Microsoft Asks Supreme Court To Look Into Patent Validity

from the watch-for-fireworks-on-this-one dept

Mon, Apr 7th 2008 8:28am — Mike Masnick

Looks like the Supreme Court will have yet another chance to weigh in on patent issues, as it's taken an active interest in the space for a few years now. Microsoft has appealed an appeals court ruling in a patent lawsuit to the Supreme Court. At issue is the standard courts need to use in assessing the validity of a patent. Patent system fans love to insist that the "assumption of validity" is a key component of patents, and any weakening of that assumption (even if it's to get rid of bad patents) is a problem. In this case, Microsoft presented new prior art that it says shows an original patent (which it was being sued over) was invalid. The Patent Office hadn't considered that prior art in originally awarding the patent, so Microsoft believes (reasonably so) that courts should take that into account and review whether or not the patent itself is valid. The courts, however (led by CAFC), have put in place a policy of saying that defendants need to show "clear and convincing evidence" in order to get them to reconsider the validity of the patent -- which is a much higher barrier.

Microsoft, in its argument, cites the recent KSR v. Teleflex decision on patent obviousness, where the Supreme Court had noted that the entire presumption of validity is based on the idea that the USPTO has, "in its expertise" reviewed and approved the claims in the patent. From Microsoft's perspective this would mean that if you present evidence that the USPTO did not consider it should call the presumption of validity into question, because it knocks out the very rationale for that presumption in the first place. You would think that, with the recent reports noting how often the Patent Office eventually rejects claims on review, the so-called "expertise" of the patent examiners should already be in question.

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Filed Under: cafc, patent validity, patents, prior art, supreme court
Companies: microsoft

12 Comments

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Anonymous, 7 Apr 2008 @ 10:09am

Typical of MS
Looks like MS are on the Patent war path! http://rcpmag.com/blogs/weblog.aspx?blog=2082
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- Nicko, 7 Apr 2008 @ 10:21am
  
  Re: Typical of MS
  It'll be interesting to see if Microsoft, who has been pretty good at exploiting the weaknesses of our patent system, ends up getting some of those weaknesses corrected.
  
  OTOH as soon as someone tries to invalidate one of their patents they'll be all over the supreme court to change it back.
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angry dude, 7 Apr 2008 @ 10:21am

screw mshit
and the rest of patent piracy coalition
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Jezsik, 7 Apr 2008 @ 11:05am

What's needed
It's a shame there's no hefty fine in place for anyone whose patent is invalidated (like the total amount they earned for licensing said patent). This would make an applicant be VERY sure they've got something unique and also prompt current holders to withdraw their patents lest they become targets.
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A, 7 Apr 2008 @ 11:28am

Why isn't prior art...
considered "clear and convincing evidence"?
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Anonymous Coward, 7 Apr 2008 @ 11:54am

Most of the above comments are hilarious . . .
Upper management of MS has pretty much blown since day 1. Sure, Gates was ballsy and cunning and definitely good at business (college drop out to billionaire . . .) but for the most part they're just tools.

THIS time around however, Microsoft is doing A GOOD THING. We WANT the Supreme Court to look at this issue. Hell, in this case Microsoft was actually in the RIGHT for once (rare, I know. At least morally).

So good job Microsoft! Now, hopefully, SCOTUS will do (as they seem to do often) the right thing in their final ruling.
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MLS, 7 Apr 2008 @ 12:46pm

What if....
...you realized that what MS is trying to do is invalidate a patent so that it can continue imposing its Product Activation scheme upon all its customers?

BTW, MS would like people to believe that because of this standard prior art is not able to be presented as evidence in their attempt to challenge the validity of the patent. Of course this is not correct. Such prior art was presented before a judge and jury. MS is just upset because the judge and jury did not agree that it was more relevant than what had already been considered as prior art.

It also might be helpful to know that MS was determined by the judge to be a willful infringer, with a modest upping the the damages awarded to z4, and that its attorneys were sanctioned for litigation improprieties.
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- Mike (profile), 7 Apr 2008 @ 1:10pm
  
  Re: What if....
  MLS, what does any of that have to do with the key question of the standard for patent validity?
  
  That's trying to blemish the case based on other factors which aren't at question here.
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  - MLS, 7 Apr 2008 @ 2:13pm
    
    Re: Re: What if....
    The first and third paragraphs are merely informational. The second is for the benefit of those who might misconstrue the article as somehow suggesting that the "clear and convincing" standard kept certain documents/activities (i.e., "prior art") from being considered as evidence in the lawsuit. Remember, not everyone who reads your blog is as versed in patent law as you are.
    
    As for the rule of law that MS would like to see adopted, it is in large measure a strawman argument raised for the purpose of trying to get at least one more shot at z4. In the real world of litigation before trial courts, there is precious little difference, if any, between "clear and convincing" and "preponderance" standards. All relevant evidence still gets considered by the court.
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- Nasch, 8 Apr 2008 @ 8:25am
  
  Re: What if....
  What if...you realized that what MS is trying to do is invalidate a patent so that it can continue imposing its Product Activation scheme upon all its customers?
  
  That's only relevant if you believe that MS would stop product activation if they were to lose this case. IMO that is a ridiculous proposition. MS will find a way to continue doing it, by winning the lawsuit, licensing the patent, or some other workaround. There's no way they'll just give up and "let the pirates win".
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  - MLS, 8 Apr 2008 @ 9:36am
    
    Re: Re: What if....
    My comment was merely anecdotal and in no way relevant to the legal issues associated with patent law. I am simply troubled by the fact that MS has adopted a scheme that in large measure makes it seem as if its paying customers are not to be trusted. I also happen to find it grating that on the several occassions I have made upgrades to my PC I have had to use telephone activiation because MS' system does not permit online activation in many instances involving PC upgrades.
    
    As for keeping pirates at bay, I laughed the first time I saw a keygen for all MS products, including is OSs, that was able to generate valid serials that withstand product activation and later software upgrades to newer versions.
    
    Miscreants will always find a way around the system. The only ones who are really paying the price are MS' legitimate customers. To me this seems a bit shortsighted.
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Gene Cavanaugh, 7 Apr 2008 @ 7:46pm

Sounds like M$ wants to use their money!
Perhaps the main reason the courts close down a case when it is done, and do not want to review what the USPTO finds, is that if they allow unlimited litigation, the guy with all the money wins (in this case, M$ could litigate an opponent out of business, with or without any justification for the lawsuits).
I hope the Supremes will tell them to take a hike; but this is by far the worst Supreme Court we have ever had, which makes me nervous.
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