Supreme Court Hears Oral Arguments in Microsoft Case

On April 18 the Supreme Court heard oral arguments in Microsoft Corporation v. i4i Limited Partnership, et al. Microsoft is appealing a jury ruling and subsequent affirmation by the Federal Circuit that Microsoft's Word software infringed on i4i's patent for a type of Extensible Markup Language (XML) that governs how electronic text is displayed. Microsoft was ordered to pay $290 million and to stop selling certain versions of Word.

Microsoft seeks to overturn the decision by invalidating i4i's patent, and is arguing that patent invalidity can be proven by a preponderance of evidence and not the more stringent requirement of clear and convincing evidence. The Justices offered contrasting comments; Justice Ginsburg said that the language in 35 U.S.C. § 282 indicates that more than a preponderance of evidence is needed to prove invalidity and that the Federal Circuit has consistently taken this position, while Justice Alito said that the presumption of validity as stated in 35 U.S.C. § 282 "doesn't seem to me at all to suggest clear and convincing evidence." The Justices also questioned how a 1934 Supreme Court decision stating that the presumption of patent validity was "not to be overthrown except by clear and cogent evidence" should be applied.

Microsoft argues that prior to applying for the XML patent i4i was already selling software that anticipated the patent, thus rendering the patent invalid because of prior use. Since the earlier source code had been destroyed it was impossible for Microsoft to prove invalidity on the basis of clear and convincing evidence. Justices Breyer and Sotomayor suggested that the issue could be solved by providing a jury instruction that clear and convincing evidence can be established more easily in cases where prior art was not considered by the USPTO.

In its cert petition Microsoft had argued that the preponderance of evidence standard be used in only those cases where prior art was not considered by the USPTO, but during oral arguments extended that request to apply to all cases in which patent validity is challenged.

A decision by the Court is expected in early summer.

Click here for the complete text of the oral arguments, and here for a history of the case.