Justice Scalia, who presided over the Court in Microsoft v. i4i
At 11:03 am this morning Justice Scalia, sitting in for the recused Chief Justice John Roberts, called the most recent Supreme Court foray into patent law saying: “We’ll hear argument now in… Microsoft Corporation v. i4i Limited Partnership.” The Chief Justice recuses himself from any and all Microsoft cases before the Supreme Court, so eight Justices are left to decide whether it is appropriate to require clear and convincing evidence to find an issued patent claim invalid during litigation. In a nutshell, Microsoft and the amici supporting Microsoft would rather have a lower threshold (i.e., preponderance of the evidence) at least with respect to prior art that was not considered by the patent examiner during prosecution of the patent application at the United States Patent and Trademark Office. On the other side of the case, i4i, along with its amici and the Solicitor General, argue that the current standard should not be changed.
The main front of the on-going war between Microsoft and i4i regarding the latter’s U.S. Patent No. 5,787,449 is certainly the Supreme Court. There, Microsoft has asked the Court to reverse a $290 million verdict against it for infringement of the ‘449 patent, arguing that the burden on an accused infringer of proving that a patent is invalid over the prior art should be “preponderance of the evidence” rather than the traditional standard applied by the trial court of “clear and convincing” evidence, at least where the reference asserted was not before the examiner in the original patent prosecution. The Court’s grant of certiorari in this case has understandably generated enormous concern in the patent community, fearful of the potential for undermining the strength of hundreds of thousands of commercially significant patents.
At the same time that Microsoft pursued its appeal of the verdict for i4i, both at the Supreme Court and earlier at the Court of Appeals for the Federal Circuit, Microsoft requested that the Patent Office undertake a new reexamination of the ‘449 patent on the basis of previously considered prior art, but art presented “in a new light” according to Microsoft. This request was dismissed by commentators as a side-show, a mere attempt to support its argument before the Supreme Court, or even a “Hail Mary” (actually, I said that). Indeed, that estimation seemed to be correct when the patent examiner refused to grant Microsoft’s request to grant reexamination – a sharp rejection in view of the very high percentage of reexamination requests that are granted.
Earlier today the United States Supreme Court granted certiorari in Microsoft Corporation v. i4i Limited Partnership, with Chief Justice John Roberts taking no part in the decision or petition. The Supreme Court did not request the views of the Solicitor General, choosing rather to accept the matter with no input from the United States government. The decision to grant cert. comes only days after the United States Patent and Trademark Office refused to grant reexamination of the patent in question.
Microsoft had filed an ex parte reexamination request on the patent in question, US Patent No. 5,787,449. The ‘449 patent exited reexamination unchanged. Microsoft then filed a second ex parte reexamination request, and it is this second request that was denied by the Patent Office on Wednesday, November 24, 2010. The denial of this second request means that the Patent Office did not believe there to be a substantial new question of patentability.
Microsoft has been on a long losing streak when it comes to i4i’s U.S. Patent No. 5,787,449. It is now trying to turn that streak around, by filing this past Tuesday another reexamination request against the ‘449 patent.
An East Texas jury found that the ‘449 patent was valid and infringed by Microsoft Word 2003 and Microsoft Word 2007 that contained custom XML. Judge Leonard Davis ordered Microsoft to pay i4i $290 million. This past December, the Court of Appeals for the Federal Circuit affirmed the judgment against Microsoft. In July the U.S. Patent Office concluded a reexamination of the ‘449 patent, confirmed that it was valid of certain prior art references submitted by Microsoft.
Earlier this week i4i Limited Partnership announced that the United States Patent and Trademark Office confirmed the patentability of all claims of the U.S. Patent 5,787,449. The ‘449 patent was being reexamined by the USPTO at the request of Microsoft after the Redmond giant lost close to $300 million as a result of infringement of the i4i patent. Most importantly, however, Microsoft was ordered to stop selling copies of Word that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML. See Patent Injunction: Microsoft Ordered to Stop Selling Word.