Lack of Patent Reexamination Discussion in Microsoft Brief EmphasizedAs I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply. In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue. In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme. The i4i brief (here) summarizes the patent reexamination arguments noting,A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing standard by leaving the standard alone and instead making other changes, principally authorizing reexamination. (emphasis added)Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next we
As I pointed out last month, the patent reexamination statutes arguably reinforce the CAFC’s reading of § 282. That is to say, by providing the patent reexamination statutes Congress has tacitly acknowledged the clear and convincing standard by providing an alternative USPTO forum in which the clear and convincing standard does not apply.
In Microsoft’s appeal to the Supreme Court in Microsoft v. i4i, the preponderance of the evidence standard is sought for art in the district court that not previously considered by the USPTO. In their opening brief Microsoft largely tap danced around the patent reexamination issue.
In the recently filed i4i brief, on the other hand, patent reexamination is showcased as a major theme.
The i4i brief (here) summarizes the patent reexamination arguments noting,
A clear-and-convincing standard also preserves a meaningful role for the PTO, consistent with Congress’s delegation to that agency of primary authority over patentability. A preponderance standard, by contrast, would discourage innovation and marginalize the PTO. It would render the initial examination process largely meaningless. And it would eviscerate the reexamination process that Congress specifically created as an alternative to litigation—an alternative that is cheaper, more transparent, and conducted by experts, and one in which patent claims can be narrowed if appropriate rather than entirely destroyed. . . .
For 28 years, the Federal Circuit has consistently interpreted §282 as imposing a clear-and convincing standard. Under this Court’s precedent, Congress’s failure to disturb that longstanding interpretation strongly suggests approval of it. That suggestion is especially compelling here, because Congress has both reacted to other Federal Circuit rulings and been active in patent legislation during this period. In particular, Congress has responded to concerns about the clear-and-convincing standard by leaving the standard alone and instead making other changes, principally authorizing reexamination. (emphasis added)
Further amicus briefs are due Friday. I would expect the patent reexamination statutes to be a significant aspect of this additional briefing as well. More on that next week.