Microsoft v. i4i Oral Argument – Monday, April 18

by Jason Rantanen

Tomorrow, Monday April 18th, the Supreme Court will hear oral arguments in Microsoft v. i4i, which presents the question whether proving invalidity requires clear and convincing evidence when the prior art on which the invaldity defense rests was not considered by the PTO.  The full Question Presented can be found here and prior Patently-O posts on the subject are linked below.

43 thoughts on “Microsoft v. i4i Oral Argument – Monday, April 18

  1. 43

    Reducing the standard for patent validity should only occur based on new evidence of inventorship fraud. In this case paatent retraction and reissuance to the conciever should be the norm with the joining of the injured third party. Ive got around 10000 like this but currently they try to accuse fraud against the victum. The law always works in reverse of justice. Is there an attorney in the house.

  2. 42

    Havya read the transcript yet Anonymous?

    Your question be in there – look for the hint “codification.”

  3. 40

    lowers the standard when new prior art is presented.

    and where in the statute is a bifurcated presumption presented…?

    O yeah – it’s not.

  4. 39

    I done already made my observations Sunshine and done told you about thems. O wait what was your glorious repsonse? O yeah – “Why should I read them?

    Chuckle city there bigboy.

    (Yeah, I know its been more than thirteen mintues since that post and Sunshine’s attention span wont reach, so Iza expect a full “what the sam hill” style response. And all know that Sunshine dont know how to google this blog)

  5. 38

    Where is Sunshine and his famous predictions?

    I predict the court *at least* splits the baby and lowers the standard when new prior art is presented.

    What’s your prediction, nxmbnxts?

  6. 35

    It’s hard to predict from oral argument where the Supremes will eventualy come out. But that opening portion with Hungar doesn’t bode well for Microsoft. Suggesting that you overrule judicial heavyweights like Cardozo and Rich is a very tall order for this Court to swallow. And all i4i needs are 4 Justices to agree with them, and Microsoft’s case goes down in flames (to the tune of about $300 million).

  7. 34

    It could be a typo but may be it isn’t. The written oral argument transcripts from the Supremes involving patent cases often have some odd words in them.

  8. 33

    If the Decision do ceom out in June, can we predict a nother Sunshine-less summer?

    (with or without chainsaws)

  9. 32

    Just counting noses, it looks like Scalia, Kagan and Ginsburg are clearly on the side of the Government and i4i. Breyer and Alito are in the middle. The rest of the court were silent.

    We shall see, but I predict the court will be unanimous. They will not overturn Cardozo.

  10. 30

    I’m not sure you need the permission of a pseudonymous blog commenter for such a purpose, but please feel free! (assuming that MS emerges the victor …)

  11. 29

    Thanks Ned.

    The following at the beginning of oral argument by Microsoft’s counsel may be the defining moment:

    MR. HUNGAR: Thank you, Justice Scalia, and may it please the Court:
    The Federal Circuit’s clear and convincing evidence standard ensures the enforcement of invalid patents, even though this Court recognized in KSR that invalid patents stifle rather than promote the progress of liberal arts. Under this Court’s decisions Grogan and Huddleston, the default preponderance standard should govern in all cases because section 282 does not specify a heightened standard of proof.
    And as this Court suggested in KSR, it makes no sense to have a heightened standard of proof when the relevant prior art evidence was never even considered by PTO. Under any view, it was error to require clear and convincing proof of invalidity in this case.
    JUSTICE GINSBURG: It would be hard to argue, Mr. Hungar, that it makes no sense, but it madesense to Cardozo and Judge Rich.
    MR. HUNGAR: Your Honor, Justice Cardozo was not addressing a case in which the evidence at issue had not been considered by the Patent Office. To the contrary, the Court made clear –
    JUSTICE SCALIA: Well, you can’t keep shifting horses, now. Are you going to argue for all the time, in which case, you can appeal to the general rule that we always apply, or are you going to say, oh, yes, we won’t apply it normally but only when the prior art hadn’t been considered? I mean, you — you can’t ride both horses. They’re going in different directions.
    MR. HUNGAR: Your Honor, our position and our view of the correct interpretation of the statute is that Grogan and Huddleston approach. The statute does not specify a heightened standard; therefore, preponderance, the default standard; applies.
    I was attempting to answer Justice Ginsburg’s question about the RCA case. And the RCA case didn’t address the question that was discussed in KSR, but we believe, as I said, that the — that the preponderance standard should govern across the board.
    JUSTICE SCALIA: So, you’re contradicting Cardozo?
    MR. HUNGAR: To the extent that — that Justice Cardozo was discussing a heightened standard in the limited context of priority inventions, we think that that’s not consistent with section 282, which, of course, came later. Moreover, I would note that the concerns that undergirded the Court’s heightened standard in priority of invention cases, where — those concerns were addressed to the — the problem of primarily oral testimony being offered to substantiate priority of invention claims.
    The Federal Circuit has separately addressed that issue by means of its corroboration requirement, which operates separate and independent of the clear and convincing evidence standard, so the concerns that undergirded RCA are — are completely taken care of by that as well.
    JUSTICE KAGAN: But Justice Cardozo certainly didn’t limit his holding in the way you suggest. The language of that opinion is extremely broad. And if you read that opinion, no one would gather from that opinion the kinds of limits that you’re suggesting on it.
    MR. HUNGAR: Actually, Your Honor, I agree that there is some grand language used in dictum in that case. Certainly, the holding doesn’t extend beyond
    the — what was presented before the Court. But, actually, if you read the language carefully, you’ll see again and again he refers to the fact that it’s a question of — of prior invention. He says when the defense is a prior invention, and then he quotes the heightened standard on page 7. Again, on page 8, he talks about the defense of invention by another.
    So he — and every single one of the cases that he cites there, without exception in that discussion on pages 7 to 8, is a priority of invention case, The Barbed Wire Patent case being the leading example which had explained this rationale for a heightened concern in that specific context. But you don’t have cases applying — Supreme Court cases applying the heightened standard in other contexts. And, indeed, you have many cases decided after RCA that don’t mention any heightened standard in viewing invalidity questions.
    JUSTICE GINSBURG: But just taking RCA itself, Cardozo said through all the verbal variances there runs this common core of thought and truth, that one otherwise an infringer who assails the validity of a patent bears — upon its face, bears a heavy burden of persuasion and fails unless his evidence has more than a dubious preponderance.
    MR. HUNGAR: Yes, Your Honor. And read -taken out of context, that could have broad implications, but the sentences before and after clearly make — indicate that he’s talking about priority of invention. He talks about the title of the true inventor and so forth. So — so, again, that’s what those cases said, and that’s what a fair reading of RCA says.
    But, regardless of the best reading of RCA, we — the — the question here is what did Congress do in 1952? And we know that Congress in 1952 could not possibly have understood the law to be an across-the-board clear and convincing evidence standard.
    JUSTICE GINSBURG: Then you — then you have to be saying that Judge Rich got it wrong because he does deal with the -MR.
    HUNGAR: Well, certainly — yes, Your Honor, certainly we think American Hoist is wrong, although I would note that Judge Rich, in American Hoist decision, says that the cases prior to 1952 were all over the map.
    But — but the relevant question is what would Congress have thought the state of the law was in 1952. If you think that there’s any merit at all to the judicial codification argument, it’s perfectly clear that Congress could not have thought in 1952 that the law was an across-the-board heightened standard, because case after case after case rejected the proposition that there is a heightened standard or that the presumption was unaffected when the evidence was not considered by the Patent Office.
    The — we’ve cited numerous cases in our brief at pages 34 through 36. The — and we also in the reply brief at footnote 3 reference a list of over 200 cases, some from before 1952 and some from after 1952, all recognizing that the presumption of validity was weakened or eliminated when the prior art evidence was not considered by the Patent Office. So, you just -JUSTICE
    KAGAN: Well, Mr. Hungar, it seems to me that RCA would matter, even under your view of the world, because if you think that Congress did not codify the existing state of the law as to the standard of proof and you think that Congress — that — that section 282 was essentially silent as to the standard of proof, then the question is, what do we do? And one answer to that question is we go with our prior precedent, which is RCA.

  12. 28


    Nothin wrong with “bad attitude” – I rightly get one myself at times.

    What be wrong be the lazy drive by post that be nothin but nothin.

    Smells like sunshine.

  13. 27

    it doesn’t matter save to tards who would dump huge IDSs on the office because their C&C is sooooo precious to them.

    Whatta tard yourself ya Bo_zo. If Micro$oft wins – the huge IDS dumpfest will accelarate, not diminish.

    Geesh, at least follow the issue if ya gonna post for funny blustering, else it be you the chuckles be aimed at.

    O wait, this is 6 – business as usual.

  14. 23

    To be clear, I’m just blustering because it is funny. I don’t know if MS will win this one or not and frankly I have no pony in the race save the possibility of IDS reform. Even when I start suing people myself I still won’t care. Preponderance, c&c, whatev, it doesn’t matter save to tards who would dump huge IDSs on the office because their C&C is sooooo precious to them.

  15. 22

    ping, wtvlfdt really has bad attitude it seems. We all should learn and not try to engage the fellow in substantive conversation. It is a waste of time.

  16. 21

    Well, if i4i kills it, that day will come sometime in May or June, when the opinion issues. If you’d seen the argument, you might have some doubts about the outcome. The transcript should be online by now.

  17. 20

    Mind if I use that little piece of lyrical genius in my next law review article, of course, with proper credit given.

  18. 17


    (T)oo (L)azy, (D)idnt (R)ead.

    If ya gonna be too lazy ta read teh responses, why bother with the comments to begin with?

  19. 14

    wtvlfdt, you’re back? Are you trying to immitate some metallic monstrosity menacing the mannered among us?

    I will respond politely, in hope you will listen.

    There are those among use who declare that there is a problem of the PTO issuing invalid patents, and further problem with a new business model that acquires patents for profitable licensing, usually, it is said, by aserting those invalid patents. This mantra has been so often repeated, that it is generally accepted as true. Read the FTC reports and read the transcipts of discussions among congressmen discussing the patent bill.

    In the recent case of i4i v. Microsoft, Microsoft was “sanctioned” big time for repeatedly making such arguments about i4i. Microsoft all but called i4i a troll; but in the final analysis it was Microsoft that wilfully infringed i4i’s patent and in the process drove i4i out of business.

    What we hear, and the FTC repeats the propaganda, is that patent licensing for profit somehow harms American business. It is said the trolls simply increase costs of doing business and that they must be stopped.

    What you do not hear is the other side of the story. These patents originate from inventors, from startups that have failed, and from major corporations such as AT&T who have phased out related product lines. They represent real inventions even if today they are not owned by manufacturers. But the function of the patent licensing firm is to obtain revenue from the patents. This in turn justifies the original investment in R&D and promotes further R&D — usually, not by the monopolists who do not want further competition.

    What this battle is all about is fundamental. On one side are those who see the patent system as an obstacle to business. These are established firms. On the other are the people who use the patent system to fund R&D and to protect startup businesses who compete with the established firms.

    To date, the big boys are winning the battle through ugly propaganda. But not all of us are fooled.

  20. 13

    Please stop posting.

    A lolz ditto to you wtvlfdt. Take your own medicine first and leave my chuckle providers alone.

  21. 12

    “I know that because by definition a troll has only junk patents and litigates only in the ED Texas.”

    Please stop posting.

  22. 10

    Looks like AT&T’s basic research of yesteryear is feeding the trolls of today. Check today’s Rembrandt case for the source of the patents in suit.

    And course, AT&T never developed one bit of technology. I know that because by definition a troll has only junk patents and litigates only in the ED Texas.

  23. 8

    Singing bye bye Miss Junk Patent Pie
    I drove my chevy to East Texas, saw my motion denied
    The good old trolls and their lawyers did cry
    The day … the presumption died.

  24. 7


    What 6 is saying is that the Office cannot do a job that results inthe granting of patent rights.

    It’s just too hard.


    You be talking with Dim and setting up one of those Registration System arguments?

    Your selective IDS review is just another legal fallacy waiting ta happen. Would there be any legal estoppel for infringers trying ta show invalidy over art that the Office has designated “not reviewable”? Otherwise you have engaged in rule making that affects substative rights.

    Taffas much?

  25. 6

    Because that isn’t the real basis. The real basis is that supposedly the USPTO is able to do an “adequate” job at reviewing all of the art on the face of the planet and that this is supposedly enough to warrant granting the presumption over all art everywhere because people like you arbitrarily choose to call that the PTO doing its job properly. Both are legal fallacies grounded in fancy rather than reality and the artitrary designation is just that, arbitrary, and worse, arbitrary without even glancing at what one should have determined. I’m against legal fallacies being the basis for a policy or lawl/interpretation of lawl. They demean every single person who accepts them, tellingly revealing that they are a believer in magic instead of the world around them. I’m also against lawlyers making self serving arbitrary designations.

    I find it to be a much more acceptable policy position to grant the presumption of “get yourself a higher standard that must be assailed to invalidate your patentlol” validity only over art directly considered by the PTO. And when the truckloads of IDS’s roll in, I also support tougher disclosure requirements and the ability for the PTO to decline to review all documents under certain conditions.

    The system we have now is but mere legacy nonsense that furthers legal nonsense. Although I recognize that the costs of shifting away from legacy nonsense can often be high, and may be high in this instance.

    Also, as an aside, I would support this change if for no other reason than the possibility that this change would help to force IDS practice reform.

  26. 4

    I’m a little confused about why a PTO employee is crowing about the possible end of a presumption that has its basis in the assumption that PTO employees do their jobs properly.

  27. 1

    A new empirical study suggests that a challenger’s likelihood of establishing the factual bases of invalidity is driven more by the impact of unconsidered evidence than by a shift to a preponderance of the evidence standard and that a shift to a preponderance of the evidence standard will not significantly affect a validity challenger’s ability to establish the factual bases of invalidity to a jury.

    link to

    link to

Comments are closed.