Infringement

The evidentiary standard for challenging US patent validity

Yesterday, the US Supreme Court wrapped up oral arguments for Microsoft Corporation v. i4i Limited Partnership, in which i4i sued Microsoft for patent infringement. This case has attracted worldwide attention, not only because the infringing product (MS Word) is widely used, but also because the Supreme Court’s ruling will determine the evidentiary standard to which the validity of all US patents will be determined in the future.

Under 35 U.S.C. § 282, an issued patent is presumed to be valid (in other words, it’s assumed to be novel and non-obvious).  Since the 1980s, the Court of Appeal has held that this presumption of validity may only be rebutted with evidence meeting a “clear and convincing” standard.

Microsoft, having lost at the trial level and at the Court of Appeal, argues that the “clear and convincing” standard is too high and that the correct standard should be the lower “preponderance of evidence” standard.  Microsoft argues that the requirement for “clear and convincing” evidence was a requirement made solely by the Court of Appeal and was not the intent of Congress.

i4i, as the patent holder in this case, argues that maintaining the “clear and convincing” standard is necessary for protecting American innovation and inventors, and that Congress had implicitly endorsed the “clear and convincing” standard forwarded by the Court of Appeal by not enacting a law saying otherwise.

As an added twist, the specific evidence that Microsoft now seeks to introduce in order to argue that i4i’s patent is invalid was not previously considered by the US Patent Office during the prosecution of the patent application.  Thus, the Supreme Court may end up treating evidence previously considered by the US Patent Office differently than evidence not previously seen by the US Patent Office.

Despite the rhetoric about protecting American innovation, I think a certain amount of deference is due if the evidence introduced was already considered by the Patent Office during prosecution.  In my view, the higher “clear and convincing” standard should apply to evidence previously considered during prosecution, while the lower “preponderance of evidence” standard should apply for evidence not previously considered by the Patent Office.

A decision is expected from the US Supreme Court before the end of June 2011. Chief Justice Roberts recused himself, so the case will be decided by the remaining eight justices.  If the Supreme Court splits 4-4 then the “clear and convincing” evidentiary standard stands.

Kik’s defence to RIM’s infringement lawsuit

Late last year, RIM sued Kik Interactive Inc., the maker of the popular cross-platform instant messaging client Kik Messenger, alleging breach of confidentiality, trademark infringement, and patent infringement.  At the same time, RIM also removed Kik Messenger from BlackBerry App World.

It’s been a long time coming, as we were expecting Kik’s statement of defence to be filed with the court at the end of December. Finally, on Monday Feb 7, 2011 (well after the 30 day deadline for Canadian defendants), Kik filed their defence and counterclaim after the Court granted them an extension of time.

I had a look at Kik’s Statement of Defence and Counterclaim today (available here, 7MB PDF).

Kik denies that it was developing a cross-platform instant messaging client in secret or had access to RIM’s BBM confidential documents, denies that it’s infringing on RIM’s trademarks or patents, and found prior art (EP093213, JP10013881, Outlook 2000, and a whole list of documents in Schedules A & B) which Kik alleges makes RIM’s asserted patents invalid.

Kik theorizes that as a result of the “overnight success of Kik Messenger”, “senior executives at RIM caused RIM to embark on a campaign to destroy or seriously harm Kik, including unilaterally terminating the various agreements between Kik and RIM, suspending and then removing Kik Messenger from BlackBerry App World and commencing this lawsuit, including a meritless patent infringement claim which RIM knew had no realistic chance of success.”

Kik portrays the suit as a classic case of Goliath picking on the poor small startup: “RIM employed a ‘bully’ like strategy, while Kik attempted to appease RIM…”.

Interestingly, in the statement of defence Kik asserted that Ted, the CEO of Kik, did not have access to the BlackBerry Messenger (BBM) source code while he worked at RIM’s BBM team as a Project Coordinator.  Kik also denies that Ted had access to RIM’s development plans, market research, and other internal reports related to BBM while working as part of RIM’s BBM team, as RIM had alleged in its statement of claim.  It’ll be very interesting to see exactly what documents Ted had access to or potentially had access to while working as part of RIM’s BBM team, and whether any of them led to his decision to develop a cross-platform instant messaging client in late 2009.

As with most lawsuits, the truth will come out during discovery and at trial, and will probably fall somewhere in between the allegations made in RIM’s statement of claim and Kik’s statement of defence.

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