SirenRationale for Lower Standard Gutted?

In 2009, Microsoft was found to have infringed i4i’s 5,787,449 patent (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). The ‘449 Patent allegedly claims certain XML translation features of Microsoft Word. An appeal to the CAFC earlier this year was unsuccessful.

Along the way to the CAFC, Microsoft sought ex parte reexamination of the ‘449 Patent (90/010,347), largely as an afterthought to hedge against a willfulness finding. Not surprisingly, since the request ignored definitions of certain claim terms of the ‘449 Patent specification, the reexamination attempt was unsuccessful (no claim changes) and all claims exited reexamination in July of this year

On August 27th, Microsoft filed a petition for certiorari questioning the lower court’s use of the clear and convincing standard relative to art not before the USPTO during prosecution of the original patent application. At roughly the same time, Microsoft filed a second request for ex parte reexamination of the ‘449 patent (90/011,198). Today the USPTO denied the second request outright, giving Microsoft and their shareholders a bit less to be thankful for this holiday season. (a copy of the denial is not yet available).

With many predicting a decision on the pending SCOTUS cert request to be imminent (i.e., this coming Monday), it seems as though Microsoft may have just had their legs cut out from under them.

In Microsoft”s petition for cert, they argue against the use of the clear and convincing evidentiary standard for proving a patent invalid. Microsoft argues that this standard should not apply when art is uncovered that was never before the PTO. In essence Microsoft argues that a lower standard, such as used by the USPTO during original prosecution (or patent reexamination) for such art is more appropriate.

Specifically, Microsoft argues that the Patent Owner admitted that certain software manuals included the patented features, but since the underlying software code was not available, the clear and convincing standard could not be met. In their repeated requests to the USPTO, Microsoft has essentially tried to prove their theory that a lower standard would have resulted in a different outcome, but they failed both times. The second request appears to have included the very art applied at trial.

Seems to me the facts of this case just made the pending cert a poor vehicle for review of the presented issue. (update, cert granted 11/29/10)