Petition Filed to Reconsider Denial of 2nd Reexamination
As previously reported, the second attempt by Microsoft to invalidate U.S. Patent 5,787,449 failed on November 24, 2010. Since that time, the dispute involving this patent, (i4i Limited Partnership and Infrastructures for Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)) has been accepted for review in the 2011 term by the Supreme Court (just like I always said it would..ahem).
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) is more appropriate. The case may be the most closely watched patent law question in decades as the ruling could have a game changing impact on the value of patents and patent litigation practices.
To date, however, Microsoft has not had any success invalidating the ‘449 Patent in patent reexamination. A first reexamination was favorably concluded to i4i without amendment to the original claims(90/010,347), and the second request was denied (90/011,198). The recent Rule 1.181 petition, filed this past Monday will seek Supervisory review of the examiner’s November denial. Typically, the Director of the USPTO delegates the authority to decide the petition to the Director of Central Reexamination Unit.
It would seem illogical for Microsoft to pursue a claim to the Supreme Court that a lower standard is in order, having lost the fight at the USPTO when given that exact standard….twice.
Of course, a reversal of the examiner would not be an indication of a prima facie showing of invalidity. Instead, a reversal would be a determination that the submitted art would have been “important to a reasonable examiner.” Microsoft may not get much mileage out of that determination, but it beats the alternative.
The content of the petition is not yet available on PAIR.