In a major patent decision that issued today, the Supreme Court upheld, by an 8-0 vote, the Federal Circuit’s long-standing rule that 35 U.S.C. § 282 requires an invalidity defense to be proved by clear and convincing evidence. A copy of the decision in Microsoft v. I4I (2011) is here.
Microsoft had lost to i4i in the Eastern District of Texas under a clear and convincing evidentiary standard for proving invalidity. Microsoft had requested that the district court instruct the jury to use a preponderance of the evidence standard for prior art not before the PTO. After the district court refused to do so, Microsoft first appealed the question to the Federal Circuit (which rejected Microsoft’s argument), and then to the Supreme Court. The Supreme Court’s rejection of Microsoft’s argument means that Microsoft will have to pay i4i $290 million in damages.
Although the Supreme Court’s vote was 8-0, there was a real question in the patent community as to which way the decision would come out. In fact, many patent holders, after the Supreme Court granted certiorari, agreed to use the lower, preponderance of the evidence standard of proof at trial for the invalidity question, so as to avoid a new trial in the event that the Supreme Court sided with Microsoft. Now, it will be back to business at usual on the invalidity side of the case.
I4i was represented by attorneys with McKool Smith, P.C. before the District Court, the Federal Circuit, and the Supreme Court; attorneys with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. at the Federal Circuit and the Supreme Court; and attorneys with Sterne, Kessler, Goldstein & Fox and Wilmer Cutler Pickering Hale and Dorr LLP at the Supreme Court. Seth Waxman argued for i4i at the Supreme Court.
Microsoft was represented by attorneys with Weil, Gotshal & Manges LLP before the District Court, the Federal Circuit, and the Supreme Court; and attorneys with Gibson, Dunn & Crutcher LLP at the Federal Circuit and Supreme Court. Thomas Hungar argued for Microsoft at the Supreme Court.