Today, the Supreme Court granted Microsoft’s petition for cert. in Microsoft v. i4i. Microsoft asked the Supreme Court to answer the question of whether or not a defendant who asserts patent invalidity based on art not considered by the Patent Office must still overcome the presumption of validity by “clear and convincing evidence” or whether some lower standard of proof, e.g., preponderance of the evidence, should apply.
Early in its history, the Federal Circuit established the clear and convincing evidence standard as the burden of proof required for a defense based on invalidity of the asserted patent, and has adhered to it for more than twenty-five years. The best that defendants have had to work with is language in some decisions to the effect that, while the burden of proof is not lowered in cases in which the asserted art was not before the Examiner, it may be easier for the defendant to meet its burden in such cases.
Over the years, it has become conventional “wisdom” that, if the art was cited to or by the Examiner, it is of no value in an invalidity defense. For years, I have had to explain to litigators that art before the Examiner will still be considered, and can in fact be relied upon to invalidate a patent, particularly when the Examiner misunderstood the content of the art, and/or the attorney mischaracterized it.
However, even with the help of seasoned appellate teams, it is difficult to envision a decision on the question that will be as nuanced as both prosecutors and litigators would wish. All prior art is not created – or presented – equally. In lowering the bar, how much weight should (semi-)cumulative art be given and, after all, when is art that is not identical in text so cumulative that it is entitled to no such weight? And how “before” the Examiner must the art be? Is a full paper less weighty if the abstract has been cited? Is a publication cited in an IDS in the parent application entitled to more weight than a publication cited three applications back in a chain of CIPs and divisionals? What about art that was before an earlier Examiner who leaves the PTO but was not re-cited to the replacement Examiner?
No doubt this decision will be a “game-changer,” but the design of the field we will be playing on in the future is back on the drawing board.