But Indicates That Juries Should Be Instructed That This Burden Is Easier to Carry When the PTO Did Not Consider Material Evidence
On June 9, 2011, the U.S. Supreme Court issued its highly
anticipated decision in Microsoft Corp. v. i4i Limited
Partnership. All eight participating justices (Chief Justice
Roberts was recused) affirmed the Federal Circuit's
longstanding requirement that parties challenging a patent's
validity in litigation must prove the patent invalid by "clear
and convincing" evidence. That requirement applies, the Court
held, even in cases where the Patent and Trademark Office
("PTO") did not consider evidence and arguments made in
litigation. Seven justices, led by Justice Sotomayor, held that
Congress had expressly adopted a "clear and convincing
standard" in § 282 of the Patent Act, 35 U.S.C. §
282, by using language that the Court's earlier precedents had
equated with that standard. Justice Thomas concurred in the result,
reasoning that Congress presumably followed the existing common law
standard when adopting § 282.
Although the decision marks an important victory for patentees, the
day was not a total loss for challengers. The Court recognized that
the "clear and convincing" evidentiary standard may be
easier to carry when, as is often the case, the PTO did not
consider material evidence of invalidity presented in litigation.
Moreover, the Court indicated "that a jury instruction on the
effect of new evidence can, and when requested, most often should
be given." Although the majority did not craft an instruction
itself, it noted that "[w]hen warranted, the jury may be
instructed to consider that it has heard evidence that the PTO had
no opportunity to evaluate before granting the patent," to
decide whether the evidence is "materially new," and
"to consider that fact when determining whether an invalidity
defense has been proved by clear and convincing evidence." In
so doing, the Court appears to have disagreed with the Federal
Circuit's 2007 holding in z4 Technologies v. Microsoft
that district courts may refuse such instructions on grounds that
they may confuse the jury and detract from the "clear and
convincing" standard.
Justice Breyer's concurring opinion, joined by Justices Scalia
and Alito, emphasized that the "clear and convincing"
evidentiary standard applies only to questions of fact, not matters
of law, and that many issues in patent cases involve application of
law to fact. The concurring Justices encouraged district judges to
give precise jury instructions and to require detailed special
verdict forms to ensure that predicate fact findings and ultimate
legal conclusions are separated.
Background
i4i sued Microsoft for infringing i4i's patent on a method
for editing computer documents in which the content is stored
separately from metacodes. One of Microsoft's defenses at trial
was that the claims were invalid under 35 U.S.C. § 102(b)
because i4i had sold a product embodying the claimed invention more
than a year before applying for its patent. The PTO did not
consider that issue when allowing the patent. Because the
software's source code had been destroyed before the
litigation, the parties' dispute over what i4i had sold before
the critical date turned largely on the testimony of the named
inventors.
At trial, Microsoft asked the district court to instruct the jury
that Microsoft needed to prove its on-sale bar defense only by a
preponderance of the evidence, not by "clear and
convincing" evidence, because the PTO had not considered
whether the on-sale bar applied. The district court disagreed and
instructed the jury that "clear and convincing" evidence
was required. The jury found for i4i and awarded it $240 million.
The district court upheld that verdict.
Microsoft appealed on numerous grounds. Most relevant here, it
challenged the district court's requirement of "clear and
convincing" evidence of invalidity, urging the Federal Circuit
to heed the Supreme Court's observation in its 2007 decision in
KSR International Co. v. Teleflex Inc. that "the
rationale underlying the presumption [of validity]—that
the PTO, in its expertise, has approved the claim—seems
much diminished" when a court considers prior art that the PTO
has not considered. The Federal Circuit disagreed, however, and
reiterated that a challenger must always prove invalidity by clear
and convincing evidence.
With the backing of many leading high-technology companies,
Microsoft took the case to the Supreme Court, and the Supreme Court
granted certiorari. Before the Supreme Court, Microsoft not only
challenged whether the "clear and convincing" standard
applies in cases where the PTO did not consider evidence of
invalidity argued at trial; it argued for a preponderance standard
for all invalidity defenses in all cases.
The Primary Holding: The "Clear and Convincing" Standard Applies in All Cases
Justice Sotomayor wrote the
opinion of the Court, joined by all the Justices except Chief
Justice Roberts, who recused himself, and Justice Thomas, who
concurred on other grounds. The decision began by focusing on the
language of the governing statute, 35 U.S.C. § 282, which
reads, in relevant part: "A patent shall be presumed valid. .
. . The burden of establishing invalidity of a patent or any claim
thereof shall rest on the party asserting such
invalidity."
The Court acknowledged that the statute "includes no express
articulation of the standard of proof" but reasoned that
Congress had nonetheless chosen one by using the phrase
"presumed valid." The Court concluded that its precedent
before the current language was adopted in 1952, most notably its
1934 decision in Radio Corporation of America v. Radio
Engineering Laboratories, Inc., had given "presumed
valid" a settled meaning in patent law, i.e., requiring proof
of invalidity by clear and convincing evidence. Because a statute
is normally presumed to incorporate the established meaning of
common law terms it employs, the Court held that § 282 had
codified the prevailing "clear and convincing" standard
of proof. The Court rejected Microsoft's contention that
pre-enactment case law had not applied a consistent standard. The
Court recognized that its construction implied some redundancy in
the statutory language, but it pointed out that all the proposed
constructions were redundant to some degree.
The Court then turned to whether the same standard should apply
where the PTO had not considered the evidence of invalidity
presented at trial, and held that it should. Although Microsoft
argued that the administrative deference rationale behind the
"clear and convincing" standard did not apply, the Court
concluded that neither the pre-enactment case law nor the statute
suggested a standard of proof that "would rise and fall with
the facts of each case." If Congress had intended such an
approach, the Court reasoned, Congress would have said so
expressly. The Court also expressed concern that a standard of
proof that varied depending on the facts of the case would be
impractical, in part because it is not always clear when an
examiner has considered a particular issue.
The Court did, however, endorse the "commonsense principle . .
. that new evidence supporting an invalidity defense may 'carry
more weight' . . . than evidence previously considered by the
PTO." In particular, "if the PTO did not have all
material facts before it, its considered judgment may lose
significant force," and "concomitantly, the
challenger's burden to persuade the jury of its invalidity
defense by clear and convincing evidence may be easier to
sustain." Accordingly, the Court concluded, "a jury
instruction on the effect of new evidence can, and when requested,
most often should be given." While not suggesting "any
particular formulation," the Court provided a road
map:
[T]he jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.
The Court held, however,
that Microsoft could not complain that the district court gave no
such instruction in this particular case because Microsoft had not
requested one from the district court.
Finally, the Court summarized the policy arguments by the parties
and their amici for and against each standard of proof but declined
to weigh them. Because Congress had never lowered the standard of
proof or even considered a proposal to do so, the Court deemed
itself bound to adhere to the traditional "clear and
convincing" standard. The Court thus voted to affirm the
Federal Circuit's judgment.
Justice Thomas's Concurrence in the Result
Justice Thomas concurred only in the result and filed a separate opinion to explain that he disagreed with the Court's premise that "presumed valid" had a fixed meaning in 1952 that § 282 had codified. Nonetheless, he agreed with the majority's holding that the "clear and convincing" evidentiary standard should apply in all cases on the ground that the statute's silence left the existing common law rule unaltered.
Justice Breyer's Concurrence Regarding the Separation of Legal and Factual Issues
Justice Breyer, joined by Justices Scalia and Alito, wrote a brief concurrence to underline that the "clear and convincing" standard of proof applies only to questions of fact and not to questions of law. The concurring Justices emphasized that although the "clear and convincing" standard is used to reach factual findings, that evidentiary standard has no bearing on the application of law to the facts found—including the ultimate question of validity. They suggested that courts can separate the fact-finding and law-applying functions and avoid granting legal protection where none is due by using clearer, case-specific jury instructions and by using detailed special interrogatories and verdict forms so that the court can apply the law to specific fact findings.
Significance of the Decision
The Supreme Court's holding will be a great relief to
patentees because it ensures that the "clear and
convincing" evidence standard will continue to apply in all
litigation cases, regardless of whether the PTO considered the
evidence and arguments raised at trial. The result is a major
disappointment for the defense bar, which was hoping for a tectonic
shift benefiting challengers.
On the other hand, the defense bar can take some solace from the
Court's assertion that juries not only may, but should, be
instructed that challengers can more easily carry their burden of
proving invalidity when they rely on evidence that the PTO did not
consider. The Federal Circuit's 2007 decision in z4
Technologies v. Microsoft declined to require such an
instruction, warning that it might confuse the jury and lead it to
think that less than "clear and convincing" evidence was
required. This decision appears to undermine that holding, and
challengers presumably will once again ask for such instructions in
cases involving grounds of invalidity that the PTO did not fully
consider. The practical impact remains to be seen, but a jury
instruction that the burden of proving invalidity is "easier
to sustain" and that the PTO's "considered judgment
may lose significant force" when the PTO did not consider an
issue should at least help challengers deflate the usual
instructions that patents are presumed valid and must be proven
invalid by "clear and convincing" evidence. Indeed, given
the potential practical impact of such instructions, their wording
will likely be heavily litigated.
Although the decision focuses primarily on patent litigation, it
may also have an effect on patent prosecution. In Therasense v.
Becton, Dickinson, the en banc Federal Circuit
recently adopted a more rigorous standard for proving the
"materiality" required for inequitable conduct. One of
the animating reasons was a concern that applicants were burdening
the PTO with too much information in an effort to avoid inequitable
conduct charges. Ironically, the decision here, just days later,
may push in the opposite direction: applicants will continue to
have an incentive to disclose prior art to the PTO so that they can
avoid an "easier to carry" instruction.
Finally, Justice Breyer's concurrence is significant even
though it did not command the votes of a majority of the Court. As
the concurring Justices observed, evidentiary standards apply only
to factual issues, not to the application of law to fact.
Historically, the Federal Circuit has treated anticipation as a
fact question, but obviousness as a legal question; it has treated
the adequacy of a written description as a fact question, but
enablement as a legal question. As a practical matter, however, all
these issues tend to have both factual and legal components and are
thus mixed questions of fact and law. The concurring opinion may
add force to challengers' arguments that judges must make the
ultimate legal determinations regarding the validity of patents,
even though they must accept jury fact findings that are supported
by substantial evidence. The concurrence may also encourage
district courts to adopt more detailed special verdict forms so
that the courts can apply the law to particular facts expressly
found rather than relying on findings presumed to be implicit in
more general verdicts.
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