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.
Would the 9th relate to the Rights to work and patent? I guess if I read the Constitution the 9th may not apply here. Maybe I’ll read it throughly tomorrow.
I wonder if the 8th applies? hmmm. cruel punishment for 15 years, I’d say so… wouldn’t you Maxie?
oops my 4th, and my 7th tooooooo.
Oh Maxie and by the by.. that is my First Amendment right. So we have 1st, 13th and 14th. are there any more that you Constitutional Scholars can also add on to my list of violated Rights.
Max the Story is about being denied entrance into the Ivory Tower. Is that specific enough their Maxie? If not tuff Constituttis.
A story about a Secret all-singing, all-dancing bra, something that to begin with “kept it inside” but became, by the end of the story, a “drop out”. Was it that good an invention after all, I wonder? Too much of a good thing, perhaps?
I’m confused but intrigued (rather than enjoying a feeling of epiphanesia). Can you be more specific?
Just like the woman that invented the Bra that does everything. The one that Victoria’s Secret stole after they told her to get lost.
Just an excerpt of this story should get me a Lawyer too. She was smarter than I. But then it was then about Family. and I kept it inside. But now there is none of that.
And telling me I could not speak to Malcolm, Priceless.
Hey Hal,
I remember like it was yesterday, the word, DEMARCATION, was that because of the Plagiarism, or something else?
Anon, that is one of the reasons the MS appeal is so disengenuous. It fails to point out that the evidence not considered by the PTO is evidence they have no competence to investigate and decide — on sale bars or public use. The PTO must generally accept the statements of the inventor that he was the first and true inventor of the subject matter of the patent application. False statements would not only go to validity, but should result in a finding of inequitable conduct that could render even valid claims unenforceable.
It should be pointed out that the USPTO is not well equipped to consider on-sale bars. However, in the i4i case, the trial court considered the on-sale bar issue in great detail and the jury did not find sufficient evidence to find the i4i patent invalid. The issue was also addressed in the arguments before the CAFC and the determination of the lower court was affirmed on all findings of the trial court. The fact that the USPTO is not in a position to deal effectively with on-sale bar evidence is not a reason to overturn 70+ years of jurisprudence on the statutory and case-law supported presumption of validity. These issues get more than adequate consideration by the trial court and the appellate court. Besides, the Supreme Court has no authority to change the statute; that can only be done by Congress.
It seems to me that a SCOTUS ruling for Microsoft in this case would likely have numerous significant repercussions for patent litigation — for instance, (1) it could leave many more patent holders vulnerable to harassment by excessive litigation from large corporations; (2) it would probably serve as the basis for invalidating many more patents post-issuance; and (3) it could give the FTC leverage in ending reverse-payment settlement agreements. I think this is a case in which the Court should very seriously and carefully the policy basis of the current law and the consequences if it is overturned.
“ We don’t know if the PTO considered a reference or not. ”
I done observed that already.
And what if the examiner’s first search was everything in the relevant art class?”
I done observed this already too.
In fact, Iza laid out the blueprint for my universal IDS submission technique long ago. Iza even provided a great link to some ultra cool dump trucks that could be used for dropping off the IDS’s if the Court goes in that direction.
Nice to see the great minds here finally catching up.
Willton, when you write:
“If the USPTO properly issued a patent on your client’s application based on a thorough examination that cited the best prior art, then you don’t need the clear-and-convincing standard in order to protect its validity. The problem arises when an application was NOT thoroughly examined, and the USPTO issues a patent anyway. Why should the rest of the public be prevented from practicing the prior art based on the mistakes of the USPTO?”
I find the logic incontestable. Only one thing though: that “If” at the start of it. What a small word. But what enormous repercussions it has.
NWPA: We don’t know if the PTO considered a reference or not. The best spe’s I’ve run across have a library of what they believe to be the best references. they dismiss 1000’s of references as cumulative without them ever being on the record.
That is a real problem with Microsoft’s selective lower standard of proof for references not considered.
You could always reproduce the examiner’s search (which is on the record) and see if he found the reference, and infer from there that he dismissed it for being cumulative, but how meaningful would that really be? And what if the examiner’s first search was everything in the relevant art class?
It seems like the only truly workable solutions for a patent prosecution/litigation balance are clear-and-convincing across the board, or balance-of-probabilities across the board. With no statutory authority to decide between those two (unless you consider a lack of statutory provision for a higher standard to be authority, which I do actually), the court will have to think about how much deference is really due to the PTO and what the whole point of the patent law is, when you get right down to it.
As a practical matter, though, if the examination is done correctly the patent should stand up to any art that is no better than the best the examiner found, even on a balance of probabilities standard. Any issues with that prior art should already have been addressed during prosecution. They can manage that in Europe, so why not in the Greatest Country In America(TM)?
Your story does not fit. We don’t know if the PTO considered a reference or not. The best spe’s I’ve run across have a library of what they believe to be the best references. they dismiss 1000’s of references as cumulative without them ever being on the record.
And, this behavior described above fits with an expert opinion. So, we don’t know what they considered as my textbook example illustrated. You are merely proving that there is NO intellectual justification for your side.
Well, if those thousands of references were cumulative in comparison to the cited prior art, and the examiner still deemed the applicant’s invention patentable over the cited prior art, then why wouldn’t a court say the same thing under the same standard? If you show the court that there was art on the record that renders the proffered reference cumulative, then it sounds to me like you have a persuasive argument for patentability. Why would you have to hide behind a clear-and-convincing standard in order to make that point?
Here’s the thing: If the USPTO properly issued a patent on your client’s application based on a thorough examination that cited the best prior art, then you don’t need the clear-and-convincing standard in order to protect its validity. The problem arises when an application was NOT thoroughly examined, and the USPTO issues a patent anyway. Why should the rest of the public be prevented from practicing the prior art based on the mistakes of the USPTO?
Your story does not fit. We don’t know if the PTO considered a reference or not. The best spe’s I’ve run across have a library of what they believe to be the best references. they dismiss 1000’s of references as cumulative without them ever being on the record.
And, this behavior described above fits with an expert opinion. So, we don’t know what they considered as my textbook example illustrated. You are merely proving that there is NO intellectual justification for your side.
First, you quoted the wrong passage there, ping.
Second, is it so wrong to despise those who seek the quo without providing a valid quid to society? Why should we allow such people to not only burden society with an unjustified monopoly over a piece of technology, but also erect a massive hurdle to overcome (i.e., clear and convincing evidence) for those who seek to prove that such monopoly was unjustified?
If a patentee’s invention is truly patentable, then the patent he receives therefor should have no fear of a preponderance standard. It is those who have patents to truly unpatentable technology that benefit from the clear and convincing standard.
As I have said, I am not anti-patent. What I am is pro-fairness and pro-innovation. I believe that people should be able to practice the prior art without fear of a lawsuit alleging patent infringement, and those who are sotargetted should be given every opportunity to prove that the patent was wrongly issued.
“The applicant should do whatever he can to make his patent application bullet proof, and that includes performing a search and submitting the most relevant art he can find.”
LOL – yep that confirms Willton is from the fantasy world called policy land. Maybe, just maybe next time that set the laws from scratch , ya can suggest that prof-boy.
Here’s a clue Willton – that “rent-seeking” behavior you mention is true of ALL patents (ya know, the liberal encouragement part of the Quid Pro Quo) – whyza ya just come out and say ya be anti-patent, huh? Come on out of the closet.
So… the answer is to punish the applicant because Bob didn’t do his job?
That is directly like rewarding bad (lazy) behaviour, forgiving lousy examination effort at the wrong person’s expense – equity cannot lie in that route.
You want to know what’s lazy? A patent applicant that does not give the patent examiner every opportunity to properly examine the application. The applicant should do whatever he can to make his patent application bullet proof, and that includes performing a search and submitting the most relevant art he can find. Doing so gives the patent examiner the best opportunity to determine whether the applicant’s invention is patentable. If, in that case, the examiner does deem the invention patentable, then whether the evidentiary standard is clear-and-convincing or preponderance-of-the-evidence should not matter: the patent should be able to withstand any challenge to its validity.
In any event, it should not matter in this instance whether the PTO did a good job or not. What matters is whether the patentee has a valid patent. If the patentee does not have a valid patent because of some prior art that was not considered (or, in this case, an on-sale statutory bar), then he should not be able to assert his invalid patent against others. It’s not fair to impose upon defendants a higher burden of proof for proving that an invalid patent is indeed invalid. Doing so presents the opportunity for patent applicants to game the system and engage in rent seeking behavior.
No, you don’t. Obviously, since you keep asking questions.
But that’s OK. Now leave the computer and go outside and get some sunshine and fresh air.
I see.
You’ve had too many bites at the apple without successfully defending your point of view or advancing the argument. I am afraid that I will have to spit you out.
I don’t understand why you get so upset when I concede defeat, twice.
Could you please tell me what point of view I’m supposed to be defending?
Now you’ve further conflated what you want with what is available. You do not get more than my pun, and I am afraid that I am trying to discuss law with someone who doesn’t understand what law is, or the proper venue for making law.
You’ve had too many bites at the apple without successfully defending your point of view or advancing the argument. I am afraid that I will have to spit you out.
Have a nice day.
A bit [pun intended] of passive-aggressiveness …
I don’t get the pun.
Otherwise, your logic is impeccable. It’s illogical for the Court to suggest that the PTO can’t bring its expertise to bear on a reference that it never sees because Congress has provided other means for the PTO to review new art.
Congratulations.
A bit [pun intended] of passive-aggressiveness in your reply still doesn’t change the fallacy that you are operating under.
There exists a legislative-created track for “the PTO to bring its expertise to bear on a reference that it never sees“. Congress has considered this matter fully, and has decided on an appropriate engine.
Judicial activism should not be employed to do what the legislature already has done, but in a different manner or degree. Again, just because you don’t like the result doesn’t mean that that result isn’t fair, or better yet, isn’t the law.
OK, you’re right. The Supreme Court was wrong to suggest that the PTO can’t bring its expertise to bear on a reference that it never sees. The Court’s logic was flawed because it wouldn’t be fair to reward the PTO.
Have a great day.
If anyone here is changing the subject, it is you and your analogy.
My pointing out the logical flaw in that analogy and the resultant inequity is completely on track.
I am sorry that you do not like where that track leads, but that doesn’t change the result of the analysis or the irrationality of the situation. Getting mad at the messenger won’t change the message.
And respectfully, please note who introduced the analogy, and who is introducing the changed balance of equity (that would be you).
That is directly like rewarding bad (lazy) behaviour, forgiving lousy examination effort at the wrong person’s expense – equity cannot lie in that route.
Respectfully, your equity argument is off track. If the court was balancing equities between the patentee and an accused infringer (which it’s not), the laziness of the PTO is irrelevant, as it doesn’t prejudice the patentee vis-a-vis the defendant.
Who’s forgiving anything?
The question on the table is whether there is ANY intellectual basis for the Supreme Court’s dicta that “the rationale underlying the presumption – that the PTO, in its expertise, has approved the claim -seems much diminished” when relevant art was NOT before the PTO. This appears to be a completely rational statement to me. But you want to change the subject?
It’s even bigger than the Ring on a Bulls Nose.
So… the answer is to punish the applicant because Bob didn’t do his job?
That is directly like rewarding bad (lazy) behaviour, forgiving lousy examination effort at the wrong person’s expense – equity cannot lie in that route.
…, but in all cases, their [sic] is simply no intellectual basis for the argument that if a reference is not explicitly considered that it somehow should lower the standard for invalidating a patent. Simply none.
Bob: I looked all over the apartment for those keys, and I didn’t find them.
Alice: You’re a pretty good key-searcher, Bob. I think we can safely presume that the keys aren’t in there.
Ted: Did you look in the kitchen?
Bob: Uh, no.
NWPA, do you really think our view of the likelihood of those keys being in the apartment shouldn’t change when we hear Bob’s last statement?
>>in KSR International Co. v. Teleflex, Inc., where >>the Court stated:
>We need not reach the question whether the failure >to disclose Asano during the prosecution of Engelgau >voids the presumption of validity given to issued >patents, for claim 4 is obvious despite the >presumption. We nevertheless think it appropriate to >note that the rationale underlying the presumption->that the PTO, in its expertise, has approved the >claim-seems much diminished here.
This is just flat out wrong headed thinking. An expert need not list every piece of prior art in order for the opinion to be an expert opinion. Turn to any advanced textbook at a university with citations. The citations are always representative and not exhaustive. Frankly, this argument rises to the level of being intellectually offensive. To be an argument that shakes at the core of my beliefs that we even have a society of laws and not money grubbing scum.
This is the start and end of the issue. Any argument that if the reference was not explicitly before the PTO that it somehow strengthens the reference is intellectual dishonest, and, policy based thinking. Maybe the people who hold this opinion have deluded themselves for hope of reward form the anti-patent party or maybe they have already destroyed their ability to think clearly due to past rewards, but in all cases, their is simply no intellectual basis for the argument that if a reference is not explicitly considered that it somehow should lower the standard for invalidating a patent. Simply none.
The only case wherre an argument can be made to lower the standard is where the duty to disclose has been violated for references that the PTO could not have accessed without the person with the duty to disclose giving the reference to the PTO. This situation is different as it is part of patent law and is a case where an expert could not have considered the reference—not did not explicitly consider the reference.
The only way this opinion can be held honestly is to say that the law is simply wrong and that the PTO cannot ever be an expert that the law itself is unconstitutional. There is an argument for this, but it is a different argument.
If you want exact days and months, check my bank account for checks from my Boss at that time. It was after my Mother died. And my Mother died in 2004. So if there was any hanky panky,I moved here approx. 2002 on or around the month of May when Water was at a terrible cost. Wet! But very costly and very scarce.
You call that nonsense? Realising the connection is scarey. That’s not nonsence.
Hey, I only said I call out some of the more egregious nonsense. I don’t flatter myself that I could flag all of it.
CY, ya even havta ask that question? That puts some serious doubt into your pathological aim O “call[in] out some of the more egregious nonsense” – in fact, that be some serious egregious nonsense.
why is it that you be so quiet about the antics of the three lesser horsemen?
Because there’s so much nonsense, and so little time. Who exactly are the three lesser horsemen, anyway?
Iza realize that I am bending the arrow here by cross posting through two threads (this and the ABA), but Iza too lazy to jump to the other thread,…
“Well thank you Cy Nical, but that is not appropriate… Unless you are IANAE, mind your business
I loves me a good sock puppet conspiracy theory.
And Cy, since you be all about the “call out some of the more egregious nonsense that appears here“, why is it that you be so quiet about the antics of the three lesser horsemen? That be some of the most egregious nonsense there be (Well, Ned’s stuff is often more, but he can’t ride a horse).
Ya don’t havta worry – Iza won’t be offended if ya join the party. Should weza be tellin ya to train your horsemen better?
how about considering verbal accusation from the plaintiff to be sufficient for proving willful infringement?
Now you’re talking, billyG. Remember, the arrow of protection points only one way!
“Actually Willton, to be consistent in logic, infringement should be held with less than a preponderance.”
how about considering verbal accusation from the plaintiff to be sufficient for proving willful infringement?
I’d say the strategy of those who want the standard lowered is to foster an environment where the judge & jury get all sloppy with proving infringement AND with proving the credibility of evidence presented. The whole system gets weakened as a result of this sloppiness.
IANAE,
“Evidence that is FAKE should, in an adversarial forum, be either (1) convincingly faked and persuasive under any standard, or (2) shown to be fake by the adverse party, and therefore not persuasive under any standard.”
do you think lowering the standard will not affect our decision on allowing evidence of lower quality/credibility to be admitted?
if not what would be the standard of prove for proving that the evidence presented in credible?
Evidence that is FAKE should, in an adversarial forum, be either (1) convincingly faked and persuasive under any standard, or (2) shown to be fake by the adverse party, and therefore not persuasive under any standard.
You’re the one who wants to do away with the requirement that the evidence be “convincing,” aren’t you? Preponderance standard alows unclear and unconvincing fake evidence to shift the burden. Please allow me to anticipate your response as “So what? If it’s not convincing, it shouldn’t be so hard for the patentee to rebut it.” But what if key witnesses are dead? What if the inventor has gone to work for the defendant and won’t cooperate? We live and practice in the real world, professor.
IANAE, the master of bad reasoning…
“How about the obvious reason – for the sake of allowing dubious patents to be treated equally.”
lol…do you know how to PROVE anything?
“Genuine innovation will stand up to a balance of probabilities standard. Genuine innovation will always produce the strongest patents, under any system.”
true. But not in a field where evidence could be fabricated easily.
“I’m still not convinced. Let’s run through that comparison again….”
lol…your addiction to bad reasoning is truly amazing…
“Evidence that is FAKE should, in an adversarial forum, be either (1) convincingly faked and persuasive under any standard, or (2) shown to be fake by the adverse party, and therefore not persuasive under any standard.”
Correction: I meant to say FAKE which appears to be genuine. Lowering the standard would allow evidence of questionable sources be admitted, isn’t this the goal for those who seek a lower standard?
A lower standard would allow the infringer to grab something from a blog and call that evidence. You seem to have forgotten that the filed patent should be the most credible form of evidence and anything that seeks to challenge its legitimacy should at least be equally credible. If not, the patent office loses its credibility.
Lowering the standard is like telling the public that its not worth filing a patent application. Why the hell should i spend my money on attorney & examiner’s fees if i could just publish my invention on my personal blog?
Willton’s been a busy boy – herre and at the Eskimo’s place.
Funny, for one who is usually driven purely by policy (without law and without facts), ya be hangin out with the big boyz pretty good.
But ya might be wearin out your thesaurus – with words like “exemplified”, “regime” and “vitiate”. Chillax bro.
billy G: 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?
How about the obvious reason – for the sake of allowing dubious patents to be treated equally.
billy G: 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…
Genuine innovation will stand up to a balance of probabilities standard. Genuine innovation will always produce the strongest patents, under any system.
Rust … thing: You need to keep in mind the arrow of protection afforded by the patent. That arrow does point in one direction (the protection of the patentee), not in the U-turn shape you want to hold it to.
Oh, is that how the system works? Well then, how about a presumption of infringement, with the defendant required to show non-infringement based on clear and convincing evidence? Would that make everybody happy?
I always thought the courts were for actually deciding who had actionable claims for violations of their rights, and who didn’t. Maybe if I submit a printout of this thread I can get a refund on my law school tuition.
billy G: Suppose Intel changes its name to ‘PingPong’, would this name change affect their CPU sales? Not likely, as long this change does not also affect the quality of their products.
What happens if Intel loses one of its key patents for making its next generation processor? they would lose competitiveness and go bankrupt….still not convinced??
I’m still not convinced. Let’s run through that comparison again.
If Intel changes its name, it will lose competitiveness and possibly go bankrupt.
If Intel loses its patents, this change will not affect the quality of its products.
Now, who was it that ordered this basket of apples and oranges?
billy G: So even if the evidence is FAKE, it would still be admitted under the pathetically low standard.
Evidence that is FAKE should, in an adversarial forum, be either (1) convincingly faked and persuasive under any standard, or (2) shown to be fake by the adverse party, and therefore not persuasive under any standard.
And that’s all that is necessary to vitiate the interests of the patentee.
“Vitiate” is the wrong word. I should have said “satisfy”.
No, they only deserve the right and power of the patent they have earned. That right and power is the direction of the arrow.
That “right and power” is exemplified by the regime that allows the patentee to exclude others from practicing his invention. And that’s all that is necessary to vitiate the interests of the patentee. The patentee does not need the overprotection of a heightened evidentiary standard if the patentee has truly invented patentable subject matter that passes the threshold tests of Section 101, 102 and 103 of the Patent Act. If the patent is any good, it should be able to stand on its own and not need the crutch of a clear-and-convincing evidentiary standard to prove invalidity.
“The only thing your theory is consistent with is the belief that patentees are special people and deserve special treatment. That’s a bunch of BS. ”
No, they only deserve the right and power of the patent they have earned. That right and power is the direction of the arrow.
Try reading the posts slower if you find yourself so confused.
I finally got a chance to review Microsoft’s cert petition last night. I see why it captured the Supreme Court’s attention. I also found the disclosure angle in the Teva amicus brief to be interesting.
Here’s a link to my post.
link to pharmapatentsblog.com
i4i has most of the litigation related documents on its website.
By the way, over here, the overall tenor of rational comment about Wikileaks and the US State Department is that the leak actually enhances the reputation of America and all its intelligent, hard-working and responsible diplomats. At least one country, the United States of America, has gained from the episode.
The supreme court judges would be corrupt if they decide to lower the standard of evidence.
The US which adopts the first to invent rational allows all forms of evidence (not just patents) to challenge the validity of a patent. An inventor does not need to file a patent in order for his invention to be protected under the rationale.
So even if the evidence is FAKE, it would still be admitted under the pathetically low standard.
Billy, one reason I did not become a kindergarten teacher is because I did not want to have to deal with people of your apparent intellectual capacity. Unfortunately, it appears that my venture into patent law has not allowed me to achieve this goal.
You need to keep in mind the arrow of protection afforded by the patent. That arrow does point in one direction (the protection of the patentee), not in the U-turn shape you want to hold it to.
She’s baaaack…
Willton boy,
you refuse to see the reason, good and logical reasons.
The patent law is not that complex IMO. It only gets complex when the infringer/thief uses diversion tactics to try shift jury’s attention away from the law & facts presented.
You obviously have no interest in helping your client protecting their IP rights. Why did you become a patent attorney? Why did you not become a kindergarten teacher?
Actually Willton, to be consistent in logic, infringement should be held with less than a preponderance.
Are you mental? How is that consistent? If infringement and invalidity require similar legal tests and similar technical expertise to facilitate understanding, then they should be treated similarly (i.e., similar evidentiary standards of proof). Why should we make it really easy for a jury to find infringement but really difficult for a jury to find invalidity? How is that consistent? Or do you not understand what “consistency” means?
The only thing your theory is consistent with is the belief that patentees are special people and deserve special treatment. That’s a bunch of BS.
You need to keep in mind the arrow of protection afforded by the patent. That arrow does point in one direction (the protection of the patentee), not in the U-turn shape you want to hold it to.
That does not make any sense. Did you actually read that before you posted it?
It truly is hard to believe that you are a patent attorney given your shaky hold on logic and your unintelligible reliance on the likes of Masnick for your patent philosophies. It’s just so highly implausible.
Really? Because based on the few incomprehensible sentences you posted above, I don’t think you should be lecturing anyone on logic.
And by the way, just because I have a Reg. No. does not mean that I must be beholden to the dogma of dopes like you and the pitch-fork carrying crowd in the PIAUSA. Patents serve a good purpose, but they shouldn’t be held to some exhalted status above all things. Patents can be misused, especially invalid ones. See RIM v. NTP.
And this explains well the evidence that if you refuse to see a reason, well then, you will not see one.
I don’t refuse to see reason. I just refuse to accept bad reasons. The complexity of patent law is a not a legitimate reason to raise the standard for invalidity while keeping the standard for infringement at a preponderance level. If you don’t agree, then you clearly have never been involved in patent litigation.
Open your eyes my friend and leave your preconceptions and dogmatic beliefs behind.
I’m the one with dogmatic beliefs? Listen to yourself! You sound like you pray to the altar of Jerome Lemelson.
“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?”
dumb question. The answer is obvious. The material under protection is different. the word “overprotection” is misleading and shows how little you know about the use and goal of seeking patent protection.
Suppose Intel changes its name to ‘PingPong’, would this name change affect their CPU sales? Not likely, as long this change does not also affect the quality of their products.
What happens if Intel loses one of its key patents for making its next generation processor? they would lose competitiveness and go bankrupt….still not convinced??
“Well, if the complexity of patents justifies a higher standard of proof for invalidity, then why do we not have a similarly high standard of proof when it comes to patent infringement?”
I thought we do. It is now much more difficult to prove infringement, especially willful infringement. If proving infringement wasn’t so difficult lawsuits could be won/lost in a matter of weeks or months not yrs.
“In short, I do not buy your complexity reason, as it is not represented in by the standard for proving infringement.”
it is, what planet are you from?
Actually Willton, to be consistent in logic, infringement should be held with less than a preponderance.
You need to keep in mind the arrow of protection afforded by the patent. That arrow does point in one direction (the protection of the patentee), not in the U-turn shape you want to hold it to.
It truly is hard to believe that you are a patent attorney given your shaky hold on logic and your unintelligible reliance on the likes of Masnick for your patent philosophies. It’s just so highly implausible.
And this explains well the evidence that if you refuse to see a reason, well then, you will not see one.
Open your eyes my friend and leave your preconceptions and dogmatic beliefs behind.
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.
I defer to IANAE’s comment.
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.
Well, if the complexity of patents justifies a higher standard of proof for invalidity, then why do we not have a similarly high standard of proof when it comes to patent infringement? Clearly, the amount of techinical expertise needed to explain to a jury whether or not a particular article or method infringes a patent claim is at least as great (if not moreso) as is necessary to prove that a patent claim was anticipated or rendered obvious by some prior art. Furthermore, the legal tests for proving infringement and invalidity are very similar, if not the same. And yet, patentees are given the gift of only having to prove infringement by a preponderance of the evidence while their patents shielded by the clear and convincing standard when it comes to invalidity. If complexity is the reason for the C&C standard, then the standard for proving infringement should be just as high. The fact that the standard for infringement is not so high leads me to believe that complexity is not a legitimate reason for the heightened standard for invalidity.
You want to know what’s really complicated? Proving an antitrust violation under the Sherman Act using the Rule of Reason standard. I’d argue that proving a Sherman Act violation is even more complicated than proving infringement of most patents, especially in light of the amount of economic experts that are typically required for such a trial. And yet, preponderance of the evidence is still the standard for antitrust violations.
In short, I do not buy your complexity reason, as it is not represented in by the standard for proving infringement.
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.
Well, the assumption appears to be an assumption for a reason: there does not appear to be a legitimate reason for backing it up.
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
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…
“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?
“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.
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.
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.
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.
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.
Well, thanks for being so helpful.
Wil, homey don’t do helpful, either.
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.
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?
“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!
“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?”
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.
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.
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?
Ping in re of 32,
That’s funny. In use even funnier.
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.
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.