April 15, 2011, 9:25 PM — Patent attorneys and inventors of all types are closely watching a Microsoft case that the U.S. Supreme Court will start to consider on Monday.
The case, which centers on a technology patent assigned to i4i that almost forced Microsoft to stop selling its flagship Word software, could have broad implications in the way patents are awarded and upheld, experts said.
Currently, when a patent holder accuses someone of infringing a patent, the burden is on the infringer to prove with "clear and convincing evidence" that the patent is invalid, said Sarah Columbia, head of the intellectual-property litigation practice group at McDermott Will & Emery LLP.
In hearing this case, the Supreme Court could decide to lower that standard of proof, she said.
While arguing against the validity of the i4i patent, Microsoft presented new evidence that had not been considered by the U.S. Patent & Trademark Office when it granted the patent. Microsoft argues that with the new evidence, the burden of proof should be lowered to "a preponderance of the evidence," rather than the stricter clear and convincing evidence, Columbia said.
She envisions three possible outcomes from the Supreme Court. At one extreme, it could lower the standard of proof for patents so that accused infringers have only to prove by a preponderance of the evidence that a patent is invalid.
Alternatively, the court could lower the standard of proof only in situations where an infringer presents new evidence that the patent office has not already considered, as Microsoft has done.
A third option is to leave the current required standard of proof unchanged.
If the court does lower the standard, it would become easier to invalidate patents, Columbia said. "Over time, if the burden of proof is lowered to prove invalidity, you'll find more cases where patents are found to be invalid," she said.
She and others describe other potential consequences.
"There is already enormous pressure for patent attorneys to file every piece of prior art they can think of. If you create this double standard, where art that's not before the patent office somehow weakens the patent, there's even more pressure to [file every piece of prior art]," she said. "We already have a situation where the examiners are fairly overwhelmed with the volume of work. I think we're going to make it worse" if the Supreme Court sides with Microsoft.
I4i paints a more dire picture. "The implications are gargantuan," said Loudon Owen, chairman of i4i. "The whole system for innovation in this country is predicated on the patent system. If patent rights are eroded to where there's no point in having a patent because you can't enforce it, that will disrupt policy and the practice of disclosure."