Supreme Court Upholds the Clear and Convincing Standard for Invalidity Defense to Patent Infringement

In Near Unanimous Decision, Supreme Court Confirms Established rule    

In Microsoft Corp. v. i4i LTD. Partnership, 179 L. Ed. 2d 770; 79 U.S.L.W. 3567 (2011), i4i owns a patent for an improved method for editing computer documents.  i4i brought suit against Microsoft for willful infringement of that patent. Microsoft counterclaimed and sought a declaration of invalidity under 35 U.S.C. §102(b), claiming that the “invention” had been on sale in the United States for greater than one year prior to the filing of the patent.

Specifically, the parties agreed that a program known as S4 was sold by i4i in the Untied States for greater than a year prior to filing of the patent in question. The parties however, disagree that S4 embodied the invention claimed in i4i’s patent.  Moreover, since the source code for S4 was destroyed, Microsoft could only rely on testimony to prove what S4 embodied.  At the conclusion of trial, Microsoft objected to i4i’s proposed jury instruction that Microsoft was required to show that the S4 program anticipated the claimed invention by clear and convincing evidence, and relied upon the fact that the S4 program was never before the United States Patent and Trademark Office (USPTO) while the application was pending.   The District Court overruled Microsoft’s objection, and the jury found both infringement and willful infringement of the i4i patent.  The Federal Circuit affirmed the District Court’s decision relying on established case law. Continue reading