Move cautiously—that’s the message recently sent by more than 170 business organizations and research groups to the attorney general and acting solicitor general as the government considers its position in the biggest patent case of the Supreme Court term.
In a letter concerning Microsoft v. i4i, the organizations said, “We are greatly concerned that a reversal of the lower court’s decision in this case could seriously weaken the presumption of validity that attaches to millions of patents in force in the United States today, thereby undermining longstanding investment-backed reliance interests that are critical for domestic job creation and economic growth, and for U.S. technological leadership internationally.”
Microsoft is challenging the U.S. Court of Appeals for the Federal Circuit’s interpretation that the presumption of patent validity, contained in 35 U.S.C. 282, requires that a person challenging the validity of a patent prove its invalidity by clear and convincing evidence. The software giant says the statute contains no particular standard of proof and the Federal Circuit adheres to its policy even when the invalidity defense is based on prior-art evidence that the Patent and Trademark Office never saw or considered in issuing the patent.
The justices on Nov. 29 agreed to hear arguments in the challenge.
“Permitting infringers to invalidate patents on a lower standard of evidence, as is now proposed in the Microsoft v. i4i case, could thus frustrate decades of settled expectations under which large investments were made in reliance on patents that were believed to carry a strong presumption of validity. Shifting the law to a weaker presumption of validity could also deeply affect the prospective investment and product development decisions of innovative businesses, affect public-private technology transfer, and profoundly change the behavior of patent applicants and litigants,” said the letter to Attorney General Eric Holder and Acting Solicitor General Neal Katyal.
The patent at issue—U.S. Patent No. 5,787,449 (the " ’449 Patent")—relates to a technology called markup languages. As Microsoft describes it in its petition, a markup language is a way of indicating how text should be displayed—which words are in boldface, for example, or what should be centered, or where line breaks should appear.
The invention claimed by the ’449 Patent is an improved method for editing markup-language documents by storing the document’s content separately from its metacodes.
The case, likely to be heard in late April, involves high stakes for all parties. Microsoft, which lost in the lower court, was assessed damages of roughly $240 million, and a permanent injunction was issued against its Word program.
The letter was signed by the Biotechnology Industry Organization, including such companies as Amgen, Genentech, Tessera; drug companies such as Eli Lilly & Co., Johnson & Johnson, and GlaxoSmithKline; research organizations, including Regents of the University of California and Research Corporation Technologies, and other companies such as 3M, BP America and Proctor & Gamble.
The letter signers ask Holder and Katyal to “carefully consider” the implications for American innovation and job creation as they develop any position the government may take in the case. “We also would urge you to seek input from a wide range of stakeholders across the U.S. economy and from within the U.S. Government to ensure that any such position will help preserve and promote innovation across the broad spectrum of the American economy.” The letter can be found here.