Supreme Court Patent Watch: i4i Files Brief in Microsoft Case

By Gene Quinn
March 13, 2011

On Friday, March 11, 2011, lawyers representing i4i Limited Partnership filed the Brief for Respondents in the matter of Microsoft Corp. v. i4i Limited Partnership.  The fight is at the United States Supreme Court, which will hear oral arguments in the matter on April 18, 2011.  At issue is whether a patent in litigation deserves a heightened presumption of validity under the clear and convincing evidence standard or not.  Today, in order for a defendant to invalidate a patent claim there must be clear and convincing evidence that the claim should have have been issued by the Patent Office.  Microsoft seeks to lower the standard and make it easier to challenge issued patents in court.

More specifically, Microsoft would like to have the standard for invalidating a patent claim lowered to a mere preponderance of the evidence standard.  They say that prior art not considered by the Patent Office should not be afforded the same level of deference.  I say — why not?

What Microsoft and those who support Microsoft fail to appreciate is that whenever a patent search is done there are many hundreds, if not many thousands, of references reviewed.  The patent searchers we typically use go through many thousands of patent applications and issued patents before settling on the 100 to 200 that seem most relevant.  We then further weed down the list and wind up typically working with the inventor to articulate a description of the invention that clearly distinguishes the invention from the closest 3 to 7 references.  Does that mean we have only considered 3 to 7 references and those are the only ones that should enjoy a clear and convincing standard?  Of course not!  The suggestion that only those references considered by the Patent Examiner be afforded a heightened presumption is preposterous and demonstrates a complete and total lack of understanding of how patent searching is done and how Patent Examiners use search results.

It is also incredibly ridiculous to pretend that we should aspire to a legal system that treats pro-patent and anti-patent determinations so differently.  If a patent is denied reviewing courts will apply an abuse of discretion standard to see if the Patent Examiner and the Board of Patent Appeals made a mistake.  For those unfamiliar with the law, whenever abuse of discretion is the standard that means you have little realistic chance of prevailing.  Nevertheless, those who propose the “Microsoft plan” would like to see patents granted challenged based upon a mere preponderance of the evidence, which is simply world’s apart in terms of the threshold of proof required.  So don’t get a patent and you realistically can’t prevail on a challenge in court.  Get a patent and the challenger has an easy (or easier) path to challenging your right in court.  That is fundamentally unfair.

The truth is that the standard for invalidating patent claims in court should be the same as it is when a patent is denied.  Truthfully the standard shouldn’t even be as low as “clear and convincing,” rather it should be “abuse of discretion.”  Those who say that isn’t appropriate because the challenger wasn’t allowed to participate in the patent application process are conveniently and selectively telling only half the truth.  Any challenger has a right to request a reexamination of the patent and upwards of 95% of reexamination requests are granted by the Patent Office.  If the challenger wants a lower standard they should be forced to return to the Patent Office and seek reexamination, otherwise the standard that is in place for unsuccessful applicants should be the standard in place for challengers who seek to invalidate claims obtained by successful applicants; namely an abuse of discretion standard.

Now before anyone gets too worried, questioning whether I have lost my senses, I realize what I am proposing doesn’t even have the chance of a proverbial snowball in Hades.  I am just telling you the way it should be to make the situation fair and balanced for both sides, which after all is what the law is supposed to do, right?  Of course it is, but it won’t, which is disheartening.  The Supreme Court has said that great deference needs to be paid to the Patent Office when they deny patent claims as a result of administrative law principles, so why then don’t the same patent examiners get the same level of deference when they issue a patent?  There is no good answer.

In any event, I didn’t set out to pontificate, but rather to provide the brief filed by i4i.  If you read nothing else take a look at the “Introduction,” which is reproduced below.  Did you know that Supreme Court Justice Cardozo once wrote that the presumption should be “clear and cogent evidence.”  It would seem that this group of Supreme Court Justices will need to overrule themselves in order to give Microsoft what they ask for.  The Supreme Court overruling itself, even after generations, is not something that anyone can or should predict.  It happens rarely indeed.  Let’s hope that trend continues.

By the way i4i has some real heavy hitters representing it before the Supreme Court.  Finnegan, Henderson, Farabow, Garrett & Dunner are joined by Wilmer Cutler Pickering Hale and Dorr.  The lead attorney?  Well the first name on the brief is Donal Dunner, the Dean of Federal Circuit Advocates.

Now, the Introduction from the i4i Brief for the Respondents:

For over 150 years, this Court and others have consistently held that the presumption of patent validity imposes a heightened standard to prove invalidity.  “Even for the purpose of a controversy with strangers,” Justice Cardozo explained for a unanimous Court in one case, “there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence.”   Radio Corp. of Am. v.  Radio Eng’g Labs., Inc., 293 U.S. 1, 2 (1934) (hereafter RCA).  The Court’s holdings on this point, moreover, are uniform:  This Court has never held or even stated in dicta that the presumption can ever be overcome by “a dubious preponderance” of the evidence.  Id. at 8.

The same is true of the Federal Circuit, which Congress created specifically to “strengthen the United States patent system.”  Markman v. Westview Instruments, Inc., 517 U.S. 370, 390 (1996).  From its earliest days, that court has consistently held—relying on this Court’s precedent—that the standard to prove invalidity under 35 U.S.C. §282 is always clear and convincing evidence.   See, e.g., American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984) (Rich, J.) (citing  RCA).  Before the Federal Circuit’s creation, the vast majority of regional circuits took the same view.  See infra p.52 & n.18.  Indeed, by 1970 two circuits had labeled the clear-and-convincing standard “elementary patent law.”   Mercantile Nat’l Bank v. Quest, Inc., 431 F.2d 261, 264 (7th Cir. 1970);  King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 354 F.2d 533, 536 (10th Cir. 1965) (each citing Mumm v. Jacob E. Decker & Sons, 301 U.S. 168 (1937)).

Microsoft thus asks this Court to depart from settled precedent to effect a radical change in patent law— an area in which stability and predictability are paramount.  In fact, Microsoft seeks a more extreme change than it advocated at the petition stage.  Then, Microsoft argued that the standard of proof should be a preponderance when relevant prior art was not considered by the Patent and Trademark Office.  Microsoft presented that issue as warranting review by pointing to dictum in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and pre-1982 regional-circuit decisions, all of which purportedly conflicted with Federal Circuit precedent.  Now, Microsoft argues primarily for an across-the-board preponderance standard.  That rule, however, finds no support in KSR, any other decision of this Court, or virtually any case from the circuits (before or after 1982).  Furthermore, this argument has been waived because it was not pressed or passed on below.   See, e.g., United States v. United Foods, Inc., 533 U.S. 405, 416-417 (2001) (declining to consider an “argument … ‘not raised or addressed’ in the Court of Appeals,” even though it fell within the ambit of the broadly worded question presented).

The reason for Microsoft’s switch is apparent:  As several of Microsoft’s own amici recognize, a hybrid standard of proof is indefensible.  It is completely unmoored from the text of §282.  It conflicts with this Court’s jurisprudence, which “never has approved case-by-case determination of the proper standard of proof for a given proceeding.”  Santosky v. Kramer, 455 U.S. 745, 757 (1982) (emphasis omitted).  And it would cause jury confusion about how to apply multiple standards of proof on a single issue (perhaps even a single piece of prior art) and generate wasteful collateral litigation about, for example, which evidence patent examiners considered.  Federal Circuit precedent, by contrast, avoids all these problems—and accords with this Court’s observation in  KSR—by applying a single standard of proof but allowing it to be satisfied more easily with evidence the PTO never considered.   See, e.g., American Hoist, 725 F.2d at 1359-1360.  That approach is also substantively identical to pre-1982 regional-circuit decisions holding the presumption “weakened” by such evidence.

The universal-preponderance standard to which Microsoft has shifted is no better than a hybrid standard.  It contradicts every holding of this Court regarding the standard to prove invalidity—and hence also contradicts §282, which codified those uniform holdings.  It would also marginalize the PTO, draining that agency’s expert determinations regarding patentabilityof virtually any significance.  And like the hybrid standard, it would harm the public:  The clear-and-convincing standard promotes strong, stable patent rights, thereby encouraging innovation and the disclosure of inventions that the public enjoys.  A weakening or abandonment of that standard would undermine patent rights and thus discourage innovation—in derogation of “the policy of stimulating innovation that underlies the entire patent system.”  Dawson Chem. Co. v. Rohm & Hass Co., 448 U.S. 176, 221 (1980).  At the same time, in light of the extant reexamination process, such a change would do little to promote competition, and would guarantee the perpetuation of any problems with the patent-examination process, about which Microsoft and its amici complain at length.

The Federal Circuit’s judgment should be affirmed.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 48 Comments comments.

  1. jb March 13, 2011 7:05 pm

    Minor typo: “Today, in order for a defendant to invalidate a patent claim there must be clear and convincing evidence that the claim should [NOT] have have been issued by the Patent Office.”

    Agreed. My concern is the Court lowers the standard for all invalidity arguments, rather than just those not previously considered by the PTO.

  2. Copyright Litigation March 14, 2011 1:09 am

    Here is a similar story

    This case, now pending before the US Supreme Court, questions the standard of proof necessary to invalidate an issued patent based on issues not considered by the USPTO during examination. For Microsoft, lowering the standard appears to be its only chance to escape from a pending judgment of over $100 million in favor of i4i. Microsoft lost at the district court, lost on appeal, lost at the PTO during reexamination, and was summarily denied a second attempt at reexamination. The Supreme Court, however has offered the software giant some light.

  3. anonymousAgent March 14, 2011 8:43 am

    M$ may have a point for ‘non-searchable prior art’ such as non-Internet-accessible publications, on sales events, public use that is not uploaded to the Internet.
    For anything that the USPTO could have accessed, you are 100% correct.
    The correct decision as I wrote above, with a warning to the judges that on sales events, etc. which is cumulative should be afforded the same deference as ‘Internet-published’ prior art.

  4. Bob_the_Builder March 14, 2011 10:09 am

    I agree with Gene (but have stopped caring, although that’s another story for another day . . . )

    Act 1, Scene 1
    Setting Examiner’s Office
    Examiner: Hey, this reference A to Smith, US No. 6,yyy,yyy anticipates all the claims. This is great – it shows everything! It’s the most relevant reference every uncovered in the history of searching! I mean, the applicant is going to cry, really CRY, when he sees this ref – . . . Wait. It’s missing element Z double prime for each of the claims! And paragraph [11558] of [22312] teaches away from being modified from rendering any of the claims obvious. Man, this is so inapplicable, there is no need to even list it on the face of the patent. After all, this reference could NEVER be used in any kind of 102 or 103 rejection. I’ve really gone the extra mile and did my job!!!

    Act 2, Scene 1
    Setting: Courtroom
    Attorney: Your Honor, this reference A to Smith, US No. 6,yyy,yyy, appears extremely relevant. And it’s not listed on the face of the patent, so therefore it should take less evidence to invalidate the patent in view of it. Opposing counsel argues we should take the fact that it’s not listed on the face of the patent as an indication that the referenec must not be relevant. No way – if you saw what this reference discloses, you’d understand the Examiner wasn’t doing his job by not using this reference to reject the claims . . .

  5. American Cowboy March 14, 2011 2:40 pm

    As to “non-searchable prior art’ such as non-Internet-accessible publications, on sales events, public use that is not uploaded to the Internet” potentially being the basis for the lowered standard of review, I say hold on a minute.

    The patentee has publicized the information, spelled it out in a disclosure that is enabling to PHOSITA, has a written description and discloses his best mode, usually including drawings. How much is society harmed by that patent staying on the books when the best argument for killing it is that two or three people knew about the alleged prior art and are willing to speak up for the infringer? Did they make a comparable disclosure? Apparently not. Instead, they hid the technology using trade secrets or were simply allowing it to go into the dustbin of history as they rode off to their graves. Why should society allow those jokers to kill a patent?

  6. Bobby March 14, 2011 5:10 pm

    Amercian Cowboy,
    There’s quite a bit of a jump from ‘not on the internet’ to ‘two or three people knew about the alleged prior art and are willing to speak up for the infringer?’ A non-internet publication could very well have a fairly large readership. Also, that in no way means that they were trying to keep it a trade secret, or that the disclosure used was inferior. Someone disclosing outside of a patent doesn’t have to be restricted to using ‘patentese’, which by itself could be a big advantage.

    You ask what the harm to society is, but invalidating prior art means that the inventor listed on the patent is not the inventor, or that their contribution in light of the actual prior art was not big enough to warrant a patent. Thus, the question is, why should we give patents for cases where little to no invention actually occurred, or more precisely in regards to the subject of the i4i case, why should we uphold patents when that appears to be the case?

  7. Blind Dogma March 14, 2011 6:51 pm

    or more precisely in regards to the subject of the i4i case, why should we uphold patents when that appears to be the case?

    Because is it the law.

  8. Gene Quinn March 14, 2011 7:00 pm

    Bobby-

    You say: “the question is, why should we give patents for cases where little to no invention actually occurred, or more precisely in regards to the subject of the i4i case, why should we uphold patents when that appears to be the case?”

    Please prove your statement that i4i has a patent that appears not to cover an invention and/or that the patent was inappropriate awarded. This patent has been litigated and i4i prevailed. After losing Microsoft wants to change the standard because they couldn’t prove what you state as a matter of fact.

    I am not going to let you hijack this discussion like you do so many others. So either prove your point with facts or cease commenting. I have grown tired of the lack of evidence and pure speculation that accompanies your conspiracy theories and rants.

    -Gene

  9. Bobby March 14, 2011 10:43 pm

    Gene,
    The concern in the i4i case is whether the standard should be preponderance vs. clear and convincing. If the i4i patent meets C&C but not preponderance, than that would mean that the likelihood of it being invalid is greater than the likelihood of it being valid. In that scenario, upon preponderance over the evidence, it would appear that the patent is not valid. Whether or not i4i’s specific patent appears to be valid or not is not the greater issue here, but instead, what the appropriate standard is is the concern that makes this case important.

    So, what I would have to provide evidence of is that invalidation under the preponderance standard only happens when the patent appears to be valid. What ‘appears to be the case’ would be the possibility that is most likely. If there is a likelihood of >50% that the patent is invalid, then it would appear to be the case that the patent is invalid. This is identical to preponderance, and at least theoretically means that errors in favor of the patentee (an invalid patent being upheld) are just as likely as errors against the patentee (a valid patent being invalidated).

  10. Stan E. Delo March 15, 2011 1:09 am

    Hi Bobby-

    I would be very curious to hear about why you seem to think that *inventions* should be shared so freely. Perhaps the basic problem is that you don’t beleive in inventions at all. That is the only logical conclusion I can imagine, but of course you are way out there past Jupiter somewhere. I have been working on a new Red Kryptonite flavor lately, with a heavy Wormwood infusion, with some Royal Anne cherries thrown in at the end.

    Why not invent something “Bobby” if that is who you actually are. I bet not.

    Stan~

  11. American Cowboy March 15, 2011 9:34 am

    Bobby takes issue with my prior post, and perhaps rightly so. My point is that if the prior art the court is considering in the validity analysis is not well known to Phositas, I don’t see much harm to the public and phositas if the patent is upheld. At least the patentee brought the knowledge front and center. A suggestion of the invention in a publication that took place years ago and subsequently has only gathered dust does not put the invention in the hands of the public.

    The patentee presumably came up with the idea on his or her own (and did not copy the obscure reference) and staked his or her claim. To kill off that claim with knowledge that existed but whose existence is as surprising to phositas as the unobvious disclosure of the patent seems to serve no useful purpose.

  12. Gene Quinn March 15, 2011 4:31 pm

    Bobby-

    Not surprisingly, your answer is inadequate. You said earlier: “the question is, why should we give patents for cases where little to no invention actually occurred, or more precisely in regards to the subject of the i4i case, why should we uphold patents when that appears to be the case?”

    I asked for proof. Now you say: “… it would appear that the patent is not valid.”

    You still provide no proof. You say that it would appear not valid if the standard is preponderance of evidence. That is a conclusion, not proof. So again, I demand proof to support what you are saying. “It appears” and “I believe” are not proof.

    You have one of three choices at this point: (1) admit you have no proof and you are merely guessing; (2) simply cease commenting about something you don’t know and are only guessing about; or (3) continue to act like your conclusions are fact and get banned.

    The level of debate on the Internet is low, and I am not going to allow that to happen here. We will debate based on facts and analysis thereof. I am not going to tolerate your assertions that seem fact based that are nothing more than guesses, speculation and conjecture. If you want to guess, speculate and engage in conjecture fine, just explain that you have no knowledge of the matter but you assume based on nothing in particular that i4i’s patents are invalid because that fits with your desired narrative about patents and litigation.

    -Gene

  13. Jon Shields March 15, 2011 7:35 pm

    Gene, from what I remember from the Fed Circuit opinion and the briefs regarding cert, back when the product was on sale, the inventor wrote in a funding application to the Canadian government and a letter to investors that the product at issue did contain the patented invention. (If true, it is undisputed that the patent would be invalid.) Microsoft also presented evidence from the user’s guide and a former employee for i4i that the product contained the patent.

    i4i, on the other hand, said that the product at issue did not practice the patent at all, that the inventors admittedly exaggerated/lied in their statements to the contrary, and that without the actual source code (which i4i destroyed years earlier), there was simply no way Microsoft could prove the product contained the patent by clear and convincing evidence.

    I could be missing something, because this was only what was covered in the Fed Circuit opinion and the briefs for cert. However, if i4i actually had a strong case that their patent was valid with the preponderance standard, one would think they would have made it in their brief in opposition for cert. After all, if i4i’s patent was obviously valid even with a preponderance standard, this would be a poor vehicle for the Supreme Court to decide the underlying legal question, and they probably wouldn’t have taken the case in the first place.

    Also, if you are going to censor or ban people because you don’t think they sufficiently backed up their arguments (as if other people pointing that out isn’t sufficient for a reasonable conversation), you might want to make that more clear elsewhere on your site (so people can be sure to watch what they say when disagreeing with you).

  14. Jon Shields March 15, 2011 7:43 pm

    As for the underlying legal issue, you keep bringing up the point that there are always going to be references that the PTO considers but doesn’t indicate that they consider. This is undoubtedly true.

    But that completely misses the point — there also may be references that the PTO never actually considered. At all, in any way. (For example, in this case, it was literally impossible for the PTO to have considered the product in question.)

    What of those? Why should there be a higher standard for proving invalidity against those references, when they were not at all examined by the PTO? Why should a jury defer to the PTO for a determination on a reference when no determination was made at all for that reference?

    Your argument seems to be to avoid this question (or possibly to implicitly state that “who cares — that just means fewer patents will be invalidated”). In other words, you keep talking about (purportedly) negative side effects of a lowering of the standard for non-considered references, rather than actually addressing the argument in question. What is your response to the actual argument — about a reference that was not considered at all, in any way?

  15. Gene Quinn March 15, 2011 8:36 pm

    Jon-

    First allow me to address your last point. As I’m sure you realize, it is not about people disagreeing with me. I don’t even know why you would say that if you were being at all intellectually honest, and I don’t appreciate your condescending tone. There are plenty of people who disagree with me and can and do comment here. I am just not going to tolerate naked conclusions passed off as fact, which is what Bobby trades in. That isn’t the type of commenting I deem acceptable and if you (or anyone) has a problem with that there are plenty of outlets that deal with speculation, conjecture and outright inaccuracies. This is something Bobby does in thread after thread and he never provide any facts to support himself, just his opinions. In fact, he says things that are provably wrong and continues to state them over and over as if saying them more make the incorrect statement true.

    In terms of whether the product offered for sale would lead to the claims being invalidated, Microsoft couldn’t offer any proof that was the case. There was much made of the fact that the code that would have disposed of the issue one way or another didn’t exist any more, so Microsoft didn’t have any evidence on the point. It would have been more productive for Microsoft to make a spoliation argument, which I don’t believe they have made.

    Additionally, what difference would a preponderance of the evidence standard make for Microsoft in this case? If the product was sold more than 12 months before the patent was filed that is a problem. It either was or it was not.

    In terms of why i4i argued what they did, at trial the argument was made that given that Microsoft had not submitted any evidence to demonstrate the product was actually sold that there was no way there could be clear and convincing evidence established. So below the whole argument was about clear and convincing evidence, so I suppose they might not have had support on the record to make the argument you suggest, I don’t know.

    -Gene

  16. Gene Quinn March 15, 2011 8:43 pm

    Jon-

    My argument about the PTO considering references not indicated doesn’t miss the point at all. You miss the point by failing to appreciate the fact that the Patent Office is an administrative agency. According to the Supreme Court agencies are given tremendous deference so long as their actions are not arbitrary and capricious. The Patent Office has rules that dictate workflow and how much time examiners have to work a case. Those rules are clearly within the purview of the PTO to make and could never legitimately be considered to be arbitrary and capricious.

    So what about those things that they don’t consider? If the process is not arbitrary and capricious then it is within the ability of the USPTO to decide and the resulting decisions should be given tremendous deference regardless of whether a patent is granted or denied.

    And… by the way… despite what you say about me not addressing the “real issue” I have repeatedly. Perhaps you missed it in the article above, but if you reread it and the other articles I have written I point out over and over again that reexamination is the way to proceed. If the PTO hasn’t considered a reference and you want a lower standard then file a reexamination. If you choose to litigate there is no justification for not having a clear and convincing standard, or as Justice Cardozo (of the Supreme Court and writing for the unanimous court) said — “clear and cogent evidence.” So as it turns out I actually HAVE addressed the question that you say I have not addressed. If you want a lower standard the process for handling that exists.

    -Gene

  17. Jon Shields March 15, 2011 9:21 pm

    “In terms of whether the product offered for sale would lead to the claims being invalidated, Microsoft couldn’t offer any proof that was the case. There was much made of the fact that the code that would have disposed of the issue one way or another didn’t exist any more, so Microsoft didn’t have any evidence on the point.”

    As I wrote in my post, Microsoft definitely did have evidence. It was undisputed that the product was sold before the one-year date, so the only thing in dispute was whether the product practiced the patent. And Microsoft produced letters from the time of the invention by the inventors themselves (on an application for funding and a letter to investors) that claimed outright that the product practiced the invention in the patent. The only way i4i got around this was by arguing that the inventors simply lied in those letters. In addition, Microsoft apparently had the testimony of a former i4i employee and a user’s guide.

    What I just described in the above paragraph (from the Fed circuit opinion and briefs for cert) is not “no evidence.” It might not meet the C&C bar due to a lack of source code, but it is certainly not “no evidence.” Again, if what you are saying was correct (or if it was even arguably correct), don’t you think i4i would have made this point in their briefs to the Supreme Court? If what you are saying is even arguably correct (that Microsoft had “no evidence”), wouldn’t this case be a poor vehicle for this question? Why wouldn’t i4i point that out in its briefing to get the Supreme Court to deny cert?

    As for the censoring/banning stuff, I guess usually on blogs the solution to someone with a deficient argument that isn’t supported is to point out the deficiency of the argument (as opposed to deletion/banning). But this is obviously your blog, and you can obviously set whatever rules you want. I would just keep in mind that such a policy can have a tendency to reduce open discussion.

  18. Jon Shields March 15, 2011 9:33 pm

    “If the process is not arbitrary and capricious then it is within the ability of the USPTO to decide and the resulting decisions should be given tremendous deference regardless of whether a patent is granted or denied.”

    But for a reference that wasn’t considered, they did NOT decide whether a patent is invalid due to that reference. The decision wasn’t made. You are arguing for deference to a decision that wasn’t made.

    Of course the Patent Office is an administrative agency. So what? The “arbitrary and capricious” standard comes from the Administrative Procedures Act (which sets standards for court review of a decision by an administrative agency). But an invalidity decision in the course of a patent trial is not a review of an administrative agency determination under the APA. The “arbitrary and capricious” standard is completely inapplicable.

    The best you could possibly do is argue that general principles of agency deference should apply (as opposed to the APA “arbitrary and capricious” standard, which unquestionably does not apply). This argument (really a policy argument) might make sense for prior art that the patent office examined. But for prior art that the patent office did not examine, there is simply no decision to defer to in the first place. So that policy argument makes no sense. Just because the patent office decided that (say) 10 pieces of prior art do not invalidate a patent, does not mean that one additional piece of prior art that they did not examine does not invalidate the patent. There is no rationale at all for deferring to decisions that were never made.

  19. Jon Shields March 15, 2011 9:37 pm

    “If the PTO hasn’t considered a reference and you want a lower standard then file a reexamination.”

    In this case, re-examination isn’t even an option. Re-examination is not available for prior use claims. So that argument is wholly inapplicable to this case and similar prior use cases (at the very least).

    More generally, even in cases where invalidity is argued based on obviousness, there is no guarantee that re-examination will conclude before a verdict is reached. In fact, this will often not be the case. Even if an initial ruling from re-exam did invalidate a patent, the patentee would presumably appeal the result, potentially all the way up to the Supreme Court. That could take years. The litigation would almost certainly conclude before that (unless the judge decides to stay proceedings pending re-exam, which is not guaranteed at all).

    So even outside this case (where the re-exam argument is completely inapplicable), re-exam does not solve the problem here.

  20. Gene Quinn March 15, 2011 11:02 pm

    Jon-

    If people are not interested in commenting because here we require facts and analysis rather than naked conclusions then let folks go elsewhere.

    What Microsoft was unable to offer proof on was what was embodied in the product. The code underlying the product was not submitted in evidence because it didn’t exist.

    -Gene

  21. Gene Quinn March 15, 2011 11:14 pm

    Jon-

    You say: “You are arguing for deference to a decision that wasn’t made.”

    First, the decision WAS made by the Patent Office regarding how long an examiner has to spend on a file. So the examiner spends the allocated time and the rule is that if they cannot articulate a rejection in that time they issue a patent.

    Second, you continue to erroneously claim that the reference was not considered. Do you know that for fact? Can you say that the patent search done didn’t find the reference and simply didn’t find it valuable enough to include in the report? Of course you don’t. You are just guessing that the reference was not considered on any level by anyone.

    You say: “But an invalidity decision in the course of a patent trial is not a review of an administrative agency determination under the APA. The “arbitrary and capricious” standard is completely inapplicable.”

    That is just absurd. The court is most certain reviewing an agency determination and there is no justifiable reason to have a high standard to overcome a negative determination (i.e., patent denied) and a lower threshold when a patent is granted (i.e., infringement proceeding).

    You say: “But for prior art that the patent office did not examine, there is simply no decision to defer to in the first place.”

    Just because you keep saying that doesn’t make it true. We both know you are guessing. Why do you persist with guessing to support your argument?

    As far as reexamination goes, clearly reexamination handles the situation where the prior art is a patent or publication. Why you would pretend otherwise is beyond me. You complain that it would take too long, well that is the system we have and hardly a justification for pursuing reexamination. In fact, during many litigations reexamination is requested. On top of that, you claim that the litigation could be completed before the reexamination concludes, and then you pretend that an appeal could go to the Supreme Court. Please name a reexamination that has gone to the Supreme Court. It doesn’t happen. On top of that, litigation can (and should) be stayed during the pendency of a reexamination. So save the reexamination argument takes too long. Patent litigation takes too long and ultimately whether the litigation is first and the reexam second or vice versa there is always one piece of concurrent proceedings that lags.

    As far as public use and on-sale, you are correct. Those are not allowed in reexamination, which is a flaw. Of course, if they had the code (which is what Microsoft couldn’t provide to prove up that the product covered the claimed invention) the code could have been used as a publication perhaps, particularly if any part of the code incorporated open source components.

    -Gene

  22. Bobby March 15, 2011 11:18 pm

    Gene,
    I’m talking about why the preponderance standard is appropriate, not specifically i4i. The evidence for and against i4i has been presented, and I’m not particularly concerned with whether or not that particular patent is valid or not. However, the i4i case before the Supreme Court is important because SCOTUS will decide the appropriate standard of evidence, which is why I was speaking of the subject of the i4i case, not the specifics. I’m sorry if my wording was confusing, but you should be able to understand this, seeing as you’ve claimed that adopting the preponderance standard weakens every US patent. However, it seems to me that this weakening would be appropriate. Thus, let me rephrase the question in less ambiguous terms:
    Why should patents that, upon preponderance of the evidence, are not valid, be upheld?

    Preponderance is a balanced standard, in which neither the plaintiff nor the defendant has a real advantage. Beyond a reasonable doubt is a biased standard, in which the defendant has an advantage. We use that for criminal trials because we think wrongfully convicting the innocent is worse than letting criminals go free. If we use you 99% number, then theoretically for every 99 guilty we let free, we wrongfully convict 1 person. Clear and convincing is also biased, but not nearly as strongly. You used 75%, so that would be a theoretical 3 to 1 advantage. I don’t see a good reason why patent holders should be given a bias in their favor.

  23. Gene Quinn March 15, 2011 11:26 pm

    Bobby-

    You say: “Preponderance is a balanced standard, in which neither the plaintiff nor the defendant has a real advantage.”

    The problem is the patent owner has gone through a lengthy and expensive process to obtain the right in the first place, and the Supreme Court says that the Patent Office is entitled to extreme deference relative to their decisions. So a “balanced standard” is not appropriate given that the Supreme Court defers to the agency, at least when a patent is denied. If the Supreme Court wants to be intellectually honest and not defer to the Patent Office when they deny a patent then we can have a discussion about whether that makes sense, but having one standard when a patent is denied and another standard when it has been issued is rather ridiculous if you ask me.

    -Gene

  24. Jon Shields March 16, 2011 12:21 am

    “What Microsoft was unable to offer proof on was what was embodied in the product.”

    That’s different than what you said earlier (“no evidence”). They certainly had evidence (at least, the Fed Circuit thought so). It may not be in the form you like, or a form that would satisfy the C&C standard, but it was evidence all the same. Whether it is sufficient evidence to constitute “proof” obviously depends on the standard, and that is what is before the Supreme Court. If you were correct, and Microsoft unquestionably had no “proof” according to any standard, the Supreme Court would not have granted cert, since this would be a poor vehicle for deciding the question.

    “Second, you continue to erroneously claim that the reference was not considered. Do you know that for fact?”

    In this case, yes, as it is undisputed. In other cases, it might very well be disputed. But I am not asking you about those cases. I am asking you about cases where it is undisputed (like this one). I’m not sure why you keep changing the subject back to a reference that might have been considered, when I am talking about references that were clearly not considered. What happens then? What if re-exam doesn’t conclude before the verdict, and no stay was granted?

    “That is just absurd.”

    You may find it absurd (as you do several other aspects of patent law), but that does not mean it isn’t the law. My only point was that the APA “arbitrary and capricious” does not, as a matter of law, apply to validity determinations in a patent suit, since a patent suit is not a direct review of an agency action under the Administrative Procedure Act (as a review of a denial of a patent grant is). The PTO is not a party to a patent suit.

    “Just because you keep saying that doesn’t make it true. We both know you are guessing. Why do you persist with guessing to support your argument?”

    Again, the fact that the product in question here was not examined, is undisputed (and this is obviously not the only case where that is the case). So I am not “guessing” at all.

    “Why you would pretend otherwise is beyond me.”

    Why are you distorting what I said? I simply said re-examination does not cover prior use cases, which you concede. I am not “pretending otherwise” for cases other than prior use cases. But even for non-prior use cases, just because re-examination does cover other types of cases does not mean it is a sufficient substitute.

    “So save the reexamination argument takes too long. Patent litigation takes too long and ultimately whether the litigation is first and the reexam second or vice versa there is always one piece of concurrent proceedings that lags.”

    Isn’t that exactly my point? If re-exam lags behind patent litigation, the fruits of the re-exam do not reverse the litigation award (even if the patent is later ruled invalid). This is exactly why the argument that re-exam is a sufficient substitute to a litigation preponderance standard is a complete non-sequiter.

    If patent defendants were entitled as a matter of law to a stay pending re-examination, then you might have a point (at least with respect to non-prior-use claims). But they are not, and you don’t. A stay is often not given, and a defendant is certainly not entitled to one.

  25. Bobby March 16, 2011 6:21 am

    Gene,
    In order to validly get a patent, an inventor* has to have invented something that would be non-obvious to a PHOSITA given the prior art, and disclosed this invention in the proper manner. New evidence to consider for reevaluation is typically going to be more prior art or evidence that the inventor behaved improperly, which can pretty much only work against the inventor. The strongest case for the inventor is going to be the one presented to the USPTO, and further evidence isn’t conceivably going to strengthen that case. By contrast, new evidence may be discovered at any time, even after the expiration of a patent, that proves that someone else invented the same things before them or that the inventor broke certain rules, such as public usage outside of the one year grace period.

    *for the sake of simplicity, let’s consider the inventor, the assignee, and their attorney to be the same party.

    An interesting aside is that a study suggested that laymen don’t really differentiate between C&C and preponderance anyway, even when the legal differences are explained to them, which could mean that in practice, the SCOTUS ruling will cover a meaningless distinction without a difference. I accidentally came across it when looking at other things, so I might not be able to find it, but I’ll see if I can dig up the link again.

  26. American Cowboy March 16, 2011 9:18 am

    I’ll reiterate my point using the i4i facts: If we assume that one copy of some kind of software was sold more than a year before the filing date, but the court/jury cannot conclude whether it was the patented software or not, why shouldn’t we let the patent stand? Even if the court/jury thinks it probably was the patented software (i.e. the preponderance standard was met, but not the C&C standard), is the country really hurt by letting the patent stand? But for the patent, that information about the software would have been lost. Seems to me society is better off letting the patentee be rewarded for providing the public with a written description, enabling disclosure, and best mode disclosure, even if we suspect he should have done it sooner.

    I am talking policy here, which once you get to the Supreme Court level often dictates how the decision should come out. Which rule better serves society’s purposes?

  27. Gene Quinn March 16, 2011 11:10 am

    Jon-

    Not to get hype-technical, but I do think saying they had no evidence is the appropriate characterization despite your protests. In evidentiary terms there was no foundation laid, so there were conclusions but the veracity of those conclusions couldn’t be tested because the underlying evidence was not available. So no foundation was laid.

    Second, we have been having a discussion of the arguments in general and alternatively about the i4i case. You have gone to great lengths to explain that when the patent examiner doesn’t consider something the C&C standard shouldn’t apply. So I have explained that you cannot make that blanket conclusion you have been making over and over again. So now you seem to divert and say “I wasn’t talking about generally, I was talking about this case.” I think if folks look back at your comments it is fairly well clear that you were talking generally, which is why we started down the APA path and why in the article I talked about the reality of patent searching.

    With reexamination you are pretending and I am not at all distorting what you said. Do you not realize we can read back to see what you wrote? Of course, it is YOU who are taking what I said out of context and then trying to say I am distorting your point. You made weak, non-existent arguments about how long reexamination takes and how generally speaking requiring reexamination is not a solution. Of course it is a solution when there are patents and printed publications. On top of that litigation can be stayed (and probably should be stayed) pending the outcome of reexaminations. So your timing argument creates a crisis that doesn’t exist. It is not a non-sequiter, as you say. What I propose is an orderly and efficient process. You seem to prefer concurrent processes that waste time and money arguing about the same thing in multiple forums knowing full well that eventually the Federal Circuit will have to decide anyway. So what you are saying is not at all a solution, it leads to waste. Your argument is exceptionally weak, as evidenced by your logical construct that says if A and if B then naturally Z. What would come next would be C.

    I notice you haven’t mentioned my point that with code you do have some kind of a publication, particularly if any open source code is included, which seems virtually assured in any code these days. I suspect you don’t respond to that because it pretty much defeats your entire argument and demonstrates that reexamination would have been appropriate if Microsoft had the evidence… and we come full circle.

    -Gene

  28. Jon Shields March 16, 2011 12:06 pm

    “I think if folks look back at your comments it is fairly well clear that you were talking generally, which is why we started down the APA path and why in the article I talked about the reality of patent searching.”

    I am talking about generally (outside of just this one case), but (for the sake of argument) restricted to a subset of cases where it is undisputed that certain prior art was not considered. The Microsoft case here is an example of this, but it certainly isn’t the only one.

    “On top of that litigation can be stayed (and probably should be stayed) pending the outcome of reexaminations. So your timing argument creates a crisis that doesn’t exist.”

    Just because litigation CAN be stayed doesn’t mean litigation WILL be stayed. A patent defendant is not entitled to, and will in many cases not get, such a stay. So for those instances where no stay is granted, the timing argument does indeed apply.

    “I notice you haven’t mentioned my point that with code you do have some kind of a publication, particularly if any open source code is included, which seems virtually assured in any code these days. I suspect you don’t respond to that because it pretty much defeats your entire argument and demonstrates that reexamination would have been appropriate if Microsoft had the evidence… and we come full circle.”

    … what? There would only be a “publication” for a prior use claim if the product in the prior use claim had its source code published to the world. Why would a company necessarily do that? Again, in this particular case, it looks undisputed that the PTO could not have considered the product in question then and that no code exists now (so your argument completely fails). But why would your argument be any more relevant in the general multitude of cases where there is NO publication? Of course IF there is a publication, then there is a publication. That says nothing about the many cases where there is NO publication! This should go without saying, but not all code is open source (to say the least).

  29. Bobby March 16, 2011 12:40 pm

    American Cowboy,
    Your argument seems to be more based upon the scale instead of the degree of evidence, although I will acknowledge that operation on a greater scale tends to create stronger evidence. Even if we conclusively knew that a single copy of the software containing the patent was sold, the social costs and benefits would still be about the same. That specific issue might be better handled by adjusting how the grace period works. I’m not sure if the logistics could be worked out, but perhaps the ‘grace period’ should not be measured in time, but in number of offers, value of offers, or some other terms relative to how much business has been done before a patent application was filed. If such a system could work, it might even be biased in favor of the smaller firms that are generally agreed upon as being more innovative per $.

  30. American Cowboy March 16, 2011 1:28 pm

    I am not sure the scale/degree distinction holds. If there was large scale proliferation of information disclosing or suggesting the invention before the critical date, but now when you are trying to prove its existence you can’t find it, then it really does not matter how big the scale was — whatever scale it was is apparently lost in the annals of time, and the patentee should get some reward for making it permanent in the form of a patent that has a written description, enabling disclosure and best mode.

  31. Bobby March 16, 2011 9:44 pm

    American Cowboy
    It doesn’t seem that the i4i invention is lost outside of the patent, just that particular instance of it. The loss of that instance is not evidence that if i4i could not get a patent, this would have been hidden away, or that i4i would have been in a different line of business. It could very well be that the reason the code in question can’t be found is specifically because keeping it around would risk invalidating the patent.

  32. Stan E. Delo March 16, 2011 10:06 pm

    Bobby-

    All they would have to do to hide the source code is to encrypt it so nobody else could defrag it, so to speak. That still begs the issue of Why you are so altruistic to the public good, as it seems to me as if you would like patents and inventors to just go away, which I am not able to comprehend at all. I am imagining that it might be just because you don’t have a job right now, so don’t have anything better to do these days besides than torture us with your circular type of *logic*.

    Gene has gone Way Beyond being fair, as personally I would have cut you Out a long time ago. Your posts have almost always been anti-inventor, as opposed to anti-patent, which I happen to object to quite a lot. Why is it any business of yours what gets patented, unless you have invented something? Just for your Ivory Tower view of what is just for the public at large? Nope- Not like that at all, for reasons only you can seem to comprehend.

    Stan~

  33. Bobby March 16, 2011 10:22 pm

    Stan,
    “All they would have to do to hide the source code is to encrypt it so nobody else could defrag it, so to speak.”
    Do you have any evidence that they didn’t

    “That still begs the issue of Why you are so altruistic to the public good, as it seems to me as if you would like patents and inventors to just go away, which I am not able to comprehend at all.”
    It’s not altruistic. It’s more advocacy of free markets, and opposing active government policies that appear to be harming the public. Now, US patent policy, if we are to have one, has the Constitutional purpose for existing for the public’s benefit.

    “Your posts have almost always been anti-inventor, as opposed to anti-patent, which I happen to object to quite a lot. ”
    I don’t think I’ve expressed any sentiment against inventors. One concern I have with the patent system is that it often favors established interests, which can get in the way of innovators.

    “Why is it any business of yours what gets patented, unless you have invented something? ”
    Patent laws affect parties other than inventors. If patents only had an effect on the inventor, I probably wouldn’t have any concerns, but they aren’t limited to just them, and change things throughout the supply chain.

  34. Bobby March 16, 2011 11:15 pm

    Stan,
    Your talk of encryption was a bit vague, so In case you happened to mean that i4i would obfuscate and compile, that isn’t going to be particularly helpful in this case. If that were a technically adequate method, then only software with the source code available would be caught by software patents. Such methods may make casual detection more difficult, but if it were under close scrutiny, being searched for something specific, it would be detected anyway.

  35. Stan E. Delo March 17, 2011 10:24 pm

    Bobby-

    No it is not very strange or vague at all. During WWII the Nazis used an Enigma *machine* to randomly change the password, if you will, but the Brits and the Americans were able to find the lock, which of course the Germans and later the Japanese were to learn of much to their to regret a little later when American fighters came through and wrecked their *War Machine* I have written nearly nothing at all here about what I happen to think about the outcome of the pending court case, and I would like to suggest that you also exercise due care and caution before ^you^ decide to change settled law from about 200 years ago. Bobby Who? Funny that you refuse to answer that simple question. Why not? What have you invented and why should we haave to listen to your rants if you are just a junior computer hacker that has too much time on his hands?

    Stan~

    —– Original Message —–
    From: “IPWatchdog.com New Comment”
    To:
    Sent: Wednesday, March 16, 2011 9:15 PM
    Subject: [IPWatchdog.com | Patents & Patent Law] New Comment On: Supreme Court Patent Watch: i4i Files Brief in Microsoft Case

    > Author: Bobby
    > Comment:
    > Stan,
    > Your talk of encryption was a bit vague, so In case you happened to mean that i4i would obfuscate and compile, that isn’t going to be particularly helpful in this case. If that were a technically adequate method, then only software with the source code available would be caught by software patents. Such methods may make casual detection more difficult, but if it were under close scrutiny, being searched for something specific, it would be detected anyway.

  36. Bobby March 18, 2011 12:42 pm

    Stan,
    No, I meant what technical solution you intended to mean wasn’t clear. It seems you were either suggeseting that i4i could actually encrypt the source code, which would make it unable to be found even if their computers were seized for some reason, or they might be obfuscating and compiling a product that is distributed, with your line of thought being that if the source code is not available, nobody will know how it works.

    As for asking who I am and of what importance I am, I don’t find it relevant to the points I make and have no desire to engage in a pissing contest with you. That you feel the need to do so suggests underlying insecurity in your position.

  37. Blind Dogma March 18, 2011 1:47 pm

    and have no desire to engage in a pissing contest with you. That you feel the need to do so suggests underlying insecurity in your position.

    Actually Bobby, it does not. What it speaks to (if I may be so bold as to venture an opinion on Stan’s behalf) is that your pedigree and obvious lack of knowledge from the real world perspective of actual inventors (and on my behalf of any actual understanding of legal principles) speaks to an underlying invallidity in your position, rather than any self reflected “insecurity’ in Stan’s position (or mine from the legal world).

    It is no “pissing contest,” but rather an attempt to actually ground your “castle,” to provide some sort of foundation, other than the kitty litter sand you provide. If it seams like a “pissing contest’ to you, that indeed speaks more to the nature of kitty litter inherent in your stated positions.

    Also, you wouldn’t need to have your mind on “pissing’ so much if you did not over-imbibe on my Kool Aid.

  38. Bobby March 18, 2011 3:16 pm

    BD,
    What matters is not who makes the argument, but the argument itself. Stan is constantly trying to make things about me as a person instead of addressing the argument, even when there isn’t a conceivable relevance to the conversation at hand. I seem to recall him doing similar things with IANAE as well.

  39. Blind Dogma March 18, 2011 4:41 pm

    As explained Bobby, sometimes there may be relevance to the argument of the person making the argument.

    Your arguments simply are listing castles and Stan is actually attempting to somehow give you a semblance of credit (whereas I would simply not extend such a courtesy).

    As it were, your arguments still have the foundation of the sands of kitty litter.

  40. Stan E. Delo March 18, 2011 6:52 pm

    Bobby-

    BD nailed it precisely on my behalf. I’m afraid I was a little hot under the collar when I posted, which is generally not a good thing.

    Stan~

  41. Stan E. Delo March 18, 2011 11:48 pm

    Bobby-

    I see my rhetorical *Bobby who?* question seems to have confused you a bit. I wasn’t asking for your last name, but just suggesting that your opinions are worth very little when they are submitted by someone who refuses to be honest about who they are and what they stand for and why. If you try to call your SENATOR, for instance, and try to implore them to act on your behalf, they will most likely want to make sure that you actually ARE who you say you are.

    Stan~

  42. Bobby March 19, 2011 10:04 am

    Stan,
    I admit it would be dishonest to claim to be someone I am not, but I am not claiming to be anybody other than a member of the public, who is affected by the patent system. Identity is not relevant to whether a point is valid or not. Experience and formal qualifications can have a positive impact on one’s ability to make correct arguments, but they are by no means a prerequisite for being right, and may in some cases even act as a hindrance. Patent holders and patent attorneys may be in positions where what is good for society differs quite a bit from what is good for them, creating an incentive for bias and pretending that they can see the emperor’s new clothes. I prefer to keep my privacy as much as I can, and if you can’t respect that, than I’m afraid you aren’t worth having a discussion with.

    Now, to get back on to the subject, AC’s claim that the invention would have been lost without the patent isn’t substantiated. If we assume that i4i did sell/offer to sell the patented invention more than a year before the application was filed, then keeping the source code and even compiled binaries from that era would not be in their interests, because it would be positive proof that their patent was not valid. Thus, it is in their best interests for that particular implementation of the invention to be “lost in the annals of time.” Obfuscating and compiling the source code would not be particularly helpful if many binaries were still around and could be shown to be from that era. The binaries could be analyzed to see if they act in the same manner as what is described in the patent, and this is made much easier since we would know what to look for.

  43. Stan E. Delo March 19, 2011 7:36 pm

    Bobby-

    To repeat once again, why is this any of your business at all? Are you a patent attorney perhaps? I would bet not judging from what you have said so far. You keep talking about the greater public good, which from my perspective just seems like a convenient excuse to steal other peoples’ inventions without having to pay Anything for them. Inventions will simply never happen in your proposed scenario, many of which could/might have been very beneficial to us all.

    Brave new world and all like that~
    Stan~

  44. Blind Dogma March 19, 2011 8:59 pm

    Stan,

    May I suggest some shade under which you may find a cool breeze? I would also suggest a tall glass of refreshment (except I know that youknow what goes into these delectable treats).

    As for Bobby, please ignore his “I am just a common man” rhetoric. A common man would not be so brazen to build castles upon sandy kitty litter. It is obivuos that Bobby has an anti-patent agenda and cares not to understand either patent law, or the undertakings of actual inventors (lest he become “biased” in the process of his enlightenment – in other words, the truth would get in the way of his Dogma).

    Bobby will not open his ideas, because his dream-world is too comforting for him. It is not a matter of a Brave New World, but rather, his ideal world.

    People only get in the way of his way of thinking of humanity.

  45. Blind Dogma March 19, 2011 9:00 pm

    “Bobby will not open his ideas,” should read “Bobby will not openhis eyes”

  46. Stan E. Delo March 19, 2011 11:20 pm

    “Bobby will not open his ideas,” should read “Bobby will not open his eyes”

    BD-
    I have noticed several times in the past that some folks really enjoy seeing something new and much better than what has gone before, while others can only see the down side of an invention.Asking for a 5% royalty fee doesn’t seem to be too unreasonable if you have spent 5 years developing the technology. Where is the problem with that? The licensee and customers get a much better product, and if the licensee is able to get a granted patent in less than 2 years, what’s not to like about that situation? I will be required to show every best nut and bolt scenario that I can craft, as well as why it happens to work the way it does, which is no small feat in and of itself. The eventual claims will perhaps be very interesting, to say the least of it. Just a spec so far, as I am still experimenting with a 12-foot diameter wind turbine prototype to see what it does or does not do. It is a fairly simple machine, but it seems to be have functions that are very difficult to quantify.(As in try it in the real world.)

    Stan~

  47. patent enforcement March 20, 2011 1:00 am

    I like Patently-O’s take on i4i’s brief. Professor Crouch charts a course by which i4i could conceivably win. He points out: “Although i4i argues that the level of proof should remain clear-and-convincing, it also admits that the Federal Circuit has consistently held that the burden can be more easily satisfied with prior art that the PTO never considered…This argument apparently works for i4i because, although the jury might not have been instructed on the proper appliation of the standard, Microsoft has not preserved that issue for further appeal.”
    Perhaps, then, i4i can have it both ways.
    http://www.youtube.com/watch?v=2OfoURsNBl8

  48. Bobby March 21, 2011 9:00 am

    Stan,
    I’ve already explained why it’s a concern. Patent affect parties other than inventors, and I contend that at the very least, the effect of many aspects of our patent system result in net harm, and thus ought to be changed.

    “You keep talking about the greater public good, which from my perspective just seems like a convenient excuse to steal other peoples’ inventions without having to pay Anything for them”
    First of all, ideas can’t be stolen. Secondly, patents in the US are supposed to be for the public good.

    “Inventions will simply never happen in your proposed scenario, many of which could/might have been very beneficial to us all.”
    This isn’t even a slightly reasonable position. The idea has NEVER been that invention won’t happen without patents because it’s clearly untrue. The idea is that MORE invention will happen with a finely tuned patent system.

    Also, you’ve failed to address the point at hand, derailing this conversation by making it about who is arguing instead of the actual points being contended. It appears you lack a competent rebuttal, and are covering that with personal insults.