Summary of Microsoft v. i4i Oral Argument

Guest Post by Megan M. La Belle, Catholic University Columbus School of Law

Professor La Belle attended the oral argument in Microsoft v. i4i Limited Partnership this morning and was kind enough to prepare this summary for Patently-O.

Today, the United States Supreme Court heard oral argument in Microsoft Corporation v. i4i Limited Partnership, in which Microsoft has challenged the Federal Circuit’s clear and convincing evidence standard for overcoming the presumption of patent validity set forth in 35 U.S.C. § 282.  The argument was held before a full courtroom, with former Deputy Solicitor General Thomas G. Hungar representing Microsoft, former Solicitor General Seth P. Waxman representing i4i, and Deputy Solicitor General Malcolm Stuart arguing as amicus curiae on behalf of the United States in support of i4i.

Mr. Hungar began his argument by referring to the Court’s statement in KSR Int’l Co. v. Teleflex, Inc. that the presumption of validity “seems much diminished” where, as here, the prior art was not considered by the U.S. Patent & Trademark Office.  Justice Scalia quickly responded, asking whether Microsoft was arguing that a preponderance of the evidence standard should apply across the board, or only when the prior art was not considered by the USPTO.  Mr. Hungar explained that Microsoft’s position is that the more relaxed standard should apply in all cases where patent validity is challenged.

The Justices then asked a series of questions about the state of the law and congressional intent in 1952 when § 282 was enacted, since the statute itself is silent as to the evidentiary standard.  The Court focused on Radio Corporation of America (RCA) v. Radio Eng’g Labs., Inc., 293 U.S. 1 (1934), in which Justice Cardozo made some broad statements about the presumption of patent validity, including that the challenger “bears a heavy burden of persuasion” and that the presumption cannot be overcome “except by clear and cogent evidence.”  Relying on RCA, i4i argued that Congress intended to codify the existing presumption of patent validity when it enacted § 282, and therefore clear and convincing evidence is the correct standard.  Microsoft countered that the law regarding the presumption of validity was “all over the map” in 1952, and that some courts did not recognize any presumption of validity, much less a presumption that could only be overcome by clear and convincing evidence.  Microsoft further argued that the quoted language from RCA was mere dicta, and that the case was distinguishable because RCA involved a question of priority of invention, not validity. 

In addition to arguing that Congress intended to codify the clear and convincing standard, counsel for both i4i and the United States emphasized Congress’s acquiescence in that standard over the years.  They contended that Congress is well aware of the Federal Circuit’s clear and convincing standard, and that Congress has been very active in the patent arena both in the past and in the present.  Yet, despite its many other proposals to reform the patent system, Congress has made no attempt to change the long-standing evidentiary standard for overcoming a presumption of validity.

Some Justices inquired about solutions other than altering the evidentiary standard.  Justices Breyer and Sotomayor wondered if perhaps the issues raised by this case could be addressed with careful jury instructions.  Justice Sotomayor suggested, for example, that a jury could be instructed that the burden of proof to overcome the presumption of validity is clear and convincing evidence, but that the challenger’s burden is more easily satisfied with respect to evidence of prior art that was not considered by the USPTO.  Microsoft responded that such a jury instruction could be confusing for the jury, as the Federal Circuit held in an earlier case between Microsoft and z4 Technologies.

Finally, the Court returned to the question as to why the presumption of validity should apply when the prior art was not considered by the USPTO.  In response to Justice Ginsburg’s request to justify such a rule, Mr. Waxman offered four reasons.  First, a validity challenge is a “collateral attack” on a governmental decision to issue a patent.  Second, if a patent is erroneously invalidated, the harm to the patent owner is significant because of the preclusive effect such a determination has under Blonder Tongue v. University of Illinois, 402 U.S. 313 (1971).  Third, i4i argued that such a presumption is warranted because patent owners, investors, and licensees rely on patents once they are issued.  Finally, i4i claimed that it is “far from black and white what the PTO does or doesn’t consider,” and that rejecting the long-standing clear and convincing standard would marginalize the agency.  In response, Justice Breyer stated that i4i’s reasons “are all along the lines of how important patents are and what a disaster [it is when] patents are invalidated.”  Justice Breyer then commented that, in today’s world, perhaps a “worse disaster for the country is to have protection given to things that don’t deserve it….”

The Court is expected to issue its decision before the end of June 2011.  Chief Justice Roberts recused himself, so the case will be decided by the remaining eight justices.

Megan M. La Belle is an assistant professor at the Catholic University of America, Columbus School of Law, where she teaches and researches in the area of intellectual property law and procedure.  Her article "Patent Litigation, Personal Jurisdiction, and the Public Good" recently appeared in the George Mason Law Review.

Update: A copy of the rough transcript can now be downloaded here: Download Microsofti4iOralArgument

126 thoughts on “Summary of Microsoft v. i4i Oral Argument

  1. 126

    It looks to me like i4i’s got the upper hand in this patent litigation, and not only because of the U.S. arguing as amicus on its behalf. I’ve always thought i4i had the better arguments, not to mention the legal precedent and reliance issues on its side.

  2. 125

    One of the problems I see here is allowing previous art considered as a reason for invalidation is due to the potential of file insertion at the Uspto.Did microsoft raise this initally or later. The other problem is I was the conciever with bill gates of the item in question and others theres telephone conversations both ways in the time period. The other issue is did bill file and if so inventorship dispute potential has not been considered. Likley this company did the development question is was there any thing unique accomplished or are they looking for a chunk of change that should be mine.

  3. 124

    Me quoting me:

    by the by – still no intelligent response.

    Now I know what must be going through the good readers’ heads – What baseless comment will wtvlfdt come up with? Why dont wtvlfdt just write something O substance?

    What is the advice of wtvlfdt if the Court come back with C&C only for art “considered” by the Office?

  4. 123

    lolz – the one thorin around improper behavior children is the one callin someone else creepy

    Project much?

    by the by – still no intelligent response.

  5. 120

    I guess it’s better that you’re stalking me on this site than your usual creepy hanging around the elementary school playgrounds.

    But I’m really not your type. I don’t think anybody’s your type. Probably why you’re here days letter begging for people to respond to you.

    Maybe you should try or something. Or did they screen you out?

  6. 119

    by the by – chowder will not post anything remotely intelligent in response here.

    1,000 points for the best answer why (Iza already know, but Homey dont do answers).

  7. 118

    Well well well – chowder done do his usual disappearin act.

    Cmon chowder, or is this yet another instance where ya simply dont provide anything O substance? (as typical for you)

    Iza just curious (and really dont mind ya providing the chuckles), but why exactly do you post?

  8. 117

    “6, FYI, when there is a trust relationship, confidential relationship or a contractual relation, one can be liable for misappropriation of an idea.”

    Still not stealing.

    And under which lawls does this “trust relationship” or “confidential relationship” stuff arise from other than in a client/attorney relationship?

    “”.edu?” so, by expanding, it Facebook has lost its allure?”

    In many ways yes, especially to the first adopters. This has been widely reported on it isn’t some big secrit. But to give you an example irl, my aunt wants to be my friend on facebook. Still haven’t approved her a year later although I went ahead and made the decision to keep everything clean on there so I can friend my entire family since they all started popping up. So I went ahead and friended most other old people I just still haven’t her. Before that it was anything goes on there with a bunch of young people I knew and not where every corporate arsehat could check up on you. For go d’s sakes, you have people at work getting friend requests from their boss.

  9. 116

    6, FYI, when there is a trust relationship, confidential relationship or a contractual relation, one can be liable for misappropriation of an idea.

    With this in mind, go see the Social Network one more time and observe what happened and see whether Mark Z. had such a relationship with the twins.

    “.edu?” so, by expanding, it Facebook has lost its allure?

  10. 115

    Lolz atcha there ya pompASS one.

    Pray tell what be the “competent” path if the Court comes back with the heightened standard ONLY for those references “considered” (as that term is currently understood)?

    A for your comment in error – my action plan is decidely notregardless of what SCOTUS decides“. Where on this earth would you get such an idea? Are you fully diving into the Med trading program of certain posters here? Thoughthis does fit into your rather pompASS ASSumptions of whether or not I practice compentently (still very much unwarranted, I add).

    Cmon chowder, or is this yet another instance where ya simply dont provide anything O substance? (as typical for you)

  11. 114

    This is an important topic. Your rantings on this topic are not important.

    We already know that your plan is to file 1,000’s of references in an IDS regardless of what SCOTUS decides.

    The rest of us competent practitioners will continue to practice competently.

  12. 113

    ohhh, so you’re a communist. You realize that’s a political monopoly too, right?

    Again, eliminating the patents system is pro-monopoly. The little players don’t get a foot in the door with MS and IBM without them.

    It’s amazing that your’e that blind. You need to get off of whatever you’re reading and do some business case studies. A little perspective would make you a lot smarter.

  13. 112

    Lolz – the what me worry kid chimes in.

    No surprise that “competency” means ignoring reality from wtvlfdt.

    Or is this thread also not appropriate to discuss the subject here (maybe “more important” stuff should be under discussion…)

  14. 111

    “Unfortunately there has been a long history of over-reaction to routine and relatively unimportant events.”

    I would think that by now you’d be used to the “the sky is falling!!!! run for your lives!!!!” cries of the chicken little crowd here at Patently-O.

    Regardless of what SCOTUS actually rules, or says, you’re going to here those cries here from the usual suspects. The competent among us will, as you suggest Paul, keep calm and carry on.

  15. 110

    More straw and platitudes Paulie – Ya havent addressed my specific points here and ya still be wrong in your understanding O business and “Value“.

    Ignoring reality just aint the same as explaining reality straightforwardly and objectively.

    It alwasy be bad advice to ignore reality.

  16. 109

    Ronnie K,

    The conflation is on purpose – that just be Maxi’s style.

    societies would necessarily reap net benefits by abolishing patents altogether

    Ah yes, now here be the mantra of the anti-software patent people – (the NIMBY’s just aint realized this yet – as I point out ta 6, patent law aint segregated that way).

  17. 108

    software authors

    absolutely clueless (and still tryin to make friends over at slashdot).

  18. 107


    just an observation – the reference to grown up arts and kiddie arts dont work for Sunshine (the law just aint segregated by art field).

    It dont work for you either.

    Taking something that dont work for someone else and sharin those Meds aint a good idea.

  19. 106

    Above, a long way above, Ron Katznelson invites me to write how Europe balances the error of revoking a good claim with the error of upholding a bad claim. I am not an economist and I have not read the tutorial by Justice Harlan, and my practice is not serving garage inventors or start-up companies. What I do is serve manufacturers. A patent portfolio of their own is vital. Clearance from the patents of their competitors is even more vital. I’m interested in the positive effect of innovation on gainful employment, the more employees the better.

    Ron seems to think that C+C for proving invalidity is justified because revoking a valid claim does more harm to society than upholding a bad claim. Based on my client base, I happen to think the opposite. Bad patents are a restrint on innovation and employment.

    It is my perception that C+C in patent litigation in the USA is needed, primarily to circumvent revocation on the spin of a coin. I can only say, come to the EPO, or Germany, The Netherlands or the UK, sit through some revocation actions, and ask yourself whether application of a preponderance standard is nothing more than the spin of a coin.

    Ron, we do (of course) have a presumption of validity. The burden of proving invalidity rests with the petitioner. Likewise, the burden of proving infringement rests with the petitioner.

  20. 105

    Unfortunately there has been a long history of over-reaction to routine and relatively unimportant events.

    KSR provides an excellent example. The law relating to obviousness has not changed much over the past 200 years, and is similar in its essentials in the US, the UK and the EPO Appeal Boards. It is extraordinary how much agreement there is on particular issues over that span of time and in the various national jurisdictions. Recently the EPO Enlarged Appeal Board cited the Red Dove case in Germany to show that essentially the same standards apply in German national law. In KSR the Supremes repeated a number of points of black-letter law and observed that the law ought to be applied with flexibility and common sense.

    What was the reaction? From the profession, the earth had fallen in. From the USPTO an instant re-writing of the rule book to take account of the well-known platitudes restated in KSR, coupled with an instant and catastrophic fall-off in the allowance rate. The question arises: if the rule book had to be re-written to require the use of common sense in examination, what were the examiners doing before? And all this from a decision of a court that knew well that it was not expert in IP law and was concerned to adhere to established principles and make a conservative and minimalist decision.

    As a profession it is our duty to explain reality straightforwardly and objectively and not promote groundless fear and concern. The damages that can arise from unfounded perceptions can be enormous and disproportionate. The 1940 poster that was fortunately never needed said: “Keep calm and carry on.” Not bad advice, really.

  21. 104

    Apparently, you have no clue as to how standards of proof are set in American law. Focus on adjudication errors only. Read Justice Harlan’s tutorial; it would help you understand our system. You will understand that it is the risk of errors to the litigants that counts – not some indeterminate harm due to “toxic combination of unwarranted uncontrolled unrestrained patent monopolies.” Focus on errors on both sides Max. How would you compare the harm you identify with that of making errors that invalidate perfectly good patents? Errors are always made. If errors of upholding bad patents are more harmful to society than errors of invalidating perfectly good patents, societies would necessarily reap net benefits by abolishing patents altogether. Why do we not see such systems? Some people in your neck of the woods (Netherland) thought so in 1869 only to realize they were wrong, restoring the patent law in 1912. Does this give you a clue Max?

    BTW Max, since you know about European patent law, do you know what British patent law holds regarding the burden of proof for invalidating patents? Perhaps you think it is gobbledegook also? Please enlighten us how German law works when it comes to a presumption of validity, but please do not conflate the legal standards with patent office examination quality.

  22. 103

    “The reality is that KSR has resulted in a requiremetn for either unexpeted results (i.e., a dicovery) or a new element or combination of elements that could not have been achieved by a PHOSITA at the time the invention was made (i.e., extraordinary skill AKA flash of genius)”

    Only in the kiddie arts. 🙁 Sorry for those folks.

  23. 102

    Just fyi Ned you cannot “take” an “idea”. Ideas are immaterial. Until you can start to use proper terminology to describe what you are talking about you will never understand what is under discussion.

    “knowing that it was patented by i4i”

    Well if they knew without a shadow of a doubt that i4i patented an idea then they know that such a patent is invalid under 101 and should not give infringing it even a bit of pause.

    “When Microsoft did that, it made no difference whether i4i had a better product or not. I can only hope that you can understand why this is true.”

    Orly? So if i4i had a product better than word then you believe that it would not have made a difference? Somehow, based strictly on the sales of word, I doubt that. Unless, of course, i4i is as incompetent business wise as I have already alleged. Which, if you believe this to be true, then thanks for supporting my position.

    “An essential purpose of the patent system is to protect inventors ”

    Yeah I know, not software authors. Shame isn’t it that MS wouldn’t go ahead and pull the plug on the whole thing. Several million dollars and it still isn’t worth it to them to end the charade.

    “An essential purpose of the patent system is to protect inventors developing new products from their competitors doing exactly this.”

    Presuming that you were simply mistaken about what i4i is, and thought them an inventor rather than a simple software author, I would agree with you. But since that blatantly isn’t the case here idk what you’re trying to get at.

    “To call the intended beneficiary of the patent system a troll is, to put it mildly, a travesty to the extent that a patent system is both good in concept, and authorized by the law.”

    You said it yourself Ned, the intended beneficiary is inventors, not software authors.

    “I suppose you saw The Social Network and sided entirely with Mark Zurkerberg on the basis that he was a better programmer than the Winklevosses.”

    Actually I saw only the first 30 min or so of it before I went to see a movie I thought I’d like better. I don’t really recall having “sided” with anyone in that dispute they were having. I think the one guy, zuckerman and his partnerdude that gave him some money to help get the thing off the ground made the company. The Winkletards, so far as I could see (in the movie and irl) did not even try to file any bogus software patents and certainly there was no copyright issues that I could tell were on display. Therefore, I side with nobody as there is no legal issue. The winkletards are just some whiny nobodies that couldn’t get their site to grow like hundreds of others that tried and who have apparently persuaded zman to give them some money out of his big ol’ heart.

    Keep in mind Ned, facebook was not the first site of its kind. It took off precisely because it was tightly controlled to the college atmosphere (had to have a .edu email to use it) and established a huge base because, gasp, WOMEN would use it en masse because it wasn’t filled with gimmicks and tomfoolery like hot or not or friendster etc. It allowed itself to grow to huge proportions before implementing the nonsense that you see on there today. Also it had a catchy name. I have first hand knowledge, I was there in the formative years. I was much more impressed with the old school facebook than the new school facebook. I probably wouldn’t even join now. Many people I know deleted their facebook account out of disgust when the new shinanigans first started.

    Facebook is in a bit of a bind, it needs to get more gimicky in order to grow and prosper, but it draws and keeps people because they like what they signed up for. The newer generation is somewhat ruining it through liking just nonsensical sht they “ugrade” facebook with. That’s right, you heard me, GT FO my lawn you stu pid kids!

    But like I said, I never saw the whole movie. All I know is that, at least fictionally, two more nerds got some haw t as s. And that’s cool, because there were plenty that didn’t get any in my school, and I didn’t get nearly enough. I totally should have been a business major. Good go d it is so easy meeting and picking up girls in classes that aren’t so technical that there are only 3 girls TOPS in the whole class.

  24. 100

    I have a feeling that in the real world patentees and licensees will continue to negotiate

    Nice straw there Paulie.

    But a big “so what?” to your feeling. It don’t change the topic under discussion and sure as shht dont change your flagrant error concerning the reality of perceptions and the impact to “Value.”

    Everything I posted above still holds true.

    Now you add to your fallacy with “On the whole, the good patents do not come before the courts

    Wake up son.

    As for “It is best not to get too excited” – yeah I noticed your membership pin in teh “What, me worry?” club. But for the rest O us that still deal with real world clients and their real world concerns, we need to stay on our toes.

  25. 99


    I have a feeling that in the real world patentees and licensees will continue to negotiate. They will figure out the practical and commercial value of the patented technology. Licensees will perform due dilligence and if there are weaknesses in the patent, then this will be pointed out. Then they will sit down and work out a royalty rate. The presumption of validity may come into this, but I suspect not so much.

    Law in the US is given great respect. On the whole, the good patents do not come before the courts, and for that reason their practical commercial significance will remain unafected. On the whole, the patents which are litigated fall into the KSR/Bilski category (why was this ever litigated?) and if the judges are not alert to this they may gain a false impression of how the patented system really works. But innovative patentees and their licensees/customers will see things much as before. Life will go on. Post-KSR the USPTO continues to grant patents. It is best not to get too excited.

  26. 98

    CAFC are the ones who ought to be helping the honest burghers of the jury, with an Approach that manages obviousness in an orderly way.

    Um they do – it be called C&C.

  27. 97


    Conflate much?

    Why ya be bringing the C&C into the examiner’s realm? No one even suggested such.

    As for “PTO Examiners are more competent“, let me pointcha to the amici briefs and the oral arguments, which done lifted my observations from this here mere blog comment sections. Look for such keywords and phrases as agency deference, expert opinion, reason for the Office and the like.

    Geesh, do I really gotta hold your hand on this stuff?

    As for “very few issued patents that get litigated have their validity tested to a higher standard of competence“, ya really be sounding like Dim and his call for a registration only system (if the Office work be so discounted, it aint worth the Biiillions – pinkie to corner of mouth – that we be spending on it).

    Just an observation.

  28. 96

    Ned, every time you post just at the moment, you astound me. Now you write:

    “virtually every patent is obvious without the C & C standard”

    to which I say that it is unconscionable of posters here to tell me that the capital of hindsight land is the EPO, because of its Problem and Solution Approach to the examination of obviousness. Why, EPO-PSA is so simple, even a jury could get the hang of it, after a few minutes of tuition, and then they would be finding claims not invalid (on the preponderance) at least as often as they find them obvious. Not sure about SCOTUS or the CAFC though. And yet SCOTUS and the CAFC are the ones who ought to be helping the honest burghers of the jury, with an Approach that manages obviousness in an orderly way.

  29. 95

    Experience, Max, with juries and judges has shown that virtually every patent is obvious without the C & C standard. It got to be a really sick joke at the time. The 8th Circuit, for example, had a very bad reputation.

    MS wants us to return to that era — because it appears not only to have no interest in a patent system, in fact, it seems hostile to the whole concept.

  30. 94

    Ned just wrote “the clear and convincing standard is one of the most important bulwarks against holding patents invalid based upon whim and coin tosses”.

    Does that mean that PTO Examiners are striking down worthy applications on a whim or the toss of a coin? Should they also be stopped from issuing objections unless they have C+C basis?

    Or does it mean that PTO Examiners are more competent to examine obviousness than those who examine obviousness when an issued patent gets litigated? Shouldn’t it be the other way around, that the very few issued patents that get litigated have their validity tested to a higher standard of competence than every one of the million apps in the PTO?

  31. 93

    Careful there Ned-O-gram,

    Ya run the risk of saying something like “A strong patent system is better than a weak patent system” and thus might be labelled “fluffy” by Sunshine.

    O course, no one has yet ta provide a reasonable argument that a weak patent system be preferable (aside from the cra_zy anti-patent folks, which by definition aint reasonable).

  32. 92


    Once upon a time in the United States, the patent system was foundering because of an unrealistically low standard for obviousness that was being employed by the courts, primarily in certain circuits. Forum shopping was rampant.

    The resulting decline in investment in new R&D and startups was palpable. Congress decided to act because it needed to. It created the Federal Circuit not only to stop form shopping, but to strengthen the patent system by keeping patent cases away from the crazier circuits.

    This case recalls some of those crazier cases that spoke of reducing or eliminating the presumption of validity when prior art was not before the patent office. As a result, the patent system did not function in the crazy circuits.

    What we have here today is a case that is actually very important because history has told us that the clear and convincing standard is one of the most important bulwarks against holding patents invalid based upon whim and coin tosses. We can expect that if Microsoft wins his case, the patent system will have suffered severely.

  33. 91

    That said, the most vital patents are those that protect drugs.

    Lolz Ned, dontcha know that the most vital patent be the one immediately infront of ya that be your client’s? No matta the subject, that be the “most vital” one.

  34. 90

    Max, the American patent attorney you were dealing with was not being honest either with himself or with this client.

    As to the insane world of banksters, you might actually be surprised that some of them, perhaps the ones that actually make money, actually inquire as the new the validity (and scope) of the patents protecting a new product before they invest.

    That said, the most vital patents are those that protect drugs. If one of these patents were invalidated by an European opposition, I can fully understand the dismay of the inside counsel.

  35. 89


    You seriously misunderstand the reality of business.

    The value of patents will not suddenly and severely be reduced whatever decision the Supremes make


    “Value” is not a hard or constant thing. “Value” is intricately tied to perception and your wanting to make it a purely “objective reality” thingiee is in fact quite unrealistic.

    Your characterization of the actual reality as “scaremongering” is simply based on your false premise of “value” as divorced from the true understanding of that term in a business sense.

    In essence, your view would hold that there should be no such thing as market crashes because they are “irrational.” Sorry, but reality is “irrational” in this regard and it is you that be divorced from reality here.

    Just telling it to ya all honestly and straightforwardly like.

  36. 88

    6, I think you have a basic misunderstanding of what the patent system is all about. i4i did not fail because Microsoft wrote better code, but because Microsoft took the idea, knowing that it was patented by i4i, and incorporated it into Microsoft Word. When Microsoft did that, it made no difference whether i4i had a better product or not. I can only hope that you can understand why this is true.

    An essential purpose of the patent system is to protect inventors developing new products from their competitors doing exactly this. To call the intended beneficiary of the patent system a troll is, to put it mildly, a travesty to the extent that a patent system is both good in concept, and authorized by the law.

    I suppose you saw The Social Network and sided entirely with Mark Zurkerberg on the basis that he was a better programmer than the Winklevosses.

  37. 87

    EG makes an interesting point.

    However, one of the major themes in Michael Chrichton’s excellent novel Airframe is the disconnect between objective reality and the perceptions of the media. Since he wrote his novel, the disconnect has if anything become even more severe.

    As attorneys it is our job to deal with objective reality and tell it honnestly and straightforwardly to those concerned, including those in the finance world. The value of patents will not suddenly and severely be reduced whatever decision the Supremes make, and they will neither be much easier nor much more difficult to enforce than before. Scaremongering may be a tool for bringing in work, but it should not be resorted to. As Lincoln memorably said: “There will still be business enough.”

  38. 86

    Max, my experience is that Examiners are ignoring secondary considerations. No evidence regarding them seems to be good enough for overcoming the rejections without appealing. I’m not sure about the BPAI. As for the CAFC, go read the recent Tokai decision, and tell me how much good their evidence of commercial success and copying by others did them. Also recognize that at least one claim elements was entirely absent from the prior art, but the CAFC said it was still obvious because the results were predictable and it was within the skill of a PHOSITA to create it. The reality is that KSR has resulted in a requiremetn for either unexpeted results (i.e., a dicovery) or a new element or combination of elements that could not have been achieved by a PHOSITA at the time the invention was made (i.e., extraordinary skill AKA flash of genius). That is an extremely difficult burden to carry in the predictable arts, resulting in many, probably most, applicants at least narrowing the claims much more than should be necessary to obtain allowance (i.e., worthy patents not being granted).

  39. 85

    they demonstrate a lesser species within the genus. The beaten company who now no longer has any business because another company wrote a few lines of code suing in order to… um, supposedly rebuild their once great empire of 100 employees which it apparently took to write cra ppy code.

    Utterly clueless.

    The tinge of a wannabe rejected by the folks at slashdot despearately wanting ta belong to some posse.

    The clattering of hooves echo in the air.

  40. 84


    I won’t argue with you that the world of finance (e.g., banks and stock market) can be “insane” at times. But the U.S. has some fairly stringent securities laws that can cause trouble if the value of a significant asset changes (for example, as a result of a court decision), but isn’t duly noted as such in the company’s year end report. We went through a particularly trying time back during the Y2K scare where failure to account for potential Y2K issues might be considered a securities law problem.

    Again, my point is about the impact of the perception, not the reality. And perception often rules the world of finance (e.g., stock market) on assets (like patents) that the finance world really doesn’t understand what the law (standard for patent validity) really means and only sees that the standard has been diminished, thus, by implication, diminishing the value of the asset associated with that diminished standard.

  41. 83

    Well Ned, ordinarily i4i would get a pass as not being a true troll, but they demonstrate a lesser species within the genus. The beaten company who now no longer has any business because another company wrote a few lines of code suing in order to… um, supposedly rebuild their once great empire of 100 employees which it apparently took to write cra ppy code. Mhmmm. Right. Newsflash, if anyone wanted to buy their softwares then they’d still be in business. But nobody does, because a. their softwares were inferior to another product and b. because they don’t know how to make a softwares business in this day and age. In other words they’re suing MS on a patent that most corps would simply try to invalidate as being a software patent, except MS loves software patents so they won’t raise the issue, so that they can have another bite at the business apple they just got through failing at.

    Sure that isn’t the worst species of troll out there, but a troll’s a troll’s a troll.

  42. 82

    Maxi – you assume the premise you need to prove in your “to something more like their real value“.

    Nowhere is this ASSumption supported or warranted.

  43. 81

    Reminds me, EG, of the reaction of a US patent attorney to a patent belonging to his company getting revoked by an EPO Board of Appeal, at the end of opposition proceedings. Dannnitt, he said, don’t these judges realise that that patent was an important asset of the company? For him, that was the conclusive and unassailable argument, whether or not the patent should survive the assault on its validity.

    For me it was a glimpse into an insane world of the banksters, who can put a price on anything but have no idea what in the world is of value.

    If patent portfolios are re-valued, to something more like their real value, EG, so what? Is that not to be welcomed, as a healthy shift towards reality?

  44. 80

    The issue of what the standard is for patent validity goes beyond litigation. In particular, the business community considers patents to be assets. If you tell the business community that the standard for invalidating patents has been lowered, the perception is that the value of the asset (the patent) has also been lowered. That perception can affect, for example, due diligence statements, year end reports, and certainly the stock market value of the business that owns those patents, to name a few. Again, the perception carried by a change in the validity standard may be the most significant impact of this decision. Unfortunately, that impact usually doesn’t get into the SCOTUS decision equation.

  45. 79

    Patents are a legacy system that barely has meaning today

    lolz atcha – slashdot much?

  46. 78

    I can think of 280 MIIILLION (with pinke in mouth) reasons why this decision aint no storm in a tea cup.

  47. 76

    Justice Breyer mischaracterized the situation as if lowering the bar would only affect a subset of patents that would be invalidated with the lower bar. It is dunder head thinking at its best, which is often the case with J. Breyer. (He should have gone into the personal grooming care profession.)

  48. 75

    But Paul, I had thought the whole point was the jury instructions.

    In “the real world” of real jury members, what is the difference between “Find invalid only if you are clear and convinced” and “Find invalid as soon as you think it more likely than not”. In how many cases do you think that would make “a material difference”?

  49. 74

    I say when the USPTO screws up, and then hides it by keeping the first Patent that is pending an Application, and then denies the second because the first one that could have been corrected wasn’t because of the players. Then I say the USPTO can not have my Cake and eat it too.
    And this is for those that tried to hide that fact, with the changing of the next. And therefore claiming it too was defective, by making it so.

  50. 73

    Although an interesting point of law, it is arguable that this is a storm in a tea cup.

    How many important precedental decisions on inventive step have turned on standard of proof? Graham v John Deere? Pavement Salvage? Sakraida? KSR?

    On what other issues would standard of proof make a material difference in the real world where plaintiffs assert patents and defendants assert invalidity or unenforceability?

    Proof is proof, and it is either there in the evidence or it is not. It is a matter of rigour and attention to detail. Standard of proof is occasionally important, but it is usually a secondary issue.

  51. 72

    pingaling those typically conversant with software patents actually know both teh law and teh tech

    Right. All that really really technical stuff that comes up during examination of software patents, like “the prior art wasn’t capable of compiling demographic data about users.”

  52. 70

    bja, I think we’d need to have a bit of a conversation as to just how “pro-monopoly” I am. If you think that I support MS being as big as it is, you’d be wrong. I think that they are very business savvy and that is why they are where they are. To be clear, there are FREE software solutions to a huge number of things that MS provides software for, and yet, people still pay for MS’s products. I actually just paid 100$ for another copy of vista just yesterday. It is their business savvy that keeps them in business and where they are. Like billie bill said, you could drop him off in Mexico naked and striped of his previous identity wait 10 years he’d be back on top again.

    There are a great many things in our corrupt system of lawls that allow these kind of corporate giants to exist and I disagree strongly with those provisions. I also do not think that relying on patents to magically solve our business problems that are really issues with other parts of lawl is a mistake. Patents are a legacy system that barely has meaning today and is long overdue for SUBSTANTIAL reformation, to the point probably of practically blowing it up and starting anew, but these are issues way outside of patent law as it is written which we discuss around here.

    And before your retar ded mind takes my comments the wrong way let me tell you explicitly that I am not against patents in general, and indeed endorse them, even if I do think that they’re hopelessly broken to serve us decently in the coming age.

  53. 69

    yet a lowering of the standard would effectively force such a requirement.

    Hence yet another O my observations – the (huge) drive for ultra bloat IDS submissions.

    As the Office is required ta review IDS submissions, if for nothin else to check off as “considered,” and given a minute to checkoff a single form, a submission of a mere 1000 pages O references would suck up the current approx evaluation time of 17 hours – and that’s just checkmarking forms.

    If this decision goes the way of only C&C for references “considered”, I be the first to be drivin massive trucks O IDS forms to the Office in order to protect my client’s current expectations O protection come litigation.

    No wonder the very government itself sought to make a powerful argument against what Micro$oft wants.

    Just an observation (and an action plan – all kind of civil obedient and all).

  54. 66

    “Because lowering the standard would open a floodgate of endless challenges based on “new art” (art not considered by the PTO) of which there is never any shortage… and would, as i4i and DOJ aptly put it, “diminsh the role of the PTO”, e.g. in sifting through the sea of cumulative art to find and apply the “best available art”. There is not requirement for the PTO to find and apply “all the available art” yet a lowering of the standard would effectively force such a requirement.

    Some folks just don’t get it.

  55. 65

    My guess is Ping defines bias as “anyone that disagrees with me.”

    My take on the whole thing is, Microsoft is on the right side of this issue, even if for the wrong reasons.

    This all ties back to the Bilski decision, in my opinion, and the sooner the standard goes back to “preponderance” where it should have been all along, the better for all of us currently suffering with should-be-invalid software patents, that patent abstract ideas and get it through the PTO just by virtue of putting the words “a computer device” or similar somewhere in the application. We need to be able to negate these bad patents without the bias against the plaintiff of “clear and convincing.”

  56. 63

    Sorry about the missing text above. What I typed, and what I thought was still there when I clicked on Send, was “The internet” (rather than “I”).

    Cy, I agree with you. What actually got sent is indeed fascinating, even bizarre.

  57. 62

    The best rejoinder is that Congress has recognized the problem of invalid patents and has moved to fix the problem

    Thank Ned-o-gram – this be just one O my observations re the fact that Congress sought ta provide a fix that required inherently only those things that meet the C&C level.

  58. 61

    Renee, you are wrong in the area of software


    Geesh – ya let one anti-software-patent-nik around and they breed like flies.

    Tell me Renee, do ya understand that those typically conversant with software patents actually know both teh law and teh tech? How much “law” do you really know?

    Thought so.

  59. 60

    Obviously invalid is one thing, but potentially invalid is another. Most patents in litigation fall are at least in the second category. However, the very existence of obviously invalid patent claims means that the PTO sometimes gets it very very wrong. The question is what do with that. I agree that the PTO should have more funding, but we don’t have a time machine to fix the ones that are already out there.

    I get that licensees will be more reluctant to obtain patent licenses for questionable patents. The issue is whether or not this is bad thing. Should it be easy to license questionable patents?

  60. 59

    You are correct that moving the standard will lower the monetary value of ALL patents. Lowering the standard of proof means that ALL patents are closer to the line separating valid patents from invalid patents. Since validity is one component of a patent’s monetary value, one would expect a decrease.

    I get the concept, but what is your point? If patents are currently overvalued, then it makes sense to lower the standard. If patents are currently undervalued, then it makes sense to raise the standard. The real issue is whether or not lowering the standard is a bad thing. This is one of the collateral issues before the Supreme Court. Because reasonable minds disagree, Justice Breyer’s question doesn’t merit ridicule.

  61. 58

    Renee, you might be right in the area of software. But we are dealing with the patent system as a whole here.

    If there is a particular problem with software patents, let’s deal with them in isolation. For example, we have already granted prior user rights in the area of business method patents. Perhaps we should consider the same remedy with respect to software until and unless the PTO figures out how to properly examine them.

  62. 57

    Excellent comment Ron. I also thought Waxman’s comments on the reliance interests of patents very persuasive.

    Breyer’s point is also valid, though, and needs to be addressed and discussed seriously. The best rejoinder is that Congress has recognized the problem of invalid patents and has moved to fix the problem by enacting involuntary post-grant examination procedures to deal with them.

    Changing the standard of proof to deal with patents that should not have been granted, however, is a blunt tool where a more precise instrument is needed. A change in the standard of proof will seriously lessen the reliability of patents, which the both the Constitution and Congress have deemed important to America.

  63. 56

    No. Bad patents are not easily invalidated and, at least in the field of software, almost all patents currently granted are invalid. Anyone who understands software laughs when reading typical software patents. Software patents exist only because the people who make decisions about what should and should not be patented are ignorant about software, as are essentially all judges and so-called “IP” lawyers.

  64. 55

    Most people consider pro-business to mean pro-competition. You’re pro-monopoly. There is a difference.

  65. 52

    I’m not sure what you mean. If you mean your attorney failed to respond to the PTO, you can file a petition for unintentional abandonment, and if the gap was less than 2 years, you should expect to see your patent application revived (longer than that and you will have to provide some evidence). Filing a complaint against the attorney will not get your patent application restored, although you can also do that. If you meant something else, then you will have to ask it more clearly.

  66. 50

    Kinsella immediately jumps to mind


    I thought ya said impeccable? Kinsella be one hugely discredited hack.

    No wonder ya cant see straight Pro Se.

  67. 49

    I would not exist today, if there had been software patents back then.

    I’m fascinated to learn that you would not exist, Max, had there been software patents back then. Could you elaborate? And back when, exactly?

  68. 48

    The word gobbledegook comes to mind, Ron. Outweighing all your asymmetry ideas is the social harm done by the toxic combination of unwarranted uncontrolled unrestrained patent monopolies, a presumption of validity set at the C+C standard, and incompetent patent litigation. Shutting the stable door now, with a reject, reject, reject mentality at the PTO, is only compounding the mischief.

    I like this blog. I would not exist today, if there had been software patents back then.

  69. 46

    I was not vouching for MS’s references, I was responding to josh’s comment. Although I should have led with a patent has to issue for it to be found invalid. Then, it’s most likely to be found invalid based upon references that were not considered by the Examiner.

  70. 45

    Justice Breyer’s comment that in today’s world, perhaps a “worse disaster for the country is to have protection given to things that don’t deserve it,” may have been intended to highlight the one-sided analysis in the AIPLA Amicus brief (as he mentioned it by name) which (properly) addressed only the harm of erroneously invalidating perfectly good patents.

    However, like Microsoft’s argument, Justice Breyer’s comment misses the fundamental principles for setting a standard for the burden of proof – the relative imbalance of the countervailing risks to the litigants owing to errors of both types. As Justice Harlan explained in Winship, it is the relative risks to the litigants that controls the standard of proof because it affects the frequency of the two types of errors, which aggregate to form the social harms. It is remarkable that Justice Breyer appears to have reached a conclusion without any basis that errors of upholding bad patents are worse (more costly) than errors of invalidating a patent for an otherwise valid and patentable invention.

    During oral argument, Mr. Waxman explained that it is the asymmetry of the countervailing risks of error to the litigants that matters. Unlike infringement determinations, where the risks to the litigants are symmetric (producing the preponderance of evidence standard), patent invalidity proceedings entail highly asymmetric risks to litigants. The Asymmetry ratio can be 100:1 or even 1000:1 because an erroneous invalidation of an otherwise perfectly good patent results in the patentee’s inability to recover not only from the accused infringer but obtain license income from 100 or 1000 licensees. Justice Breyer will not find such analysis in the AIPLA brief or the i4i brief. I hope he and his colleagues read my Amicus Brief (available at link to ) and learn about the Court precedents in setting the standard of proof based on the countervailing risks to the litigants and its application in patent law. I show that the heightened standard of proof and the presumption of validity does not arise due to Section 282 but rather that it is the other way around – the presumption is a corollary of a heightened standard that independently and unconditionally exists due to the highly asymmetric countervailing risks of adjudication errors.

  71. 44

    Now why don’t we speak of trolls just one more time. Who is a troll? A company that seeks money for the small inventor, the statup. Companies likes i4i. Alleged “parasites” that unfairly tax businesses like big software and impeded their “development” of “new” products?

    Who is a troll?

    Or is it Big Patent Co., that seeks piles of patents to impose a tax on the economies of the world through sheer weight and size of the pile; but who yet are praised as an icon of good behavior, and whose leaders are appointed to high posts in Washington?

    Who is a troll? Who?

  72. 43

    My GAWD, Ping, your patent maximalist bias is literally dripping off your every word.

    Frankly, I am aware of no top notch, middle notch, low notch, or no notch country that does not have something that passes for patent law.

    As much as it pains me to admit it, and notwithstanding all of the compelling economic research that patents are of no moment (Kinsella immediately jumps to mind), I recently learned that Burkina Faso, a no touch country which includes invention encouraging patent law within its body of laws, is on the cusp of reducing to practice the first commercial cold-fusion reactor. Moreover, the government has made several important grants to encourage the development of new poison tipped arrows. Looks like you may have latched onto a valid point.

  73. 42

    Actually, Shill, you are right. Anti-patent programmers time and again came up with brilliant ideas. Their ideas found fertile ground. Then their crop was stolen by big software — and legally so because the anti-patent programmers had failed to protect their inventions with a patent.

    i4i was another such victim, but this one was just a bit wiser and may be made whole in the end by his forsight in protecting his investment with a patent.

    But none to dismay. Big software is doing its best to restore the patent free landscape where it “competes” the best. This case is one such example.

    Lemley is another.

  74. 41

    I do not agree, that reconciling pharma patents with software patents is not possible, within one patent system. Look at the pattern of patent litigation in England, for example. It used to be all pharma but, these days, it is increasingly busy with high value software cases, where the outcome is of heavy financial significance. Nobody is saying that London is OK for litigating the one area of tech but not the other. I suppose it helps, that the patent judges in London also do the fact-finding, on the basis of witnesses cross-examined in front of their noses, and that they stand no nonsense from the parties, having themselves been patent litigators (barristers) for 20 years before they took up judging.

  75. 40


    Ya be sounding like Dim and the penchant for a registration system (let the courts weed ’em out later).

  76. 39

    Did I read that aright? The effect of KSR is one of “ensuring that a great many worthy patents will not be granted”. Given that obviousness is decided in the USA on secondary factors, ought not the USPTO to be letting through all cases with some potential to be valid (especially if they belong to a little guy or Start Up)? You see, I think it is the presumption of validity, the C+C standard, which inhibits the PTO from giving Little Guy his chance of, later, having his day in court. Shame, I happen to think.

  77. 38

    Perhaps the biggest problem is that Justice Breyer’s comments make a lot of sense when you’re talking about particular industries, such as computer software. You would be hard-pressed to identify any innovation in the software area (the field in which i4i’s patent falls) that was facilitated by the patent system. In the software world, innovation moves quickly, there’s a history of putting out products and not bothering to get patents, and protecting things that don’t deserve patents is a huge drain on the industry. In other industries, where there’s a real investment of R&D dollars to get anywhere, you have to protect things or the investment won’t be made. It’s too bad our patent system cannot deal with the realities of the different industries, such as different terms or evidentiary standards for software vs. pharma. Because balancing all of the competing interests within a single unitary patent system is nearly impossible, as six years of non-reform by Congress confirms.

  78. 37

    Perhaps a less flippant rejoinder would be:

    “It is better that 5, 10, 20, or 100 guilty men go free than for one innocent man be put to death. This prinicple is embodied in the presumption of innocence. Yet a prisoner seeking habeas corpus relief from capital punishment must prove his factual innocence by clear and convincing evidence.”

    Surely Justice Breyer is well aware that the Courts have already done much more than enough (e.g., KSR)to minimize the odds of unworthy patents being granted, even to the extent of ensuring that a great many worthy patents will not be granted. The concern regarding the granting of unworthy patents has at least as little to do with the standard for invalidating patents as the concern over wrongful conviction has to do with the standard for proving innocence when seeking habeus corpus relief from capital punishment.

  79. 36

    …or perhaps ya aint aware of the connotations of “patent txxbxggers” especially given the prediliction of the particular poster and his affinity with dead presidents…

  80. 35

    Snagged by the filter…

    Pro Se – your Pro Se is showing, as well as your rapant anti-patent streak. I am not shocked by your pre-conceptions here.

    As far as “impeccable “economic research” clearly establishes that patent law is uniformly bad for innovation“, how many top-notch societies run with no patent system? That’s right – ZERO. Kinda tells ya somethin about that there “impeccable”-ness.

  81. 33

    impeccable “economic research” clearly establishes that patent law is uniformly bad for innovation

    Um, sure – now your “pro se” really be showing.

    How many top notch societies are there without a patent system (my guess is zero – so much for that there uniformly bad comment).

    I am shocked that you dont recognize the blatant anti-patent tripe.

  82. 32

    Moderator – ya meet also consider removing the comment that I was responding to. That be the offensive one.

  83. 31

    David Boundy writes about “asserting a patent that is obviously invalid” in front of a jury that will be in thrall to the technical experts and made aware, in no uncertain terms, that it must be clear and convinced before it puts its fingers anywhere near the validity of a duly issued patent claim.

    THAT is the ” pre-litigation commercial reality” for an awful lot of legitimate businesses, isn’t it?

    I’m not sure that a patent litigator is any more aware of this business reality than an in house whether at MS or at any other successful business that sits high up on the list of juicy troll targets.

    Seems to me that any proliferation of litigation of obviously invalid claims is anti-innovation and anti-little guy in that it just makes it harder for the deserving owners of small entities to prevail quickly, with claims, valid under any standard, and infringed by big, established industry. As Non Seq suggests above.

  84. 30

    What Breyer and Non Sequitur II miss is the pre-litigation commercial reality —

    Before asserting a patent that is obviously invalid, most (not all, but most) patent holders vet the patent thoroughly. It’s much cheaper to be corrected by your own lawyers before filing suit than to file first and investigate later!

    I don’t mean in any sense that wrongly-issued patents are not a problem. They are, and the PTO needs good funding to reduce it. But there are already a lot of corrective mechanisms out there for Type II errors (the biggest being self-discipline that most patent holders exercise, reexam being a second). Over correcting the Type II errora will create Type I errors, and they’re costly too, largely in businesses that aren’t created.

  85. 29

    Nice policy summary. Everyone seems to be overlooking the point of patents in order to defend the established players.

    That helps no one; it just creates monopolies based on nothing more than market cap.

  86. 28

    Clearly, the role of business impeding govn’t bureaucrat suits you.

    I’d love to see you pull the “grass is greener on the other side” move and then beat your head against the road blocks to business you’re championing. The meltdown when you realize that your world view is exactly backwards will be priceless.

  87. 27

    Isn’t it obvious? What is “good” versus what is “bad” is a question of fact, and not of law.

    All de novo review does is muddy up the waters.

    Besides, impeccable “economic research” clearly establishes that patent law is uniformly bad for innovation and is so 18th-20th century in the new world order of the 21st century. If you harbor any doubts about this statement, you need only meander over to “Against Monopoly”, easily the most authoritative source available anywhere (even more authoritative than Wikipedia).

    Quite frankly, Ping, I am shocked I even have to bring this to your attention.

  88. 26

    Um, sure – at least your moniker is apt.

    Just one little fly – what exactly is this “bright line” test and exactly what standard should be used with that test?

    (Sunshine take note – I did not malign or personally attack this obvious newbie – heavens knows, Pro Se just might be a cancer survivor and all).

  89. 24

    The “correct” standard(s) is staring everyone in the face and quite easily articulated:

    1. If a patent is a “good” one, C&C remains the appropriate standard.

    2. If a patent is a “bad” one, POTE is the appropriate standard.

    Thus, this case is easily disposed of by establishing a “bright line” test to differentiate between “good” and “bad”.


  90. 22

    It’s rather amusing to see this “American Cowboy”, cheerleading for a Canadian company and against one of the most profitable American companies ever.

    On top of that, i4i’s Michel Vulpe is probably the closest thing to a Frenchman that you’ll find in North America! Our patent txxbxggers’ heads must be exploding.

  91. 21

    Professor Kayton used to teach that patents are the anti-antitrust. They are the legal protections for new technologies that new market entrants can use against the big-boy incumbents.

    i4i I assume was a new market entrant wannabe, albeit unsucccessful. Microsoft is the big-boy incumbent. Killing this patent on Microsoft’s behalf favors the monopoly.

  92. 20

    R&R Perhaps Justice Breyer should stick to making ice cream.

    Perhaps you should stick to fluffing patents.

  93. 19

    OK, so a change to the standard of proof will not:-

    ” significantly affect a validity challenger’s ability to establish the factual bases of invalidity to a jury”

    This is important. Is anybody in consequence suggesting that the burden of proof in criminal cases be set to a preponderance (more likely than not) standard? Where’s the harm and who can deny the good, for it would save the taxpayer a whole heap of money and resources, and would encourage folks more vigorously, to abide strictly by the law.

  94. 18

    Nice strawman Maxie – but no one is saying that “It’s all so difficult

    As for bias, ya might check into that – bias aint a good thing.

  95. 17

    A new empirical study suggests that a validity 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

  96. 16

    Good. Glad my bias is showing, as it should be. You see, Listener, I act for patent owners some of the time, but the rest of the time I act for Opponents who are disputing patents wrongly issued by the EPO. Mostly, the clients who are patent proprietor in one case are Opponent in the next case on my desk. So, yes, I love all my clients equally but, all the same, I’m pretty biassed, it’s true. I want good patents upheld, and bad patents felled, and please no skewing the scales or positive discrimination in favour of issued claims, just because, on the obviousness issue, “It’s all so difficult”.

  97. 15

    Remarks and questions by the Justices are not always indicative of where they are or where they will end up.

    On the other hand, even in today’s world Congress had tellingly not moved to change the clear and convincing standard and the very spokesman for the government stated as much.

    Unless Breyer wants to openly take upon himself the mantle of law writer, this set of facts should ring loudly in chambers.

  98. 14

    Which “most anticipating references” would that be? The hearsay ones with no backing that Microsoft trumped up in order to avoid an obvious decision?

    Perhaps you have heard more than I on this (but I doubt it).

  99. 11

    By the way, my initial response did ignore the hugely obvious flaw in your statement, although I believe I knew what you meant.

    Only issued patents can be invalidated.

  100. 10

    Non Sequitur that is not the real world. In the real world lowering the standard means that you lower the value of ALL patents as it makes it easier to invalidate any patent. There are always arguments as to why any patent is not valid, since 103 is such a mushy concept. Wake up in the morning to a bunch of dunder brains.

  101. 8

    To be clear, i4i isn’t really a competitor to MS. They just made some rinky dink specialized software which MS relegated to the dustbin of history by adding a few lines of code to Word iirc. In other words, i4i never had a chance. Don’t bless them with the title competitor.

    Also, btw, patents are issued before they go to court for potential invalidation.

  102. 7

    Because the patent office did not consider the most anticipating reference(s). For one.

  103. 6

    I’m just going to ask this question. I probably won’t get an answer. But I am going to ask it anyway. When an Atty. decides to break the Law in order to deny his client their Constitutional Rights to Counsel,and then takes a Year off for this Break… Does the Client get their Rights restored? And the Constitutional Right that has been denied them to get Counsel, is that then restored after a decision is made on a Complaint?

  104. 5

    Fact-finding is going to be by a jury. That is “a given”. So, what is feasible for the jury? “Beyond reasonable doubt” it can understand, get to grips with, and manage. “More likely than not” is a concept it can understand, get to grips with, and manage. But “clear and convincing”, in the context of the validity of a “duly issued” biotech or telecoms claim is a standard it doesn’t understand, cannot engage with, and cannot manage.

    Think about the shambolic performance of the SCOTUS in KSR, on a claim all about a simple mechanical lever that you can hold in your hands. Is SCOTUS expecting of a jury of ordinary people a standard of fact-finding that is beyond SCOTUS itself?

    Does anybody apart from Justice Breyer care?

  105. 4

    how can a patent be issued if its proven to be invalid? MS wants the patent invalidated because the patent gets in its way not because it cares about promoting a better evidential standard. i would have done the same if i4i was a competitor….

  106. 3

    I don’t see how you can so easily criticize Justice Breyer. His question was directed towards the real issue. Would we rather have valid patents invalidated or invalid patents asserted?

    The only patents affected by lowering the presumption are those that would survive a clear and convincing standard that wouldn’t survive a preponderance standard. Why do these patents deserve protection?

  107. 1

    [i4i’s remarks – which the DOJ agrees with BTW]…are all along the lines of how important patents are and what a disaster [it is when] patents are invalidated. … in today’s world, perhaps a worse disaster for the country is to have protection given to things that don’t deserve it….”

    What a flippant remark.

    Perhaps Justice Breyer should stick to making ice cream. Patents given to “things that don’t deserve it” are quickly invalidated through the normal remediating remedies of re-exam, and litigation. Meanwhile, lowering the presumption destroys the value of patents that DO deserve protection.

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