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Briefing Microsoft v. i4i: Amicus Briefs Supporting Easier Invalidation Of Patents in Court

Publication Date: 
February 04, 2011

Professor Mark A. Lemley gives his viewpoint over the circumstances in which it is appropriate to defer to the Administrative Procedures Act when invalidating a patent. The Patent Law Blog quoted Lemley in the following article:

Microsoft v. i4i, Docket No. 10–290 (Supreme Court 2011)

Briefing has begun in earnest. Microsoft recently filed its opening brief on the merits (File Attachment: microsoftopen.pdf (250 KB)) and now twenty-five self-proclaimed friends-of-the-court have added their respective two-cents. The case focuses on the burden of proof required to invalidate an issued patent. Microsoft has challenged the Federal Circuit's rule that clear-and-convincing evidence is necessary. Instead, the software giant argues that a preponderance of the evidence should be sufficient to invalidate a patent — especially when a court is considering evidence of invalidity that was not considered by the Patent Office during examination.

In many ways, this case would only shift marginal cases — such as when an accused infringer is able to prove that a patent is probably invalid, but cannot provide clear and convincing evidence of that fact. The specific marginal problem for Microsoft is that it presented only limited evidence of the existence of custom built prior-art software that would invalidate i4i's patent. Unfortunately for Microsoft, that twenty-year-old software code is no longer available and the parties presented competing factual testimony as to the operation of the prior art software.


... Writing for a group of 37 Professors, Professor Mark Lemley adds that APA deference may be appropriate only in very limited circumstances — such as when a particular factual question was decided in the course of an adversarial inter partes reexamination proceeding. File Attachment: lemley.pdf (229 KB). ...