Supreme Court Unanimously Maintains High Hurdle for Invalidity Defense

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Yesterday, the Supreme Court unanimously ruled1 that an accused infringer must prove its invalidity defense by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, --- S. Ct. --- 564 U.S. ---, 2011 WL 2224428, slip op. at 1, 16 (June 9, 2011).2 In a case of first impression, the Court determined that this standard applies even when the United States Patent and Trademark Office ("Patent Office") did not consider the evidence of invalidity currently before the jury in the patent examination process. Id. The hurdle for proving invalidity historically has been high and now remains high.

According to Justice Sotomayor (who wrote for the majority), "Congress specified the applicable standard of proof in 1952 when it codified the common-law presumption of patent validity." Id. at 20. "Nothing . . . suggests that Congress meant to depart from that understanding to enact a standard of proof that would rise and fall with the facts of each case." This decision thus keeps in place decades of existing jurisprudence and will continue to allow patent owners to value their portfolios based on past practices. Although accused infringers can take certain steps to minimize negative effects of the clear-and-convincing standard, "[a ny recalibration of the standard of proof" is now solely in the hands of Congress. Id.

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