Microsoft Tests Fundamentals of Patent Law in i4i Appeal

On April 18, 2011, the Supreme Court of the United States heard what may be the final appeal in the David and Goliath saga of Microsoft Corporation v. i4i, Inc. The history of the case is recited in the March 10, 2010, U.S. Court of Appeals for the Federal Circuit decision. In its application materials, and before the Supreme Court, Microsoft has argued that the standard of review in patent invalidity proceedings should be reduced from “clear and convincing” to some standard more akin to “preponderance of the evidence”. Also at issue was the extent to which prior art not already considered and rebuffed at the United States Patent and Trademark Office (USPTO) during prosecution can be revisited at trial.

If decided in Microsoft’s favour, the case will have profound implications for all manner of U.S. patent litigation, and the value of patents in the market place generally. Numerous entities have intervened in support of both sides.

The standard of review in Canada is also in flux, with the Supreme Court of Canada having put forward a “reasonableness simpliciter” standard of review (akin to “clear and convincing”) for a challenge based on mixed fact and law to the Commissioner of Patent’s finding of validity (see Wellcome / AZT 2002 SCC 77). But, that decision was recently ignored by the Canadian Federal Court of Appeal in Novopharm Ltd. v. Eli Lilly & Co. 2010 FC 915, where the court applied a “balance of probabilities” test (akin to “preponderance of the evidence”) and purported to limit the scope of the higher court’s decision. Of course, there is a major parallel difference between Canadian and U.S. patent law on this point, in that U.S. patentees remain bound by submissions to the USPTO under the doctrine of file wrapper estoppel, while Canadian patentees are not similarly bound by their arguments before the patent office.

A decision from the U.S. Supreme Court is eagerly anticipated this June.

For the U.S. Supreme Court transcript, visit:
http://www.supremecourt.gov/oral_arguments/argument_transcripts/10-290.pdf

For commentary on the U.S. Supreme Court hearing, visit:
http://www.computerworld.com/s/article/9215905/Patent_expert_gives_Microsoft_edge_after_Supreme_Court_hearing?source=toc

For the U.S. Court of Appeals decision, visit:
http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1504r.pdf

For additional information on the U.S. Court of Appeals decision, visit:
http://www.lawsof.com/page/i4i-and-its-dollar-290M-Award-Survive-Microsoft-Appeal.html

Volume IX

Microsoft Tests Fundamentals of Patent Law in i4i Appeal