Microsoft V. i4i – Prosecution And The “Variable Proof Regime”

The Government recently weighed in on this important appeal with its amicus brief, signed by Neal Katyal, Acting Solicitor General.  The question posed is simply: “Whether, when the defendant [here Petitioner i4i] in an infringement suit asserts as a defense that the relevant patent is invalid, the defendant must prove invalidity by clear and convincing evidence.”

The major portion of the brief argues “clearly and convincingly” that both precedent and legislative history compel a finding that the clear and convincing (C&C) standard is the appropriate burden of proof for the defendant to meet, even when the defendant introduces evidence of invalidity that was not before the PTO during the examination process – even though the new evidence may “carry more weight and go further toward sustaining the attacker’s unchanging burden.” American Hoist & Derrick Co., 725 F.2d 1350, 1360 (Fed. Cir. 1984).

However, as is often the case, some of the most interesting writing is found in the footnotes, or toward the end of the brief, when the “mechanics” and practical implications of lowering the C&C standard to the “examination standard” of a preponderance of the evidence are discussed. In footnote 7, the Solicitor considers the situation in which some of the evidence was previously considered and some was not:

“If the heightened evidentiary standard was treated as a sort of ‘bursting bubble’ that converts to a preponderance standing if the defendant introduces any new evidence of invalidity, the exception would swallow the rule, since the party [asserting invalidity] will almost always be able to identify some arguably relevant prior art that was not presented to the PTO Examiner…..And even if the defendant … relied exclusively on materials that were not before the PTO examiner, difficult questions might arise as to whether those materials differed substantively from information that the examiner did consider. Any regime in which the standard of proof turns on whether particular evidence was before the PTO could also hinder the examination process by encouraging applicants to indiscriminately submit prior art references to the PTO, without regard to relevance.”

This footnote is so loaded with practical wisdom, it seems like someone in the Solicitor’s office must have actually prosecuted a patent application at some point! Particularly in the case of clients who self-generate lots of prior art, such as university inventors, an attacker will almost always be able to find one more abstract or even a popular local article reporting the invention. Even if the abstract or article is less detailed than the full papers the prosecuting attorney sent in, it may well contain a sentence or two of additional results, or even speculation as to “theoretical solutions” (See Duramed v. Watson).

Now the new art it is not “cumulative” and may be arguably material to at least one claim. Oh, and by the way, Mr. Solicitor, I am sorry to say that we prosecutors are already highly motivated to “indiscriminately submit prior art references to the PTO” by decisions such as McKesson and Therasense. Believe me, we are not ignoring “relevance” entirely, but if it is “analogous art” (which seems nearly borderless these post-KSR days), it is going in on a 1449. The Examiner may not read every word, but we know that the defendants will.