Wednesday, 04 December 2013 20:58


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The U.S. Supreme Court recently granted certiorari to Microsoft in a case involving patent invalidity.  Microsoft is challenging a Federal Circuit Court of Appeals finding of validity in favor of patent holder, i4i, in a case that has been long fought in the lower courts, and resulted in an award of over $200 million in damages to i4i.  In its decision, the Federal Circuit relied on its long standing precedent that patent invalidity must be proven by "clear and convincing evidence."

Microsoft argues that the Federal Circuit erred in requiring this heightened standard, and suggest that the lesser "preponderance of the evidence" standard should apply to determinations of patent invalidity, as is the case in finding patent infringement.  The "preponderance of the evidence" standard applies in most civil actions and essentially requires a finding that it is "more likely than not" that the evidence presented is true, whereas the higher "clear and convincing" standard requires a "substantially more likely than not" or "highly probable" finding.

A further issue which Microsoft has raised is the fact that the prior art on which its invalidity defense is based was not considered by the U.S. Patent and Trademark Office.  A decision is expected from the Supreme Court by June 2011.

Read 2580 times Last modified on Monday, 29 April 2013 20:59
John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.