Surprising no one, Microsoft has filed an appeal of their loss in the i4i patent case. They were found to be infringing a patent on formatting documents using a separate XML file with markup instructions.
They use this technology in Word's DOCx file format.
In papers filed late last week, Microsoft lawyers claim lower courts are using an incorrect standard for the proof of prior art required to invalidate i4i's patent on a 'Method and system for manipulating the architecture and the content of a document separately from each other.'
Microsoft claims that because patent examiners failed to properly research prior art (existing use of the technology), it shouldn't be considered valid without 'clear and convincing' evidence to the contrary. Instead, they say, the lower standard, 'preponderance of the evidence,' is appropriate.
This is key to the company's defense, they say, because the proof of prior art, in the form of source code written by an i4i developer prior to joining the company, has been destroyed. In fact it was written for a program called S4, which the i4i developer worked on for his previous employer.
This makes it nearly impossible for Microsoft to come up with evidence which would meet a 'clear and convincing evidence' standard, which is similar to 'beyond a reasonable doubt,' used for criminal cases. 'Preponderance of the evidence,' on the other hand, would only require Microsoft to prove that the older product probably (more than 50% likely) invalidates the patent.
Use of the higher standard is based on the statutory requirement laid out in the US Code that "A patent shall be presumed valid."
Microsoft argues, "In KSR International Co. v. Teleflex, Inc., this Court found it “appropriate to note” that the rationale for the presumption of patent validity—on which the Federal Circuit bases its deferential clear-and-convincing-evidence standard—“seems much diminished” when an invalidity defense rests on evidence that the PTO never considered. 550 U.S. 398, 426 (2007). Yet despite having numerous opportunities to revisit its entrenched rule that “[t]he burden of proof is not reduced when prior art . . . was not considered by the PTO,”
The i4i patent infringement case was originally heard by controversial Marshall, Texas judge T John Ward, whose court has the reputation of being more friendly to patent holders than most. This was pretty clearly the reason i4i, a Canadian company, would file a lawsuit against a company from Washington in an east Texas court.
If Microsoft prevails, and first they have to convince the Supreme Court to hear their case, they will still have to convince a jury of their case, albeit at a lower standard of proof.
But even if they were still unable to convince the jury, the Supreme Court ruling could signal a major change in the outcome of software patent disputes. This may be particularly true for patents issued from 1998 on.
That was the year the number of patents granted jumped nearly a third from the year before. It was also the year a Federal Appeals Court decision (in State Street Bank v Signature Financial Group) opened the floodgates to allow business process patents, and by extension a new category of software patents for performing these processes.
The results have included Amazon.com's patent covering 1-Click checkout and and Paul Allen's for suggesting products to people. Clearly there are legitimate questions about the quality of the patent approval process.
Doesn't that merit changes to the way these patents are examined in court down the road?
In papers filed late last week, Microsoft lawyers claim lower courts are using an incorrect standard for the proof of prior art required to invalidate i4i's patent on a 'Method and system for manipulating the architecture and the content of a document separately from each other.'
Microsoft claims that because patent examiners failed to properly research prior art (existing use of the technology), it shouldn't be considered valid without 'clear and convincing' evidence to the contrary. Instead, they say, the lower standard, 'preponderance of the evidence,' is appropriate.
This is key to the company's defense, they say, because the proof of prior art, in the form of source code written by an i4i developer prior to joining the company, has been destroyed. In fact it was written for a program called S4, which the i4i developer worked on for his previous employer.
This makes it nearly impossible for Microsoft to come up with evidence which would meet a 'clear and convincing evidence' standard, which is similar to 'beyond a reasonable doubt,' used for criminal cases. 'Preponderance of the evidence,' on the other hand, would only require Microsoft to prove that the older product probably (more than 50% likely) invalidates the patent.
Use of the higher standard is based on the statutory requirement laid out in the US Code that "A patent shall be presumed valid."
Microsoft argues, "In KSR International Co. v. Teleflex, Inc., this Court found it “appropriate to note” that the rationale for the presumption of patent validity—on which the Federal Circuit bases its deferential clear-and-convincing-evidence standard—“seems much diminished” when an invalidity defense rests on evidence that the PTO never considered. 550 U.S. 398, 426 (2007). Yet despite having numerous opportunities to revisit its entrenched rule that “[t]he burden of proof is not reduced when prior art . . . was not considered by the PTO,”
The i4i patent infringement case was originally heard by controversial Marshall, Texas judge T John Ward, whose court has the reputation of being more friendly to patent holders than most. This was pretty clearly the reason i4i, a Canadian company, would file a lawsuit against a company from Washington in an east Texas court.
If Microsoft prevails, and first they have to convince the Supreme Court to hear their case, they will still have to convince a jury of their case, albeit at a lower standard of proof.
But even if they were still unable to convince the jury, the Supreme Court ruling could signal a major change in the outcome of software patent disputes. This may be particularly true for patents issued from 1998 on.
That was the year the number of patents granted jumped nearly a third from the year before. It was also the year a Federal Appeals Court decision (in State Street Bank v Signature Financial Group) opened the floodgates to allow business process patents, and by extension a new category of software patents for performing these processes.
The results have included Amazon.com's patent covering 1-Click checkout and and Paul Allen's for suggesting products to people. Clearly there are legitimate questions about the quality of the patent approval process.
Doesn't that merit changes to the way these patents are examined in court down the road?
