Microsoft Corp. v. i4i …. the short version.
Microsoft v. i4i (or Microsoft v. small Toronto technology company) has been making big waves in the patent law community. Here is the gist of it.
The United States Supreme Court has decided, 8-0, no Justice Roberts, that the Patent Act requires invalidity to be proven by “clear and convincing” evidence. Microsoft Corp. v. i4i Limited Partnership.
Justice Sotomayor, writing for the court said that when Congress stated in § 282 of the Patent Act of 1952 that a patent is “presumed valid,” the presumption of validity had a “settled meaning.” This meaning, according to which “a defendant raising an invalidity defense bore ‘a heavy burden of persuasion,’ requiring proof of the defense by clear and convincing evidence.”
The Court concluded that the Act codified the settled meaning of the presumption, including the heightened standard of proof, regardless of the fact that § 282 of the Patent Act “fails to reiterate it expressly.”
The Court also rejected Microsoft’s alternative argument that the preponderance standard should at least apply in those situations where the evidence relied on to establish invalidity was not before the PTO. The court stated that “the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate,” and that it may “consider that fact” when deciding whether the clear-and-convincing standard has been met.