-law term comes with its common-law meaning, we cannot conclude that Congress intended to “drop” the heightened standard proof from the presumption simply because §282 fails to reiterate it expressly.

The Supreme Court similarly rejected Microsoft’s alternative proposal that the presumption of validity be weakened for validity challenges that were not considered by the USPTO during prosecution of the application. However, the Court did agree with Judge Rich’s American Hoist opinion that “new evidence” of invalidity likely carries more weight than evidence that had been previously considered and rejected by the Patent Office. In what may become the most litigated aspect of the decision, the Supreme Court writes:

Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force. And, concomitantly, the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain. In this respect, although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence. Although Microsoft emphasized in its argument to the jury that S4 was never considered by the PTO, it failed to request an instruction along these lines from the District Court. Now, in its reply brief in this Court, Microsoft insists that an instruction of this kind was warranted. That argument, however, comes far too late, and we therefore refuse to consider it.

In its opinion, the court acknowledged policy arguments both for and against a strong presumption of validity (Citing Lemley & Lichtman), but in the end decided that it was bound to follow Congress and the common law precedent.

In his concurring addendum, Justice Breyer attempted to cabin-in the decision by indicating that the clear and convincing evidence standard of proof “applies to questions of fact and not to questions of law.” He suggested that jury instructions should include detailed interrogatories that separate-out factual determinations made by a jury from the legal conclusions. That distinction is extremely important in the patent landscape because the ultimate question of obviousness is a legal conclusion based upon a set of facts generated by following the process set out in Graham v. John Deere. If Justice Breyer’s prescription is followed, it creates a major loophole in the strong presumption because the most difficult and debatable aspect of the obviousness analysis is the leap from the factual underpinnings to the ultimate conclusion. As an aside, Justice Breyer suggests in his opinion that “novelty” is a question of law while the Federal Circuit has long held that to be a factual conclusion.

Justice Thomas agreed that the standard for proving invalidity should be did not agree with the majority that the standard was “codified” in the Patent Act of 1952 but rather that the common law clear and convincing evidence standard was left unchanged by the Act.

138 thoughts on “Microsoft v. i4i: Supreme Court Affirms Strong Presumption of Patent Validity

  1. “correct most of the time…”

    LOL Um, maybe twice. Then again, a stopped clock is correct twice a day. Unless it’s a digital clock, then, once it stops, it is never correct again.

    You are always talking about how “state-of-the-art” you are Mooney, what with your appreciation of the subtle nuances of patent law… My guess is that you’re a digital clock. (Although, you seem to have trouble with HTML tags).

  2. I’m quite pleased that the Justices defied pundits’ predictions and issued this ruling — I always thought i4i had the stronger arguments, not to mention many years of tradition and precedent on its side. Moreover, I think there’s a decent argument that a strong presumption of validity is indicated in the Constitution; and, on a policy note, in countries with weaker patent rights, there lurks always the danger that well-funded entities can use that lesser standard to bankrupt patentees, or even to deprive them of their IP altogether. Thank you, SCOTUS; well done.

  3. Sure,

    RED jerseys;

    BLACK pants;

    Clenched Fist on the helmet.

    We will meet at the midnight to sing songs from Les Miserables and raise our glasses to La Révolution.

    Death to all enemies of the Republic!

  4. Hardworking in thread 1: I…

    Hardworking in thread 2: I…

    Hardworking in thread 3: I…

    Hardworking in thread 3: “You’re a narcissist Malcolm”

    Hardworking in thread 3: I…

    Hardworking in thread 4: I…

    6: lulz. Hello Hardworking pot.

  5. Ned, Could I interest you and your merry band of revolutionaries in some NFL jerseys? Wholesale?

  6. Spoken like a true radical, a man of the people. Had you been there at the time, before the Bastille, you’d have done us all proud. Your ideal leader is none other than Robespierre, a perfectionist, who would tolerate no defiance of the Republic, in thought, in word, in deed, or in failure to make the proper remarks on the greatness of the Republic and HIS leadership thereof when the occasion demanded.

    We need people like you to remind us of those days of yore. So, raise the red flag of the revolution, and let us march in celebration of the Republic, singing triumphantly La Marseillaise.

  7. Such cynicism! One wonders – is this a clue to your true identity?

    When a teacher combines graciousness, extensive knowledge, and a straightforward presentation, how could an (A)nxious (L)earner refuse to learn? I am incredibly greatful, and much enlightened. I only hope plurality is man (or woman) enough to accept his chastisement for what it is – an opportunity to learn at the feet of his betters. It is indeed unfortunate that there is a surfeit of Beavises who seek nothing more than to disrupt that learning.

  8. It is getting really irritating how people think that they can ingore statutes just because they don’t like them. Take, for instance, the False Marking Statute. I have heard so many reasons why the statute is bad for this and terrible for that and should not be enforce. Well it is a statute duly enact by Congress, just as 282. Any party that seeks to undermine Congressional acts is simply an enemy of this Republic. They seek to quelch the voices of the masses as asserted by the elected representatives of the people. That is why it is no wonder that the parties most interested in ignoring Congress acts are the few, the large, the billion dollar companies.

  9. Agreed.

    So, does Moy have any credibility left given his argument that it’s purpose was to clarify that defendants had the burden of proof given cases to the contrary.

  10. The court’s opinion rests largely on its 1934 RCA opinion that required “clear and cogent evidence” to overturn an issued patent and a conclusion that the 1952 patent act intended to codify the common law holding of RCA.

  11. Further,

    You will have to explain why I should be giving an apology for pointing out the truth, even if that truth merely offends you – the one with the problem ego. “Never ever saw an apology to anyone from the narcissistic twxt. Maybe you’re vying for the crown now? ” – Indeed, the crown already is being worn.

  12. With all due respect, Malcolm, Ping’s “observations” have been born out in every major decision for the last month.

    Every last one.

    This is not a case of wishful thinking in the least. The fact is that I think it absolutely funny that he professed not to do answers, and yet foreshadowed the holding and reasoning in both multiple en banc CAFC and Supreme Court decisions – while you boast that you get things mostly correct AND you were just as – if not more – immature than Ping – but also simply much more wrong in your prognostications.

    As I said – point out the error in what I say – show me where you were more right than Ping.

    You will not be able to because you were not so.

    As for narcissism – no one touches your ability to reverberate with that quality – not even Ping, for as much as he was as full of himself. I called you out on this and you got all huffy – yet I was 100% correct. You are but an empty wagon, and your prattling is worse than Ping’s because as I point out (painfully to you) that at least Ping was correct.

  13. Hardworking Ping Bxtthole Licker wrote: If I have erred – then point out the error.

    Okay, here’s your error:

    Hardworking Ping Bxtthole Licker wrote: the one who “don’t do answers” has the best record of “observations” matching actual results.

    That’s wishful thinking on your part, friend. There were very few commenters more full of shxt than pingaling. As anyone with half a brain has understood for the entire duration of pingaling’s pathetic “tenure” here, the primary reason pingaling didn’t “do answers” was because if he did the vacuousness of his horseshxt would become plain even to pingaling’s bxttsniffing fans (e.g., folks like you). When he wasn’t going out of his way to take a pointless, gratuitous shxt on me, 6 or Ned or some other commenter, he was taking undeserved potshots that were, to the extent they were coherent (= rarely), often wrong. And then when the axxhxle was called out on it, he’d dig deeper until the thread turned into one of those “trainwrecks” he loved so much. Yes, pingaling was a Hardworking Thread Wrecker who loved talking trash about other commenters as much as any aspect of patent law. Never ever saw an apology to anyone from the narcissistic twxt. Maybe you’re vying for the crown now? Sure seems like it.

  14. It’s reasonably applicable to most of your comments.

    Most definitely not. If I have erred – then point out the error.

    If, on the other hand, you are upset because I called out your proclivity for uncivility, then rant about that – but at least be accurate in your ranting.

  15. Just this: If one is going to prohibit corporations from commenting on political elections, and all news organizations are corporations, or are owned by corporations that are not in the news business, how can you make distinctions as a constitutional matter?

    I think this is the real basis for the holding in the Citizens United case.

  16. Why not just stick with Hardworking Ping Bxtthole Licker as your pseudoynm? It’s reasonably applicable to most of your comments.

  17. AL,

    Do not be disappointed when a third party makes an uninformed comment – yes, it was a “little thick,” but my thanking you was indeed sincere – one only has to look at most posts here to see the lack of substance and compare your reply – not only timely but very much full of substance to see that only a fool would not be greatful for a post so rich in value.

    If only all so called “learners” here were as enlightened as you, the blog would be tremendously enjoyable and valuable (and to more than the typical Beavis level reader).

  18. Was Hardworking being sarcastic? I thought he/she might be laying it on a little thick, what with that “impressive helpfulness” and all, but I’m disappointed, nonetheless, to learn that it wasn’t sincere.

  19. APLA (can’t remember his name), NYPLA (Rich), and Frederico.

    Rich was a litigator. He knew a lot about the law, and his condification efforts were highly accurate.

    The problem was that it was not emphasized enough that the 1952 Act was a codification effort. Courts, except for the Supreme Court, seemed to ignore this at time, never really looking to understand the law prior to 1952 in interpreting the statute.

    Just for an example, not everything in 102 is prior art. Now, the drafters thought it obvious what was the prior art, as that was well understood for 150 years. But we got lost, since 1952.

    Answer: 102(a) and (e) are prior art.

    102(b) are bars.

    102(c) and (d) are forms of abandonment

    102(f) is not prior art, but cf. Oddzon Products

    102(g) is not prior art, but sets forth rules to determine priority of invention.

    But, how many here would actually know this given what Rich and his merry crew did post 1952 in pretenting the the ’52 Act was not intended to codify the existing law. What was Rich’s motivation?

  20. I see. Very educational. Thank you.

    Plurality, I hope you will take a lesson from this as well. Don’t suggest that federal judges have discretion on a tangential matter when, in fact, judges have – generally – quite a bit of discretion. Furthermore, while your bias is quite possibly unintentional, it is inappropriate to suggest a legislative adjustment to a process that is already legislatively controlled.

  21. Just what exactly was your point?

    Why, that is quite evident – that Judges have – generally – quite a bit of discretion in our legal system.

    And how does that point relate to your initial criticism of plurality’s post

    Plurality’s evident lack of knowledge with the legal system stems from his choice of such words as “Unfortunately,” “depends wholly,” and “tangential”, which, along with the yearning phrase “That probably needs a legislative fix to require…” indicates – quite clearly (and with what must be surprising little enlightenment to such a wonderful student of law such as yourself), that such a call for a legislative fix simply flies in the face of the already legislative-controlled process for creating and promoting the Rules of Civil Procedure. Those very RCP have as one principal the very push for judicial discretion that Plurality would seek to restrain (based on his obvious, albeit quite possibly unintentional bias as an examiner, and in face of the very topic of this thread which no doubt initiated Plurality’s comment).

    I mean very little snideness in my replies (both this one and the previous one), as what I state in general terms you have very nicely augmented in specific terms – and those, even with citations.

    I only hope that such impressive helpfulness as you have already given will not be taken as an arrogant attempt at one-upping (in your own level of snide choice of moniker) someone willing to teach such an evident novice to the legal system such as Plurality.

  22. …to some form of distinction from my point (which, is completely accurate without any such weaseling).

    I have no doubts that your point was completely accurate. But I’m afraid I still don’t completely understand. Just what exactly was your point? And how does that point relate to your initial criticism of plurality’s post, in which you noted plurality’s lack of understanding of the legal system?

    P.S. And I mean “Anxious” in the sense of eager, impatient, etc. There’s just so much to know…

  23. Wow,

    That’s a great start from a self-proffessed learner.

    I just wonder where the anxiety comes from…

    Perhaps it lay in the comment “there was really nothing wrong with your original comment, except perhaps to the extent..

    As my comment pointed out the general nature of the judicial discretion, and AL seems to want to, for lack of a better word, weasel his answer to some form of distinction from my point (which, is completely accurate without any such weaseling).

    Any googling on “Rules of Civil Procedure” or “Judges’ Standing Orders” will augment the very fine legal quotes from AL to show just how “general” the discretion goes.

    Nice job AL (aside from the weaseling).

  24. This ought to be good. I too am looking forward to being enlightened on how the legal system works.

    Incidentally, plurality, as far as I can tell, there was really nothing wrong with your original comment, except perhaps to the extent that it might appear to suggest that this issue is something new. Further, it seems to me that your comment does not raise the question of how much discretion judges have “generally speaking,” but rather how much they have to grant or deny stays in the name of judicial economy. My understanding is that they have quite a lot:

    “The Supreme Court has long recognized that district courts have broad discretion to
    manage their dockets, including the power to grant a stay of proceedings.” Procter & Gamble
    Co. v. Kraft Foods Global. Inc., 549 F.3d 842, 848-49 (Fed. Cir. 2008) (citing Landis v. N. Am.
    Co 299 U.S. 248,254-55 (1936)). “It is well-settled law that a district court may exercise
    [such] discretion when ruling on a motion to stay proceedings pending reexamination of the
    patents-in-suit by the PTO.” NTP. Inc. v. Research In Motion. Ltd.. 397 F. Supp. 2d 785, 787
    (E.D. Va. 2005). However, a district court “is under no obligation to delay its own proceedings
    by yielding to ongoing PTO patent reexaminations, regardless of their relevancy to infringement
    claims which the court must analyze.” Id. at 787; see Viskase Corp. v. American Nat. Can Co..
    261 F.3d 1316, 1328 (Fed. Cir. 2001) (“The court is not required to stay judicial resolution in
    view of the reexaminations.”).

    But let’s wait to be enlightened, together.

  25. “we can all thank all that is good is gone”

    Now say that three times fast.

    While it is a relief that Stevens is no longer pounding away at 101 patent issues, at least he had the good sense to dissent in Citizens United. We could have used another of him there. As it is, we now have to pass a Constitutional Amendment modifying the scope of Freedom Speech in order to limit the buying of political votes by Corporations.

  26. They are double-checking the opinion against Ping’s comments here to make sure there is no disagreement.

    Corrected.

    Only too funny that the one who “don’t do answers” has the best record of “observations” matching actual results.

  27. They are double-checking the opinion against my comments here to make sure there is no disagreement.

  28. Certainly. If someone is willing to take the time to teach me something in earnest, I’m willing to learn.

  29. Might I note that SCOTUS can crank out 3 cases in record time and yet the Fed Cir is taking it’s own sweet time with Myriad. What gives?

  30. They did it in Bilski, as I predicted a year and a half before, and they did it here. This is a good thing.

  31. This case and Section 282 itself are additional evidence offered in support of my oft-expressed opinion that the Patent Act of 1952 was written by a bunch of inept monkeys high on baked banana peels. Right smack in the middle of McCarthy’s hey-days. M’rons, the lot.

  32. are two different things. The Congress should now do something.

    I see that you have not yet made it to the point of actually reading the decision, then.

    The crux of the matter is that Congress has done something – they codified the C&C standard.

    As for “what it should be,” well, you know what they say about opinions…

  33. What the law is, and what it should be, are two different things. The Congress should now do something.

    Just teasing.

    Does that answer your question?

  34. The prophecies of Ping are coming true – does this mean the world is coming to an end? 2012 is right around the corner…

  35. that C+C is needed to prove invalidity, so be it.

    Is this a change of heart from your post at 1:12 PM?

  36. Also I note that the matter of “form” as you’d call it cost Pfizer close to a billion dollars if the commentators on the matter were correct. They couldn’t stop their competitor from making a knock off. I have to wonder if a patent attorney didn’t get sued for malpractice or simply killed for being an i diot.

  37. I swear to you that I see those kinds of claims in like every 3rd application. Literally. It’s like drafters are soooooo f ucking lazy EVEN with their word processor. I guess some of them are a result of the claims coming from ROW priority etc.

    But I disagree with you on the “substance” v “form” part. To be clear, claim 6, and most claims in this kind of format, are, substantively completely non-overlapping in scope. It is therefore impossible for the dep to be further limiting the parent. If these claims were nothing more than a pain in the arse to read but not to deal with then I wouldn’t care so much. They often even use this format to mix stat classes.

  38. In case you guys haven’t figured it out yet, the Supreme Court trusts Rader. They are pretty much following his lead. (except for wackos like Stevens who we can all thank all that is good is gone.)

  39. That’s a very interesting case, 6, thanks for posting it. It made for some good morning reading with my coffee.

    It does seem to value form over substance, because that’s a euro type of claim that, across the pond, would be viewed as an independent claim… but the drafters should have known better than to file that claim in the US. That’s not proper form for a US claim, it’s just not.

  40. What makes these arguments especially ridiculous is to read the pertinent section of Foreign Assistance Act as it relates to patent infringement. Under this act the USG is on the hook for everything.

    It seems odd to me that activities by the USG for the USG admit to arguments that no one is liable, whereas activities by the USG for some foreign party means that the USG is liable.

  41. The notion that the USA is a country that respects above all else the Rule of Law is (as far as I can see) reinforced by this interesting Decision. Far too few countries are like that. Setting a good example to the rest of the world is admirable. Bravo.

    If the common law has for a hundred years or more invested the Presumption of Patent Validity with a settled meaning, that C+C is needed to prove invalidity, so be it. If the democratically elected Congress decides to change it, it has at any time the freedom to do so. Again: Bravo.

    Meanwhile, till then, jury instructions can play a role with evidence not assessed already by the PTO. Three cheers for that notion too.

    Thanks Dennis for keeping this blog so lively. I do learn a lot from it.

  42. According to Mooney he is right “most of the time”…

    LOL, if by “right” he means “completely out in left field and far, far, from the mainstream of patent law thought” then, well, yes.

  43. I’d say the application of the death penalty would be graver… or whether to actually read a Mooney post and all of the dirtiness that such an act would entail.

  44. The PTO and the courts are two different places with two entirely different proceedings and legal findings. Apples and Oranges.

  45. AS HE SAID TO THE OTHER,Do a MIKEE..
    It worked so well for me, now you try it. It got really tiring after the first 16 years… I doubt it will go over as well for Him this time.. And it won’t be a balloon filled with AIR HAHAHAHAHAHAAAAA.

  46. Oh and btw MM, I just found the decision that killes claims in improper dep format under 112 4th para.

    Pfizer v Ranbaxy in 05′

    link to google.com

    And the BPAI case that dealt with the same thing, but thought it an objectionable matter only is Ex Parte Porter from BPAI 1992.

  47. First reaction is wow, did’nt see
    that one coming … upon reflection
    though this makes some sense …
    the Supremes basically think the
    value of patents has been
    appropriately re-calibrated
    (see obviousness, injunction, and
    damages changes) and they are not
    going any further … the rationale
    the opinions offer seems suspect
    … as the Thomas J. concurrence
    points out the codification argument
    is not convincing, but neither is
    the common law requires this result
    line that he offers since the whole
    point of the common law is that
    courts can decide with maximum
    flexibility … so to me the decision
    only makes sense as a policy
    setting sense

    Somewhat disappointed that they did not take the step of formally lowering the evidentiary burden for non-cumulative, unconsidered art as I thought this was the right policy choice, though perhaps the jury instruction tidbit gets most of the way there

  48. Plurality,

    Are you open to such education? Others have led in with that same line and have been steadfast in refusing to be actually educated. Don’t ask if you don’t mean to have an open mind and be willing to learn.

  49. With Democrats and Republican all being on the same page in this case, I cannot see the result here as having any polictical implications at all. The result here was mandated by prior Supreme Court precedent, Radio Corp., that was written by one of the most respected jurists of all time, Cardozo.

    I think the only reason this case was taken up was the dicta in KSR.

    But as others have noted, once they understood the law, particularly Radio Corp., they had no choice but to affirm the CAFC.

  50. Mr. Heller, the strict adherence to the rules that you’re talking about is largely the result of the PTO printing department kicking back allowed cases because IDSes didn’t have the publication date, etc. Any examiner that gets a few of these back becomes wary of them and as a result strictly enforces the rules regarding IDSes.

    Also, clearing the backlog isn’t effected by examiner’s enforcing the IDS rules. If everyone actually followed the IDS rules examinations would go more quickly.

    37 C.F.R 1.98(b)(5) Each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication.

  51. Wow – spamming with office actions in an IDS and yet whining about the backlog? The only applications where it might remotely make sense to cite an office action in the IDS would be applications containing a claim such as: Claim 1) An information bearing article, wherein said information comprises a representation of a bureaucrat’s determination as to a patent application’s degree of compliance with at least one regulation. It is also ridiculous to cite in a continuation an office action from the parent application, said office action being authored by the same examiner handling the continuation. Give it a rest.

    As to Rule 98 details the robots at pubs branch are, well, robots and have been known to send back allowed cases for seemingly trivial omissions or inconsistencies in an IDS. It is possible that the examiner is just trying to avoid a printer rush. Although examiners can sometimes fill in the vital blanks themselves, they might not have time or sympathy to fix 5 pages worth.

  52. ARE YOU THAT SMART TO TAKE PUNISHMENT FOR A CRIME YOU COMMITTED IN THE STATE OF TENNESSEE.. WHILE DENYING ME DUE PROCESS….AND MAYBE KNOWING YOU CAN’T GET PUNISHED FOR IT AGAIN, IS THAT TRUE? IS THAT WHAT THIS IS ABOUT? AND IS THAT WHAT WAS DONE? BUT ANOTHER STATE VIVA LA DIFFERENCE.. Patois… AND A FEDERAL COURT WOULD BE DIFFERENT.

  53. You’re more than welcome to educate me. By the way, I didn’t come up with the idea I mentioned above. It was mentioned in one of the amicus briefs filed in Microsoft v. i4i.

  54. Plurality,

    Are you aware of the level of discretion that judges have generally speaking?

    Your comment here indicates that you do not have a working knowledge of the legal system.

  55. You can rest assured that the decision as to whether to grant a stay in light of a reexam is one that Federal judges approach with a sense of grave responsibility unequalled in any other area of law.

  56. Unfortunately, this decision means that when a judge denies a stay request when re-exam proceedings are taking place, the defendant will have to meet the clear and convincing standard in court even though the patent would have faced the preponderance standard before the USPTO. In other words, the level of burden depends wholly on the judge’s discretion on a tangential matter.

    That probably needs a legislative fix to require a stay when the USPTO is considering evidence at re-exam that would also be considered by the court.

  57. Zoltek (I am still waiting for the CAFC to issue an opinion. The oral arguments were held many months ago.) has not addressed the issue of whether or not patents are “property” within the meaning of the 5th Amendment. What is being addressed is “sovereign immunity” and “contractor immunity” under 28 USC 1498. The USG has argued “don’t look at me because I only waived some immunity, and the waiver does not apply here”, and LMC has argued “don’t look at me because the statute says I am off the hook no matter what”.

    What makes these arguments especially ridiculous is to read the pertinent section of Foreign Assistance Act as it relates to patent infringement. Under this act the USG is on the hook for everything.

    It seems odd to me that activities by the USG for the USG admit to arguments that no one is liable, whereas activities by the USG for some foreign party means that the USG is liable.

    All I can say, loudly and resoundingly, is “HUH???”

  58. You see Malcolm, the reason you can’t figure out the outcome of these cases is you fill your head with twisted odd logic to try and cover up your mistakes. It comes around and bites you.

    You have to be honest or you can’t think straight. You can’t take policy based issues without honestly saying you are taking policy based issues or your mind will be lost.

    I am afraid you need to completely re-tool your mind. Good luck. We are here to help you if you want it.

  59. That’s just a prediction, not “crowing”. I was wrong. Not afraid to admit it. It wasn’t the first time, and it won’t be the last.

    It also won’t stop me from making predictions. And it won’t stop my predictions from being correct most of the time.

  60. This thread has not picked up on the line in the decision that reflects that shot:

    Squint as we may, we fail to see the qualifications that Microsoft purports to identify in our cases.

  61. A question of point

    What I want to know, is how can an Examiner call you acting like you are PROSE, and you think you are. and he knows you are not? And on the very day the Patent has printed is when you get the call! And he asks you if you will allow an Application you had already said no too. And had already fired the Lawyers, besides!
    And as many times as you stated this, the only time it is even understood, is when you tell an official, then all of a sudden the Examiner gets canned. And all the thinks done to you are “still” ignored. No matter how many tines you complain.
    So Roy does this mean.. Free at last?
    And the phone call I received in August of 1998, directly related to August of 1997, was the reason you were being blamed.. And then the Note I wrote to ??? telling him how he twisted my arm to get me to tell him where I was living, when he already knew that. And the promise of a Fax that was going to give me answers.. was not really an answer. It was what they wanted me to think? Is that a Quid Pro Qou.. not answered? Or Obstruction? What is that called. Can’t be Mens Rea he was not an official? Even though Extortion is involved.. That was not about money..”then” that was about my Civil Rights.

  62. Huh? This case has nothing to do with patents as “property rights”. (That would be Zoltek.) Today’s decision does not even contain the word “property”.

    This was just Microsoft making a rather lame argument and hoping the Court would bend the law in its direction. Didn’t work.

  63. NWPA, the only references you can presume that an Examiner has considered are the ones that the Examiner is required to have considered and the ones that the Examiner has indicated that he/she has considered.

  64. “Just what the hell kind of name is Popinjay, anyway? I don’t like it.”

    “It’s Popinjay”s name, sir,” Lieutenant Scheisskopf explained.

  65. NWPA,

    do not be a false prophet.

    footnote ten is verbatim from the gospel of ping, specifically, the 27th letter to ned, wherein the almighty ping shares the observations of what an examiner is required to note in that examiner’s official written capture of the examination.

    the word of ping.

  66. Actually, little MM, read footnote 10, which is EXACTLY what I have been saying.

    That you can tell which references an examiner has considered.

  67. Malcolm Mooney said…
    I predict the court *at least* splits the baby and lowers the standard when new prior art is presented.

    That would be an, um no.

  68. It’s not obvious to me, and it was apparently worth your time to explain your thoughts on it. It’s also not obvious to me why you would be rude in response.

  69. That sounds right to me. (I mean Malcolm’s position.) I suppose that if there’s binding contrary precedent on the point somewhere then a district court judge is bound to follow it, but otherwise I can’t imagine a judge denying such an instruction, given this clear statement.

  70. Why should it help ANY defendant out? Read it carefully, it’s clearly dicta and technically not carrying of any precedential weight.

    Right. Because no judge in the United States pays any attention to dicta in a Supreme Court case, especially when the dicta is merely the Supreme Court explaining the proper way to address evidentiary issues in light of their ruling.

    Thank you for your wisdom.

  71. “But the paragraph from the case quoted by Dennis upthread seems like a helping hand to patent defendants generally (although it won’t help Microsoft any).”

    Why should it help ANY defendant out? Read it carefully, it’s clearly dicta and technically not carrying of any precedential weight.

  72. You’ve got to be kidding. What difference does the “kind code” make? Maybe we should have two sorts of “kind codes”: kind (for refs that don’t negate patentability) and unkind (for refs that do).

  73. The case could also be read as another example of the Supreme Court refusing to adopt a new “rule” or “test” for determining patent validity. The only difference this time is that the rule or test was not one proposed by the Federal Circuit.

    But the paragraph from the case quoted by Dennis upthread seems like a helping hand to patent defendants generally (although it won’t help Microsoft any).

  74. There are some seriously funny exchanges on the comment sections of the past Microsoft v i4i blog threads here.

    Seriously funny.

    Especially read in light of today’s Supreme Court decision.

    And IBP, yes you are reading the decision wrong. But, as C&C kicks 6′s arse says, “Typical.”

  75. “IDK about that. I seem to remember you crowing about “the day the presumption” died on the day of the oral arguments.”

    Well of course, that’s why I went to see the oral arguments, to be there if something awesome happened.

  76. Am I reading the decision wrong?

    Are people not seeing what I’m seeing?

    In name, yes, MM was wrong.

    In substance, she was correct.

    I invite all to consider how evidence is introduced and interpreted for the fact-finder.

    Granted I haven’t read the decision very carefully, I could be off-base.

  77. 2 thoughts there:

    1. This is an important question without a clear answer that has been percolating for a while. i4i came up as a case with very good counsel on both sides, and it was worth the Supreme Court’s time, regardless of result.

    2. The Court may have been leaning toward reversal when it took the case in the first place. Some of the amicus briefs supporting Microsoft were extremely good, and this case had some of the indicia of cert-bait: the Federal Circuit had (arguably) deviated from the text of a statute and from general principles of law (preponderance is the burden in most civil cases; this is an odd form of deference to the PTO), and adopted a patent-specific and pro-patentee rule with significant effects on the economy. Sounds like cert bait. Once the Court took it and dug more deeply into the law, they probably thought that there was less to Microsoft’s argument than meets the eye.

    A straightforward affirmance of the CAFC in a patent case is often a waste of cert grant, but in this case, it was an important and difficult issue worth putting to rest one way or another, and the Supremes may not have had this result in mind when they originally took the case.

  78. To be fair to DDC, there is an explanation for the comment the court appears to now be tilted to the right on core patent issues. (I.e., toward patents as property rights and away from a more policy-based regulatory paradigm)

    That said, I agree that it’s a silly comment. This case has no political valence. A holding for i4i would still mean that patents are property rights, and it wouldn’t necessarily be a “policy-based regulatory paradigm.” It would merely point out, in a formalist fashion that “the right” is known for, that 35 usc 282 doesn’t contain a burden of proof, and it would say that the court wasn’t persuaded by citations to RCA.

    “The right” might just as easily be defined to favor big businesses like Microsoft and be anti-plaintiff and anti-patent. Microsoft’s cert petition had the ring of tort reform about it.

    As much of a mess as the Supreme Court makes out of patent law, one thing I’ve always been thankful for is that it almost never seems to be about politics and biases and usually seems to be about the court trying to figure out the right answer in a confusing area of the law.

  79. PO-TAY-TOH , PO-TAH-TOH

    While nominally preserving C&C, the evidentiary weight of both unconsidered art and that of any original PTO determination can henceforth be modified pursuant to a jury instruction, to effect an outcome substantially that of POE.

    Bottom lines:

    1) if you’re litigating, get a jury instruction

    2) if you know of art that could prove problematic in litigation, think about getting it before the PTO in prosecution if possible.

  80. IDK about that. I seem to remember you crowing about “the day the presumption” died on the day of the oral arguments.

    You and Examiner Mooney got it wrong.

    Typical.

  81. “Had they been deluged with cert petitions on this issue? Wouldn’t denying cert when Ted Olson and Tom Hungar petitioned on behalf of Microsoft send a pretty discouraging signal to future potential petitioners?”

    I don’t think they have been, but they could have been in the future if they simply denied cert. Just denying cert won’t stop big business. This b**ch slap from just about the entire SCOTUS will. Really, isn’t this so obvious that it’s not even worth the time to explain? Come on people, think for a change.

  82. Had they been deluged with cert petitions on this issue? Wouldn’t denying cert when Ted Olson and Tom Hungar petitioned on behalf of Microsoft send a pretty discouraging signal to future potential petitioners?

  83. What are the chances that MaxDrei will now stop making calls for the end of the Clear and Convincing standard?

  84. LOL. We’re so afraid! We’ll never propose any changes to the status quo ever again.

  85. In any event, this is a great decision for my prosecution clients.

    Yes it is – all ZERO of them.

  86. They could always raise a 250$ million army and take over the united states. Or maybe just throw in a few billion to raise a slightly larger army.

  87. Uh I believe if you check your history I noted that this was the likely outcome though it would be desirable to have the other.

    Are you people really that bad at reading or is your memory just bad?

  88. No, I said that is the best thing we could hope for. I noted with some emphasis that it was unlikely to happen.

  89. “Anyone care to guess why the Supreme Court ever granted cert in this case? Usually if it affirms a CAFC decision on a matter of patent law, it modifies the legal standard in some significant way. Today’s decision leaves the CAFC decision intact, both in rationale and result. I don’t get it.”

    To stop getting petitions for cert on this issue. Duh!!

  90. Anyone care to guess why the Supreme Court ever granted cert in this case? Usually if it affirms a CAFC decision on a matter of patent law, it modifies the legal standard in some significant way. Today’s decision leaves the CAFC decision intact, both in rationale and result. I don’t get it.

  91. LOLOLOLOLOLOLOLOLOLOL. Weren’t 6 and MM so sure this case would kill the presumption of validity?

    I wouldn’t say “sure” but I was definitely hoping that it would kill the presumption at least with respect to references and arguments not previously presented to the USPTO.

    In any event, this is a great decision for my prosecution clients.

    I look forward to Congress fixing it.

  92. Let’s not forget that IANAE was an outspoken soothsayer on the demise of the Clear and Convincing presumption of validity as well.

    Say, what ever happened to IANAE? He went from 50 posts a day to being completely gone for nigh a month and is now has merely a sporadic token of a poster.

  93. “Microsoft will now likely be forced to pay the $250+ million judgment for infringing i4i’s patents. ”

    What alternative would they have exactly? All of their appeals are exhausted, so they now have 10 days to pay.

  94. The MICROSOFT CORP. v. I4I LIMITED PARTNERSHIP ET AL. decision is out by the U.S. Supreme Court.

    in yet another dazzling display of the ultimate master’s divine observations, ping is once again exalted as the opinion mirrors the hallowed ping’s observations.

    the word of ping

  95. Weren’t you predicting the death of the C&C presumption? Pretty much got that one dead wrong, huh?

  96. In our discussions, we’ve said that we’ll continue citing everything.

    We (and our malpractice carrier) don’t intend to be the test case for upholding Therasense.

    It stinks, but they’re going to have to make that point a few more times before it sinks in.

    That’s just FYI. It’s a great ruling, but until we’re sure it’ll be followed, practioners aren’t relying on it. It’ll likely have an effect on litigation far sooner than prosecution.

  97. OK, now there’s a definition. I’m not sure I buy it, though. After all, the “property right” at issue is wholly a creature of a “regulatory paradigm,” and the Court deferred to the ultimate regulators, Congress. Furthermore, isn’t the mythical “free market” also a key concern of “the right”?

    In my humble opinion, the core patent issues are not very amenable to political classification.

  98. Speaking of IDSs, we’ve been getting dinged a lot on “improper citation format”–like omitting the “author” (i.e., Examiner) of an Office Action or the kind code from the WO number. Way to clear the backlog, PTO.

  99. “Microsoft will now likely be forced to pay the $250+ million judgment for infringing i4i’s patents. ”

    Well if it’s either that or bother to make good arguments against software patents I suppose they’ll take it.

    And hey, look at that, the USSC supported the Fed. Circ take on something.

    “Woo woo! Therasense and now this. No more IDSing of references of marginal relevance!”

    You would think so, except for that later part of the decision. Who knows how attorneys will take that?

    “Will MS now sue its trial lawyers for failing to preserve all issues for appeal, thus subjecting it to the huge damage award it now has to pay?”

    Lulz, one can hope so, that’d be hilarious.

  100. Dennis: What in the world do you mean by “tilted to the right.” Are you incorporating all the nastiness of left/right politics into patent law landscape? I invite you to edit the post.

  101. Footnote 8 strikes me as odd – It begins “For those of us for whom it is relevant, the legislative history of §282 provides additional evidence …” Legislative history is not relevant for some justices? I can understand giving it low weight, in some instances, but wholly irrelevant? Is this a potshot at J. Thomas?

  102. I have the same question about “the right on core patent issue.” How is it defined and used in this context?

  103. Woo woo! Therasense and now this. No more IDSing of references of marginal relevance!

    Will MS now sue its trial lawyers for failing to preserve all issues for appeal, thus subjecting it to the huge damage award it now has to pay?

  104. … the court has now clearly tilted to the right on core patent issues.

    What is “the right” on core patent issues? Is separation of powers a right-wing position? If it is, I’m tilting considerably further to the right than I thought.

  105. Wow. 8-0 for the result, and 7-1 on the reasoning. The Court found this one to be easy.

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