Why do you think the Supreme Court took this case only to affirm the Federal Circuit?
I can’t speculate on the internal workings of the Court, except to say that the Supreme Court might have recognized that its comment in KSR about the presumption had caused uncertainty and the Court might have felt it needed to take a case to resolve that uncertainty.
What is your view on what the Court said about jury instructions being appropriate in cases where prior art has not been considered by the USPTO?
Our view is that there already is a very practical and well functioning law and practice in this respect. I think the decision will result in more attention being given to jury instructions, and that’s appropriate. This case will have generated a heightened awareness among practitioners, and defendants will be more likely to ask for such instructions now.
Would the case have turned out differently if Microsoft had requested such an instruction in the district court?
We believed from the outset of this case that we would win and that our case was tremendously strong on the merits. Microsoft certainly threw every defence they could at us, but we had such a strong case that we prevailed at every level. So while it’s speculation, we do not think such an instruction would have made a difference here.
But if Microsoft had requested and been granted an instruction ordering the jury to view the prior art as more readily meeting the clear and convincing standard, that would have been appropriate in your opinion?
Our view is that the standard is clear and convincing, but a properly instructed jury may find that the standard may be more easily met where evidence has not been reviewed by the USPTO. During the oral arguments there were some very sound formulations for good model instructions that we think would work well.
What is your response to Microsoft’s contention that the clear and convincing standard provides a disincentive for applicants to provide the relevant prior art to the USPTO, and ultimately results in poor quality patents?
I very much disagree with that view. There is a duty of candour when prosecuting patents at the USPTO -- if that duty is not met, your patent can be invalidated. So an inventor who conceals prior art is taking an enormous risk, and I doubt very many do so. i4i was accused in this case of having acted inequitably in dealing with the PTO, and that accusation was rightly rejected by the trial court.
Do you think there is a problem in the US with bad patents being asserted?
It’s an easy thing to say that there are bad patents, but in reality who’s going to spend all that time patenting things that aren’t valid when there all these checks and balances in place? We’ve become champions for the USPTO and for innovation, because we’ve seen firsthand throughout this process how many checks and balances there are. Microsoft’s arguments are in stark contrast with the reality of what we’ve experienced. This patent has been extremely thoroughly vetted from inception and throughout both the trial, appeals and re-examination at the USPTO. You have to have a system that encourages disclosure, and how can you do that if there’s not sufficient protection for the patentee once it’s been granted? The whole point of disclosure is that the universe gets to find out about your invention – that’s why the patent system was put in place. I think the patent system is functioning extremely well and that the rhetoric about bad patents is gratuitous and unfair. The system has mechanisms to deal with patents that shouldn't have been granted, namely reexamination by the USPTO.
Why does patent law deserve this heightened standard?
I wouldn’t dare try to phrase it in better terms than some of the most articulate lawyers in the US already have, or than the Supreme Court did in an 8-0 shutout.
What has the experience been like for i4i overall?
It has drained time and resources, and it’s tough carrying on business under a cloud of litigation, but we have done so successfully and are now battle-tested in many ways. Microsoft said it was “disappointed in the ruling”, but i4i is the company that lost years of far higher potential growth. It’s amazing that people continue to try and put us on the defensive when the court found that Microsoft wilfully infringed our patent. Microsoft has vast resources and can fire off press releases, but it’s been proven throughout this case that we’re the good guys here. The question I would ask is what really deters companies from infringing?
