Editor’s Note: This blog post was co-authored by Bruce Sewell, Senior Vice President and General Counsel, Apple; Mark Chandler, Senior Vice President and General Counsel, Cisco; Ted Ullyot, Vice President and General Counsel, Facebook; and Brad Smith, Senior Vice President and General Counsel, Microsoft.
Today, the Supreme Court will hear argument in Microsoft v. i4i, which industry watchers have described as the most important and far-reaching intellectual property case of the year. As general counsels for prominent innovators in the United States today, we could not agree more.
Photo caption: From Left to Right: Isabella Fu, associate general counsel, Microsoft; David Howard, corporate vice president and deputy general counsel for litigation, Microsoft; Matt Powers, partner, Weil Gotschal; Andrew Culbert, associate general counsel, Microsoft; Tom Hungar, partner, Gibson, Dunn & Crutcher; Brad Smith, General Counsel and Senior Vice President, Legal and Corporate Affairs, Microsoft; Ted Olson, partner, Gibson, Dunn & Crutcher, on the steps of the United States Supreme Court after the Microsoft vs. i4i hearing on Monday, April 18, 2011.
The case revolves around the standard of proof that must be met by those who seek to challenge the validity of a patent in court. The law states that patents, which are generally issued by the Patent Office solely on the basis of supporting information submitted by the patent applicant, are to be presumed valid. Since the 1980s, however, the Federal Circuit Court of Appeals, which oversees patent appeals, has required a challenge to a patent’s validity be proved by a heightened standard of “clear and convincing evidence,” as opposed to the lower “preponderance of evidence” standard routinely applied in civil lawsuits. The issue is far more than a technicality, as it can have far-ranging effects on innovation and technology businesses.
While patent law does not require it, Congress never intended it, and Supreme Court rulings have questioned it, the “clear and convincing” standard has been applied to all challenges – even when the patent examiner who approved a patent application never considered the evidence being used to prove that the patent is invalid. Unfortunately, the use of this heightened standard in these circumstances creates courtroom conditions that protect bad patents and, in some cases, make it easy to game the system. Ultimately, the harm extends to our national climate for innovation, and the ability for great inventions to support great businesses.
The case before the Supreme Court in fact illustrates this problem. In 2009 in a trial in the Eastern District of Texas, Microsoft argued that a patent held by a Canadian company known as i4i is invalid because the invention covered by the patent was already on public sale by i4i in a software product more than a year before the patent application was even filed. Under patent law, no patent should be issued in such a situation.
However, in i4i’s case, the key evidence of those sales had never been considered by the U.S. Patent and Trademark Office. The evidence was unavailable because i4i had itself discarded it. i4i’s lawyers then argued to the jury that because this evidence was missing, Microsoft could not prove its invalidity case under the heightened “clear and convincing” standard. The jury agreed, and the Federal Circuit affirmed on appeal.
The problem is the standard. Under normal “preponderance of evidence” rules for civil cases, judges and juries can simply decide which side has the best case on the merits, even while presuming that a “tie goes to the patent.” But by requiring patent cases to be adjudicated under a special “clear and convincing” standard even when the Patent Office was unaware of key prior-art evidence, a thumb is placed on the scales of justice. This increases the risk that companies will skate by with a dubious patent, and hold up and tax innovation by others.
This case is about preventing abuse of our patent system and the drag on innovation that results. Our patent law is founded on a basic principle that both granting genuine patents and weeding out bad patents are important to promoting innovation. Under the Constitution, the purpose of patents is to ‘promote progress in science and the useful arts.’ That purpose is frustrated when owners of patents which do not meet the tests the law sets are able to use an artificially high burden of proof to enforce an unwarranted monopoly over competitors and consumers.
That’s why Microsoft’s petition has earned the support of Apple, Facebook, Cisco and dozens of other leading companies who depend on creativity to survive. We are users, defenders, and believers in the U.S. patent system. As companies who have relied on inventions to create exciting and successful products, and who rely on the patents we hold to build businesses with those products, we know from our experience that a balanced and healthy patent system is a requirement for innovation to flourish and industries to grow.
Allowing a bad patent to stand simply because it’s propped up by the wrong courtroom standard will in fact undermine the system the Federal Circuit was created to help protect. That outcome would weaken our patent system and hamper the innovation our economy needs.