Cert Granted Today on Important Patent MatterSeems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision. Not surprisingly, Microsoft’s petition seized upon this issue, noting:The Federal Circuit’s longstanding rule that a challenger must prove its invalidity defense by clear and convincing evidence even “when prior art is presented to the court which was not considered by the PTO,” Uniroyal, 837 F.2d at 1050—which is to say, whether or not the PTO was aware of the prior-art evidence when it issued the patent—cannot sensibly be reconciled with this Court’s statement that the “rationale underlying the presumption . . . seems much diminished” when a defense of invalidity is based on evidence that the PTO never considered, KSR, 550 U.S. at 426.While recent cases such as Bilski and KSR presented important questions of U.S. patent law, this case may have a more far ranging impact on the U.S. patent system. Will the Supreme Court pronounce a dual standard for district courts depending upon whether the art was previously considered? Will a changing in standard further bury the USPTO in IDS filings?  What does “not considered by the USPTO” mean?Will every current defendant seek to have ongoing district court validity determinations held in abeyance/stayed until after this ruling? What will this mean for patent reexamination which already offers the lower standard to defendants, and what if any congressional intent is demonstrated by the existence of the patent reexamination statutes? Does the standard really need to be changed in light of current administrative options?  Stay tuned.

Seems my prognostication abilities are best left for NFL football…end even then, only games involving the woeful Washington Redskins.

Today the Supreme Court agreed to consider the question posed in the petition for cert stemming from Information Inc v. Microsoft Corp, (E.D. Tx No. 07-CV-113)). Specifically, the court is being asked to consider:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

I pointed out last week that Microsoft has essentially already proven that a lower standard would not have mattered (by virtue of their consecutive failures in patent reexamination). However, the question as to the proper standard, divorced from the facts of this case, seems to be on the minds of the court since at least the KSR decision.

Not surprisingly, Microsoft’s petition seized upon this issue, noting:

The Federal Circuit’s longstanding rule that a challenger must prove its invalidity defense by clear and convincing evidence even “when prior art is presented to the court which was not considered by the PTO,” Uniroyal, 837 F.2d at 1050—which is to say, whether or not the PTO was aware of the prior-art evidence when it issued the patent—cannot sensibly be reconciled with this Court’s statement that the “rationale underlying the presumption . . . seems much diminished” when a defense of invalidity is based on evidence that the PTO never considered, KSR, 550 U.S. at 426.

While recent cases such as Bilski and KSR presented important questions of U.S. patent law, this case may have a more far ranging impact on the U.S. patent system.

Will the Supreme Court pronounce a dual standard for district courts depending upon whether the art was previously considered?

Will a changing in standard further bury the USPTO in IDS filings?  What does “not considered by the USPTO” mean?

Will every current defendant seek to have ongoing district court validity determinations held in abeyance/stayed until after this ruling?

What will this mean for patent reexamination which already offers the lower standard to defendants, and what if any congressional intent is demonstrated by the existence of the patent reexamination statutes? Does the standard really need to be changed in light of current administrative options? 

Stay tuned.