Posted March 5, 2011

In Microsoft v. i4i, which has been granted certiorari by the Supreme Court, Microsoft’s position is that the presumption of validity should not be enjoyed by a patent owner for prior art not considered by an Examiner in ex parte prosecution of a patent application.  The upshot of its position is that the standard for the burden of proof of patent invalidity should be “preponderance of the evidence” (as opposed to the “clear and convincing evidence” standard) for prior art not considered by the Examiner in the original ex parte prosecution.

This blog posting will not take a position as to what the law should be.  That is the Supreme Court’s job.  But let’s consider the presumption of validity and how a change in the standard of the burden of proof affects reexamination, among other things.

Microsoft’s petition for certiorari includes alleged facts that i4i had offered for sale software containing the invention over a year before its filing date.  Thus, the patent claims to the invention were alleged to be invalid under 35 U.S.C. 102(b) because of the offer of sale.  (i4i alleges that the software offered for sale did not have the invention.)  That offer of sale evidence was not before the Examiner in the prosecution of i4i’s patent.  And i4i did not have the software at the time of the litigation.  Ultimately, Microsoft was unable to prove the offer of sale included the invention under the clear and convincing standard applied by the trial court.  So Microsoft’s position is that the presumption of validity should not apply for prior art not considered by the examiner, and it should not have to prove invalidity based on the higher “clear and convincing evidence” standard.

This is the fact pattern:

• Applicant makes a prior offer of sale of software
• Applicant gets a patent without presenting the prior offer of sale information and it is not considered by the Examiner
• Evidence of prior art software is destroyed or lost and litigation commences without the software in evidence
• Defendant alleges prior art software includes the invention
• Defendant is held to a clear and convincing standard for proof of invalidity
• Evidence not enough for trial court under the clear and convincing standard

Microsoft offers up KSR v. Teleflex and several circuit decisions that find the presumption of validity compromised when the examiner does not have all of the relevant evidence for consideration in the ex parte prosecution.

That is because the presumption of validity is premised on a presumption of administrative correctness.  That means the Patent Office is deemed to have done its job in examining the patent application and in deference to that presumption of administrative correctness, a higher burden of proof standard (clear and convincing) is used.

So what might the Supreme Court do with all of this?  And how does this relate to reexamination?  These will be discussed in my next few posts.