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Supreme Court gives Microsoft small victory, say patent experts

Gregg Keizer, Computerworld | June 10, 2011
Editor's note: An earlier version of this story incorrectly identified David Long, a partner at Dow Lohnes. The story has been updated with the correct information.

That was Microsoft's contention during its appeals: That the USPTO's investigators overlooked or disregarded evidence that other patents preceded i4i's, and thus the Canadian company's patent should be ruled invalid.

Sotomayor's opinion expressly said that juries could be instructed to weigh such failings of the USPTO.

"When 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," she wrote. "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."

Although Microsoft couldn't profit from that in retrospect -- the company did not make the argument during trial -- it and other patent holders will benefit in the future, said Long.

"In some ways, this is more important than the [change in the] standard that the Court considered," said Long. "This will have a big impact in litigation. Patent attorneys on both sides will look at this language and will cite it in every case this day forward."

According to Long, the new guidelines for jury instructions will make it easier for defendants -- like Microsoft -- to get a jury to reject the USPTO's decisions on patents. "By and large, I think patent invalidation will be more likely based on these instructions," said Long.

Although Chang didn't agree -- he saw the ruling as a clear defeat for Microsoft -- neither he or Long thought that Microsoft wasted time or money taking their appeal all the way to the Supreme Court.

"The sheer volume of interest in this case indicated that it was a question that a lot of people were thinking about," said Chang. "Even though the status quo [on the standard or proof] was confirmed, this offers some analysis and thought on jury instructions."

For his part, Long saw Microsoft's move in a larger context.

"What often happens in patent law is that the courts and Congress stare at each other, and each wants the other to make a move," said Long. By getting the Supreme Court to rule -- even though not in its favor -- Microsoft gains because it can now more effectively lobby Congress for changes in U.S. patent law.

"Microsoft can now say to Congress that 'The ball is in your court,'" said Long.

Not surprisingly, Microsoft was disappointed in Thursday's ruling.

"While the outcome is not what we had hoped for, we will continue to advocate for changes to the law that will prevent abuse of the patent system and protect inventors who hold patents representing true innovation," Microsoft said in a statement.


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