Posted March 6, 2011

The previous post included a summary of the facts from the Microsoft petition for certiorari.  The Supreme Court has several options when deciding the outcome of this case.  It can maintain the Federal Circuit’s existing presumption of validity.  On the other hand, it can relieve an accused infringer from having to prove clear and convincing evidence for prior art not before the examiner.  But there are many more options available to the Supreme Court.

The Supreme Court could tailor its holding to the facts at hand.  It could lower the standard of proof necessary to invalidate a patent when a case turns on prior art in the control of the Patent Owner, but use the existing presumption of validity as set forth by the Federal Circuit for all other prior art.  More specifically, the holding could be more narrowly focused to lower the standard of proof where a case turns on prior art in the control of the Patent Owner if the Patent Owner has destroyed and/or withheld the evidence.  Such a holding could be further tailored to situations such as offers of sale.

Additional tools are available to address cases with similar facts.  A rebuttable presumption may be employed to maintain the current presumption of validity absent proof that prior art in the case was not available to the examiner.  “Availability” could be defined narrowly or broadly.  For example, it could be decided that prior art was available if it could have been found in a search, even if it wasn’t found by the examiner.  Or it could be decided that the prior art had to be disclosed in the instant or a related application to be “available.”

The Supreme Court could take a completely different approach and decide that the problem Microsoft complains of is not really a problem at all because:  (1) if i4i is right and there was no prior art offer of sale bar, then Microsoft was not aggrieved; and (2) if i4i withheld and/or destroyed the relevant information, then this matter is already sufficiently addressed with the current laws concerning the duty of candor and inequitable conduct, and Microsoft failed to carry its burden of proof.  Alternatively, perhaps the Supreme Court will decide that the law of inequitable conduct is what needs review (and which might be addressed by the anticipated en banc Federal Circuit decision in Therasense v. Becton Dickinson).

Of course, all of these examples are just some of the options available to the Supreme Court.  Unfortunately, this post cannot favor one approach over the other because many more considerations need to be factored into the ultimate decision of what to do with the presumption of validity.

In my next post, we will discuss some possible changes to reexamination practice should the Supreme Court change the standard of proof.