Microsoft has lost its appeal to the US Supreme Court.
Microsoft had argued it should have to prove its claim that i4i’s patent was invalid by “a preponderance of the evidence”.
Under the US Patent Act, however, a patent having been granted after examination by the Commissioner is “presumed valid”. The US Supreme Court has ruled that “presumed valid” in this context had a settled common law meaning which Congress was presumed to have adopted. As a result, Microsoft had to make its invalidity case “by clear and convincing evidence”. That is, there is a strong presumption of validity in the USA.
Initial commentary by Patently-O.
The case initially attracted international attention as Microsoft was ordered to stop selling versions of Word which had the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML. This presumably means that Microsoft will have to pay the US$290 million damages awarded against it for infringement.
Under Australian law, a person alleging a granted patent is invalid has the onus of proof on the usual balance of probabilities standard.
A person opposing the grant of a patent, however, has to establish their case on the clear and convincing or practically certain standard. The exposure draft of the “Raising the Bar” amendment legislation proposes changing that standard, and the standard for acceptance, to the balance of probabilities standard too. (See items 14 and 15 of Sch. 1 (pdf) and pp 26 – 30 of the (draft) EM (pdf).
Patently-O speculates from the voting alignment of the current Court that the US Supreme Court is now shifting “to the right” or “pro-patentee”.