This spring, in Microsoft v. i4i, the United States Supreme Court will review an issue fundamental to the enforceability of patents – the proper evidentiary burden for proving that a patent is invalid. Microsoft is urging the Court to lower the challenger’s burden from a showing by “clear and convincing” evidence to a showing by a “preponderance” of the evidence.
The higher clear and convincing evidentiary burden for proving invalidity gives deference to the substantive analysis performed by the US Patent and Trademark Office (USPTO) during patent examination. Under this standard, patents provide a degree of certainty for rights holders, which is very important for innovative businesses whose assets are increasingly held in the form of intellectual property rights. The preponderance standard, on the other hand, would pit the challenger’s evidence equally against the patentee’s, as if the expert examiners at the USPTO had never seen the patent.
In our amicus brief in this case, we argue for targeted jury instructions to ensure all relevant information about patent validity – such as whether the challenger’s prior art had been considered by the USPTO during patent examination – is properly weighed by the jury and placed in the proper context, so invalid patents do not remain in force. A full and fair opportunity to invalidate patents is as important to promoting innovation as a patent system that provides incentives to inventors through valuable and stable patent rights.
Another approach originally presented by Microsoft is a “dual standard,” which applies a preponderance burden to invalidity challenges based on prior art not considered by the USPTO, while adhering to the clear and convincing burden for prior art that was already considered. As we explain in our amicus brief, we believe a dual standard is unworkable, in part because it would confuse jurors.
Some amici have argued that the lower preponderance burden is appropriate because the USPTO is struggling and issues “bad” or low-quality patents. But lowering the burden does not help the USPTO or improve the patent system. Improving patent quality should begin at the beginning, with high quality patent applications and patent examination. As regular readers of this blog know, IBM strongly supports initiatives such as Peer to Patent which are designed to improve the examination process and help the USPTO do what it is designed to do – issue valid patents.
For Supreme Court term that has taken on numerous patent cases, this case may be the one of the most important, and thus the most compelling reason to keep our attention on the Court this spring.