Supreme Court Rules in Microsoft Case

The Supreme Court affirmed the clear and convincing standard of evidence needed to invalidate a patent in Microsoft Corp. v. i4i Limited Partnership. Writing for a unanimous court, with Justice Roberts taking no part in the decision, Justice Sotomayor relied on the Supreme Court's 1934 Radio Corp. of America v. Radio Engineering Laboratories, Inc. as the basis for the clear and convincing standard. The Court found that the common law standard was then codified by Congress in 35 U.S.C. § 282 without any modification. Though § 282 only explicitly discusses the presumption of validity, that presumption also includes the heightened burden of proof as defined by common law.

The Supreme Court also rejected Microsoft's argument that a lower burden of proof should apply when using prior art that was not previously considered by the PTO. The Court did agree that in cases involving such not previously considered prior art, that art may carry more weight than previously considered art to satisfy the clear and convincing evidence. The Court noted that "a jury instruction on the effect of new evidence can, and when requested, most often should be given."

Justice Breyer concurred regarding the outcome, but wrote separately to emphasize the many distinctions in patent law between issues of fact for the jury and issues of law which should be decided by a court. For issues of law, the stricter standard of proof should have no effect. He urged courts to keep issues of fact and law separate and encouraged the use of interrogatories and special verdicts to gain a clear understanding of a jury's factual findings. Justice Thomas also wrote a concurring opinion, agreeing in the outcome but disagreeing that § 282 codified the clear and convincing standard.

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