The Supreme Court grants certiorari to determine whether invalidity must be established by clear and convincing evidence particularly when the invalidating prior art was not presented to the PTO.

The Supreme Court grants certiorari to determine burden of proof for challenges to patent validity. i4i alleged that Microsoft’s Word program infringed its patented method for editing markup-language documents. The Federal Circuit affirmed a jury verdict that the patent was not invalid based on the on-sale bar, specifically, i4i’s sale of the S4 product more than a year before the application for the patent.

i4i had failed to disclose the S4 product to the PTO. Although i4i had destroyed the S4 product long before the litigation, Microsoft presented evidence that the S4 product embodied the patented method. This evidence included contemporaneous documents written by the inventor stating that the S4 product embodied the patented method and the testimony of a former i4i employee concerning the S4 product’s functionality. The inventor testified and refuted this evidence, claiming that the S4 product did not embody the patented method.

Over Microsoft’s objection, the trial court instructed the jury that Microsoft had to prove that the patent was invalid by clear and convincing evidence. Further, i4i’s counsel argued to the jury that because the S4 product was not available, Microsoft could not meet this burden. The jury found the patent was not invalid and was infringed. On appeal, the Federal Circuit affirmed that invalidity must be proven by “clear and convincing evidence.”

Microsoft filed a petition for writ of certiorari. In its petition, Microsoft argued that in KSR International Co. v. Teleflex, Inc., the Supreme Court noted that the rationale for the Federal Circuit’s “clear and convincing standard” “seems much diminished” when an invalidity defense rests on prior art not presented to the PTO. Further, Microsoft contended that before the creation of the Federal Circuit, the regional circuits had held that a heightened standard was not appropriate when the prior art was not presented to the PTO. Microsoft’s position was supported by multiple amici. In opposition to the petition for certiorari, i4i argued that the “clear and convincing standard” was statutory in nature, and that existing Federal Circuit precedent already relaxes this standard for prior art not provided to the PTO. Further, i4i contended that any change in the standard should come from Congress.

The Supreme Court granted the writ. Chief Justice Roberts recused himself from the case. A decision is likely by the end of June 2011.

A copy of the order granting the writ of certiorari can be found here.

A copy of the Federal Circuit's opinion can be found here.

Click the following links to view a copy of the petition for writ of certiorari, the brief in opposition to the petition, and the reply in support of the petition.