For the past several decades, an accused infringer wanting to challenge a patent's validity in court has been required to provide clear-and-convincing evidence of invalidity. In Microsoft v. i4i, the Supreme Court is considering whether the standard should be lowered to a preponderance-of-the-evidence – especially in situations where the invalidity argument was not considered by the patent examiner during the original prosecution of the patent application.
a) From a policy perspective, how should the Supreme Court rule?
b) Does it make a difference that third-parties can request reexamination of an issued patent?
Better the devil you know than the devil you don’t know.
How about something similar to incontestability in trademark law? For a period of time at the beginning of the patent term, the standard is preponderance of the evidence. After that period of time and for the remainder of the patent term, the standard is clear and convincing evidence. This would give the party alleging invalidity an incentive to act earlier in the patent term to challenge validity, and it would give the patent holder a heightened expectation of validity as the patent matures beyond the “preponderance of the evidence” period.
I see two arguments against this. First, setting such a period of time within the patent term is probably a more appropriate action for the legislature, not the judiciary. Second, an infringement defendant alleging invalidity as a defense may not have known about the plaintiff’s patent until the infringement suit is filed. This gives the plaintiff an incentive to hold off on filing the suit until after the “preponderance of the evidence” period expires, putting the defendant right back in the CCE situation. How is this situation dealt with in trademark law, and would it work in patent law?
Just a hypothetical.
Or in 6’s case, the unlimited ability to display stupidity.
*Forget about stupidity, discover your ability.
I’m against Microsoft on this one. It seems to me that a SCOTUS ruling in Microsoft’s favor 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 patents post-issuance; and (3) it could give the FTC more leverage in ending reverse-payment settlement agreements. The third-party factor doesn’t mitigate these problems; in fact, I think that the interference of third parties who are unaccountable could potentially make harassment situations even worse. 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.
Hhhmmm,
Maybe this be just a clever cover-up for Cy, cause Cy really be NAL…
Or maybe Iza just fightin off an infection of sockpuppet-conspiracy-itis still…
How did I miss this thread? – Cy accusin yet another of bein Noise.
Look out Cy, ya just passed 6 on the looney scale. And at least we’ve identifies 6’s psychosis as stemmin from his mommy’s dominatrix habits.
…Nah, the powers O my observation are bein confirmed all over the place.
Hey, what happened to schooled boy? Iza need some chuckles this mornin from him and he be playin hookey.
6, er um, Boss 12, we done already ripped ya a new one for tryin to float one word answers to a law school exam question.
Flippin sides and takin a pro-patent C&C angle aint goin to mask the charade all that well.
oooh, or maybe iza be infected with the sockpuppet-conspiracy-itis disease and only be seeing the 6 in Boss12…
Answers:
a) Clear and convincing.
b) No.
Um…like the style of your writing.*_*
Lobo Burgers. High protein. Low fat. McDonald’s is howling at the moon.
Best answer (er, um, observation) so far…?
Mine. Naturally. And this be a free one.
generics entrance to the market in pharmacuticles should be allowed only in sufficient quantity to meet the demand by indegents unable to pay.A drug companies patent should be valid the full term and free market competition should return after its experation reguarding improvments to existing drugs.
Meanwhile, in New York, Rule 11 grows some tiny tiny tiny teeth:
link to nytimes.com
In numerous opinions, judges have accused lawyers of processing shoddy or even fabricated paperwork in foreclosure actions when representing the banks.
Judge Arthur M. Schack of New York State Supreme Court in Brooklyn has taken aim at an upstate lawyer, Steven J. Baum, referring to one filing as “incredible, outrageous, ludicrous and disingenuous.”
But New York judges are also trying to take the lead in fixing the mortgage mess by leaning on the lawyers. In November, a judge ordered Mr. Baum’s firm to pay nearly $20,000 in fines and costs related to papers that he said contained numerous “falsities.” The judge, Scott Fairgrieve of Nassau County District Court, wrote that “swearing to false statements reflects poorly on the profession as a whole.”
Wow, a whole $20,000!!!!! Dang.
Just an observation:
a) no real wrong answer, as long as you have reasons for the policy chosen (Not a great exam question here).
b) This is the trick part of the question, cause it ties in what Congress has done thought about the level of proof needed in order to correct a patent granted in error. The fact that this is outside of litigation is a red herring. Congress simply did not want to be bothered with claims against its finished work by anything short of something that would be clear and convincing – patents and published applications. We be done down this road before with the Sunshine type of “well, I said I saw something published for five minutes on the internetz” wacky response.
Paul Morgan gets a C for not reading the question (afaik, most law schools don’t give out Ds and Fs these days). Part b of the question is how the availability of third-party requests reexamination should affect the Supreme Court’s decision, not the other way around.
Paulie dont come near as low as the horsemen.
Nice quote Paul. This stuff is not rocket science, is it?
But thanks to that last contributer, for throwing new light on what “taking out of context” means to some people.
Every time one recites verbatim a small part of a larger written work, one inevitably removes the selected string of words from its surrounding “context”. So, each time anybody (like a minister of religion, for example) recites a few words from a book, they “misrepresent” and have “sunk to a new low” in support of their “agenda”? What is the world coming to? Where will it all end?
Paul F. Morgan,
You do realize that it is unethical at best to misrepresent the law? The quote you present is taken out of context as you have placed it here, as the subject of the quoted discussion was not on the issue of patents granted improvidently or even questionably. Such a quote would have been more apt on a discussion of False Marking, than what you imply here.
You have sunk to a new low in the support of your agenda.
IANE, I and others may not even agree with the following quote, but its a nice old Sup. Ct. quote on the balancing of public interests here that you are discussing, cut from a brief in the above blog:
POPE MANUFACTURING CO. V. GORMULLY, 144 U.S. 224, 234(1892) (“IT IS AS IMPORTANT TO THE PUBLIC THAT COMPETITION SHOULD NOT BE REPRESSED BY WORTHLESS PATENTS, AS THAT THE PATENTEE OF A REALLY VALUABLE INVENTION SHOULD BE PROTECTED IN HIS MONOPOLY.”). [Caps curtesy of MS or Adobe]
But this statement adds nothing to the real policy question: whether it is better to allow one obvious patent survive than hold invalid 1, 10, 50 or even 100 non obvious patents? Where does one place the filter and why? That is the question on the table.
I don’t think that’s really the question. Nobody wants a system that will save one valid patent at the expense of upholding 50 invalid patents, and nobody wants a system that will invalidate 50 good patents just to catch all the invalid ones.
Also, nobody really wants a criminal justice system that lets ten guilty men go free. Ideally, you’d want to set the innocent men free and also get as many of the guilty in jail as possible. It’s just that people (and the Constitution) are really sensitive about putting innocent people in jail.
What should the test be? I say it should be the one that maintains the most valid patents and invalidates the most invalid patents. If a patent is probably valid, uphold it. If a patent is probably invalid, nuke it from orbit.
If a judge can’t handle the “noise” of a balance of probabilities standard, he has no business being a judge. Even though we cleverly avoid that problem in patent cases, it’s probably going to arise sooner or later in some other context.
IANAE, patents that are anticipated are not litigated. They are reissued.
The real problem centers on obviousness. The C&C standard was intended to place obviousness above the noise level so that the result was predictable and so that patents could be relied upon.
Stating there is no policy reason to let the patent holder keep his patent when it is obvious is a statement no serious person can disagree with. But this statement adds nothing to the real policy question: whether it is better to allow one obvious patent survive than hold invalid 1, 10, 50 or even 100 non obvious patents? Where does one place the filter and why? That is the question on the table.
Patent holders are innovators in the truest sense — they bring new inventions to the public consciousness.
Well, yes, but only if the subject matter of those patents is novel and non-obvious. If it turns out that the patent is anticipated or obvious, the patent holder is not an innovator in any sense, there is no advance in the useful arts to be promoted by that particular patent, and there is no longer any policy reason to let the patent holder keep his patent.
All that patent does is advance the sue-ful arts by creating a plaintiff where none should exist.
Gotta love this from the AIPLA brief in SEB:
“Second, and this also responds to a countervailing theme running throughout the amicus briefing, we must respect patent rights. The right to secure patents is an express power delegated to Congress through the Constitution, and respect for patent rights was a policy basis for enacting the 1952 Act and a primary reason for the establishment of the Federal Circuit. The subtext of these briefs is that the accused infringers are the innovators and the patent holders are something else — a nuisance, a hindrance to commerce, or an obstacle to “real” innovation.
That premise is faulty. Patent holders are innova-tors in the truest sense — they bring new inventions to the public consciousness. Patents are also an important class of assets in the economy. Obtaining patents is often critical for start-up companies to attract risk capital to help grow their businesses. Industry relies heavily on patent pipelines to protect products, such as new forms of pharmaceuticals and medical devices, that are offered to the consumer. By disclosing their inventions, inventors perform a valuable service in advancing the state of the art. It is unassailable that this intellectual property is worthy of protection. The patent laws should not be distorted in a way that diminishes these contributions.”
Finally! some organization stood up and called out the infringer lobby for what it is actually advocating. Bravo!
a) From a policy perspective absolutely they should adopt MS’s new standard.
b) Nah.
But D, you should post some student answers with their permission. Just so we get a feel for how warped (or not) you guys have made their poor minds.
No such determination of “advancement” is made.
I think you’ll find that it’s pretty solidly built into the definitions of anticipation and obviousness.
Author noted – comment given its due weight. That would be a weight of “nothing”
Awesome argument!
Once again, you engage in the discussion by assuming that your position is the correct one, and ignoring all else. Ned Heller’s point is on target – you do not just get to hand waive it away and turn the tables by mere proclamation.
Good afternoon, Noise! Nice of you to stop by.
“merely for”
Author noted – comment given its due weight.
That would be a weight of “nothing”
“the standard of proof is about how the courts determine whether or not a particular patent advances the useful arts”
No such determination of “advancement” is made. Try to at least stay close to the law in your prosletyzing.
“If a patent is likely to be anticipated or obvious”
Once again, you engage in the discussion by assuming that your position is the correct one, and ignoring all else. Ned Heller’s point is on target – you do not just get to hand waive it away and turn the tables by mere proclamation.
The Supremes should provide the level of securty required to fulfull the constitutional mandate.
No particular level of security is required to fulfill the constitutional mandate, which is merely for an “exclusive right”. Any exclusive right would advance the useful arts to some extent, and if a stronger right is better we could turn the useful arts up to eleven by eliminating invalidity as a defense altogether.
More importantly, the standard of proof is about how the courts determine whether or not a particular patent advances the useful arts. If a patent is likely to be anticipated or obvious, that patent does not advance the useful arts, and it should be invalidated to further the constitutional mandate.
From a policy point of view, patents are a form of property on which investments are made to advance the arts, a type of property specifically authorized by the the constitution for this purpose. The Supremes should provide the level of securty required to fulfull the constitutional mandate.
Dennis in an earlier blog post pointed us to prior Supreme Court decisions that provided the C&C standard of proof for the purpose of securing investments in mine development. Patents deserve no less.
Regarding reexaminations: no. Reexaminations are provided only for publications. Public use art cannot be considered. This would argue for a lower standard of proof for public use art if the ability to reexamine a patent had anything to do with the standard of proof to invalidate a patent.
Dennis, as you know, reexaminations do not, and never have, had a “clear and convincing evidence” requirement, so they cannot be affected by any likely decision in Microsoft v. i4i. For several other reasons reexams are far more effective percentage-wise in invalidating patent claims than litigation, for their limited subject matter of only patents and publications. HOWEVER, unless and until the PTO can operate reexaminations with their legislatively-intended statutory “special dispatch” reexaminations are not going to have that much effect on patent litigation, because even parties, much less third parties, do not often enough start effective reexaminations years before lawsuits are filed on patents, so that they can be concluded before substantial litigation costs and trials. [Excepting those judges who will grant long litigation stays for reexaminations.]
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