Supreme Court to Review Standard of Proof Necessary to Invalidate Patents

November 29, 2010

On November 29, 2010, the Supreme Court issued an order granting Microsoft’s petition for a writ of certiorari to review the Federal Circuit’s judgment in i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010). The petition asks the Court to address whether clear and convincing evidence is necessary to prove a defense of invalidity under 35 USC § 102(b) where the pre-application filing sale activity on which the defense relies was not considered by the Patent Office prior to the patent’s issuance:

The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282. The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § 102(b) by “clear and convincing evidence,” even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is: Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

The Court’s docket number for this case is 10-290.

The case can be expected to be argued and decided in 2011.