U.S. Supreme Court Upholds Clear and Convincing Patent Invalidity Standard as Urged by American Intellectual Property Association in Amicus Brief Authored by Foley Hoag

June 13, 2011

The U.S. Supreme Court last week upheld the “clear and convincing” evidentiary standard for a defendant to prove that a plaintiff’s patent is invalid, adopting arguments made by lawyers with Foley Hoag LLP in an amicus curiae brief filed on behalf of the American Intellectual Property Law Association in February.

The AIPLA’s brief in Microsoft Corporation v. i4i Limited Partnership, et al., urged the Supreme Court to uphold the “clear and convincing” evidentiary standard for proving the facts underlying an invalidity defense, as firmly established by Supreme Court precedent back to the 19th century. The AIPLA’s brief was singled out and cited favorably by the justices during the April oral argument. 

The unanimous decision of the Supreme Court, written by Justice Sonia Sotomayor, held that the presumption of validity as codified in Section 282 of the 1952 Patent Act includes the heightened “clear and convincing evidence” standard of proof. 

In response to Microsoft’s argument that a lower standard of proof should apply when the information relied upon in a patent challenge was not before the Patent Office, the AIPLA’s brief argued that juries could be given appropriate instructions allowing them to take this into account in deciding what weight should be given to the Patent Office’s determination. Consistent with the position advocated by the AIPLA, the Supreme Court encouraged courts to craft jury instructions directed to whether the challenger’s evidence was considered by the Patent Office and, if not, to weigh that fact when determining whether the defendant has proven its invalidity defense by clear and convincing evidence. 

Foley Hoag partners Don Ware and Barbara Fiacco authored the amicus brief for the AIPLA.

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