Brief of Pharmaceutical Research and Manufacturers of America As Amicus Curiae In Support of Respondents

In this case, the Supreme Court will decide how difficult it will be to invalidate a patent.

Here’s some background: In court, parties have to prove their case by some "standard of proof." In almost all civil cases, the standard is "preponderance of the evidence" – meaning it is more likely than not that the facts are true. When the question is invalidating a patent, however, the U.S. Court of Appeals for the Federal Circuit decided that a defendant trying to prove a patent invalid must do so by a higher standard than normal civil cases, that of "clear and convincing" evidence. "Clear and convincing" means that the facts are "highly probable," which is a much more difficult standard to meet than just a preponderance.

In this case, i4i Ltd. had sued Microsoft for patent infringement. i4i claimed its patent covered editing documents that contain markup languages like XML (Microsoft Word had XML editing capabilities). Microsoft had argued that i4i’s patent was invalid because the disclosed invention had been embodied in a software product sold in the United States more than a year before the patent application was filed – prior art that the patent examiner did not consider. The Federal Circuit applied its clear and convincing standard and rejected Microsoft’s invalidity argument. Microsoft petitioned the Supreme Court for certiorari, and was supported by eleven amicus briefs, including EFF’s. That Court granted Microsoft’s request to decide whether the Federal Circuit’s standard of proof rule is correct.

If successful, Microsoft’s challenge should help in the fight against bad patents by leveling the playing field for showing that a patent is invalid. A Microsoft win in the case would benefit not only Microsoft, but also the free and open source software community and small software innovators generally. That’s why EFF and other public interest groups filed an amicus brief supporting Microsoft’s request to have the Supreme Court hear the case, and then filed another brief on the merits. The case will be argued in April 2011, and a decision is expected by June 2011.

Some of the briefs in this case are available http://www.eff.org/cases/microsoft-v-i4i. You can find additional documents at SCOTUSblog.

Please see full amicus brief below for more information.