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.
At the end of December, we learned that Microsoft had petitioned the PTO Director to order reexamination of the ‘449, and this morning the Microsoft petition has been released to the public. It shows that Microsoft’s chances at the Patent Office are not so long after all, that Microsoft’s argument for reexamination is stronger than many thought. The concerns about the “clear and convincing” standard being abandoned by the Supreme Court may not be justified – there is a real prospect that the Microsoft-i4i dispute could be resolved in the reexamination, without the need for the Supreme Court to reassess the burden of proof standard for accused infringers.
Microsoft begins its petition by invoking the ancient Supreme Court precedent, White v. Dunbar, with its injunction against twisting the meaning of claims like “a nose of wax,” to have one meaning for validity and another meaning for infringement. Specifically, Microsoft complains that the ‘449 claims were construed broadly by the trial court, allowing the jury to find that the Microsoft system infringed the ‘449 claims. “Since the construction of ‘mapped content’ was not limited to ‘raw content,’ the Patentee was able to allege at trial that Microsoft Word infringed the claims of the ‘449 Patent.” On the other hand, the reexamination examiner adopted a narrow an interpretation of the ‘449 claims “that would exclude the accused Microsoft Word software….”
Second, Microsoft faulted the reexamination examiner for not evaluating the prior art disclosure from the perspective of the person of ordinary skill in the art, when he by limited the scope of the claims to the single embodiment disclosed in the ‘449 Patent.
Third, according to Microsoft, the examiner ignored the i4i’s “repudiation of the reasons for allowance of the claims over [the Kugimiya reference] as an independent basis for considering Kugimiya in a ‘new light.’”
Fourth, Microsoft complains that the examiner found that i4i’s “admissions regarding the [Kugimiya reference] do not extend to ‘addresses of use’ even though the District Court construction and trial testimony plainly indicate that ‘addresses of use’ are integral to the meaning of ‘metacode map.’”
Fifth, Microsoft accuses the examiner of consider the disclosure of “the references individually rather than by considering the combined teaching presented by each combination….”
Finally, Microsoft says that the examiner failed to take into account the trial testimony by i4i that was not of record in the earlier reexamination. According to Microsoft, that testimony “rebuts the prior examiner’s claim interpretation,” and replies to the questions raised by the examiner in the first reexamination proceeding.
Much of Microsoft’s argument is based upon assertions that i4i made in the parallel court case, and the Patent Office has lately shown an extreme reluctance to acknowledge “admissions” made in court cases. On the other hand, there seems to be a genuine injustice if claims are construed broadly in court case for infringement, but narrowly at the Patent Office for validity. In fact, such a result would contradict the Patent Office’s long-standing practice of giving claims their broadest reasonable construction. In any event, Microsoft’s petition at least creates the possibility of its dispute with i4i being resolved at the Patent Office, obviating the need for the Supreme Court to take on the potentially disruptive issue of accused infringers’ burden of proof.