U.S. Supreme Court justices questioned Monday whether they should side with Microsoft and weaken the legal standard needed to invalidate a patent, with some justices suggesting there are alternatives to changing established law.
But in a case that could make it easier for defenders in infringement lawsuits to invalidate patents, justices also asked tough questions of Seth Waxman, the lawyer for software vendor i4i, which sued Microsoft in 2007 over its patent on an XML editor.
Microsoft, which lost a $290 million decision in a U.S. district court, has argued that i4i began selling a product with the XML editor included a year before it applied for the patent. The U.S. Patent and Trademark Office (USPTO) didn't consider this so-called prior art in granting the patent, but the district court should have, Microsoft lawyer Thomas Hungar argued Monday.
Instead of requiring Microsoft to present "clear and convincing evidence" that the patent was invalid, the district court should have allowed the jury to consider a less difficult standard, the "preponderance" of evidence, Hungar said.
But recent U.S. case law seems to support the tougher standard, Justice Ruth Bader Ginsburg told Hungar. Ginsburg pointed to a 1934 case, RCA v. Radio Eng'g Labs, as establishing a long tradition of requiring patent defendants to present clear and convincing evidence that a patent is invalid.
But in the Patent Act of 1952, the applicable law, Congress did not require a "clear and convincing" evidence standard, Hungar argued. That standard has "no moorings in the statute and no moorings in common sense," he said.
Justice Stephen Breyer suggested there may be strong reasons to stick with the "clear and convincing" standard. When the USPTO grants invalid patents, it hurts the U.S. economy, but having a patent ruled invalid does irreparable damage to the patent holder, he said.
"What we're trying to do is get a better tool ... to separate the sheep from the goats," Breyer said. "What is that tool?"
Breyer questioned whether Microsoft's problem would be resolved through the current patent re-examination process at the USPTO and judges that keep a tight rein on juries.
The re-examination process doesn't consider prior art and several other reasons to invalidate a patent, Hungar said.
Breyer argued the other side of the point with i4i's Waxman. "In today's world, where nobody understands these technologies anyway," it would be worse for the USPTO to grant bad patents than to overturn some legitimate patents, he suggested.
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