Today is the day scheduled for oral argument before the US Supreme Court in the
appeal of the i4i v. Microsoft patent litigation. The appeal is
focused on an issue that matters to FOSS a great deal. EFF, Public Knowledge, and the Apache Foundation have filed an
amicus brief [PDF] that explains to the court why it matters so much and with such particularity to the FOSS community. I've done it as text for you. I'll let them explain the details, but the big picture is that US patent law, largely due to the Federal Circuit's broadening of plaintiffs' rights, is hard on defendants and harder still on FOSS defendants, because FOSS uses a development model that doesn't match the patent law as currently interpreted by the Federal Circuit. The issue before the US Supreme Court is this, in plain English: how hard should it be to prove that a patent that the USPTO has issued is invalid? How about if you have evidence that the USPTO examiner never looked at? Should juries assume that the USPTO got it right? I smile just writing that. With FOSS software, it's almost impossible for an examiner to find prior art, unless it's been patented, which it almost never is, given the restrictions on what examiners can search through. And you may be surprised when you read what the courts require as proof.
I am pretty sure that after you read this brief, you'll see how unbalanced the current system is, how it disadvantages FOSS defendants, and hopefully you'll notice some things you can do to help balance out the playing field. I hope the court sees the unfairness too, and I hope they care.
The bottom line for me remains that software and patents need to get a divorce. But anything that we or the courts or Congress can do to ameliorate the strange and damaging tilt toward patent plaintiffs to the detriment of defendants is to the good. The law is supposed to be fair to both plaintiffs and defendants, but with patent law, it absolutely isn't, as the brief will show you. The damage being done to innovation is enormous already, and with Microsoft on a march to rape and pillage FOSS and force the community -- most especially Android -- to pay royalties for patents that could be invalidated in a more fair system but which it can use as anticompetitive weapons unless something is done to short-circuit their strategy, this case is vitally important. [ Update: Here's the transcript [PDF] of the oral argument. Thomas Hungar, on behalf of Microsoft, opens like this: "The Federal Circuit's clear and convincing
evidence standard ensures the enforcement of invalid patents, even though this Court recognized in KSR that
invalid patents stifle rather than promote the progress of liberal arts." To which we can all say, Amen.]
Please take particular note of the requirements for availability of prior art in the form of earliest versions of software code and how that works against the FOSS community. Do you retain all versions? How about email threads? No? Read this brief, then, and you'll see how hard it is to win unless you have all that. One snip: FOSS's collaborative nature, while integral
to its success, creates several problems when FOSS software is the subject of a patent lawsuit (or threat), even where the basis of the threat may be an invalid patent. First, because these collaborations are forged primarily through community rather than capital investment, many FOSS projects lack the funding to pay for patent counsel, much less litigation. Second, the FOSS collaboration model makes it difficult to collect prior art in a format that can be used to challenge validity under current Federal Circuit guidelines. To fend off patent threats, FOSS projects often depend on the collective knowledge of their members and the sometimes haphazard documentation of the projects as prior art, to the extent that such documents exist.
Much of this collective knowledge, however, arguably could not be considered as evidence under the Federal Circuit's current standard requiring alleged infringers to provide invalidity by clear and convincing evidence. Specifically, the opinion below may be read to hold that, without obtaining a full set of source code, a party could not rely on evidence of the operation of that source code to invalidate a patent. i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831, 848 (Fed. Cir. 2010), Pet. App., 22a.
In the FOSS context, that full set may be difficult to assemble. The nature of software development tends to be informal. FTC Report, Chap. 3, at 54. Documentation likely takes the form of emails or postings to internet message boards and newsgroups that are much more informal than traditional academic research or industry publications. For example, the
development of a particular piece of software may be documented primarily in emails exchanged between developers all over the world, each with different snippets of code and comments. Some of those developers may archive their email; others may not, or may not do so in an easily-searchable form. Further, more often than not, no party is tasked with creating explanatory materials of any kind, and the discussions that exist often get lost and become unobtainable at a later date when needed in litigation.
Thus, the Federal Circuit's inflated standard of proving invalidity means that patents that might be invalidated by FOSS technology are nonetheless impervious to ordinary legal challenge. That, in turn, threatens the public interest in promoting the innovative activities that would take place but for improper lawsuits and legal threats. That's why FOSS cares about this case so much. It has established a bar that FOSS can't normally reach. Keep in mind that Open Invention Network has a program whereby you can establish prior art, if your innovation is related to the Linux ecosystem. Talk to them. Even if you don't wish to patent your innovations, at least you can prevent others from doing so. And hopefully the court will act. I said hopefully.
Sometimes I see comments about how software patents are so evil FOSS companies and projects shouldn't get them. Please note how hard you make it for FOSS lawyers to defend you when you don't help by being realistic. Please, take practical steps to make sure your innovation isn't kidnapped by venal folks who will use it against the community. If there is one message I'd like to send before I leave, that would be it.
The case is at the final level now. It's Microsoft's last chance. If it loses here, there is no higher court. I'll post the oral argument transcript as soon as it's available. A decision is not expected until June. If you'd like to see how Canadian media views this case, since i4i is a Canadian company, here's a sample: If i4i loses, it will be a blow to inventors and creators, said Owen. "It's a turning point in patent law."
The U.S. government, inventors, venture capitalists and a number of biotech and pharmaceutical companies have lined up behind i4i, while Google, Apple, Intel Corp. and others are supporting Microsoft in its efforts to make it easier to invalidate patents.
Patent expert Alexander Poltorak said the case is a potential threat to long-established patent law in the United States.
"Their fight is somewhat of an epic for the future of U.S. patent law," said Poltorak, chairman and CEO of U.S.-based General Patent Corp. in New York.
He noted that about half of all patents issued in the United States go to non-U.S. residents.
"So it's an issue of global proportions," he said, adding that if i4i loses it would be "devastating for the entire intellectual property business in the United States." Sounds good to me. And may I please ask for a favor? If half of all the US patents go to non-US residents, could pro-patent folks stop arguing that patents benefit the US economy?
Of course, there is no doubt in my mind, reading through all the court filings and the court orders, that i4i was badly treated by Microsoft. Partnering with Microsoft doesn't seem to pay off. But to destroy FOSS just for any private company's personal interests -- it doesn't seem proportional. The other day, a Senator working on revising US patent law proclaimed that it had to be fixed to protect modern innovation, like the Internet:
“This important legislation is long overdue. The last major patent reform was nearly 60 years ago," said House Judiciary chairman Lamar Smith (R-Texas), who has worked closely with Senate Judiciary chairman Patrick Leahy (D-Vt.) to usher the bill through Congress.
"Since then, American inventors have helped put a man on the moon, developed cell phones and launched the Internet. But we cannot protect the technologies of today with the tools of the past."
Sigh. The Internet is not patented. It is FOSS. The inventors deliberately chose not to patent it. And look at the incredible flowering of creativity and innovation that has resulted. So, you see, you don't need to protect the internet with patent laws. You need to protect it so patent laws don't destroy it or the what this incredible FOSS development model can produce next. Seriously. But do you see why education is so vital? We need to keep explaining over and over and over, until the courts understand that it's time to rethink from the fundamentals up, or real and irreversible damage will result. Why, you may ask, would Microsoft argue on the same side as the FOSS community? Because it's been found a patent infringer, and unless it can prevail here, Microsoft has to pay a $290 million judgment to i4i. And on the other side, or more precisely taking no side in the case, but a pro-patents position on this one, is IBM [PDF], which chose not to stand with FOSS on this issue, for reasons that may perhaps be discerned in
this article on IPWatchdog.
Here's Microsoft's appeal brief [PDF], i4i's brief [PDF], and Microsoft's reply brief [PDF]. You'll find all the amicus briefs here on SCOTUSblog and/or on the American Bar Association's page. And i4i has them on its website too.
And here is Groklaw's earlier coverage of the case as it worked its way through the legal system, in chronological order, in case you want to review:
- The i4i v. Microsoft Orders and Permanent Injunction, August 12, 2009
- Microsoft Files Emergency Motion to Stay Execution of Judgment in i4i, August 16, 2009
- Why didn't Microsoft tell us about i4i's patent litigation during the OOXML standards push? - Update: i4i Opinion as text, August 18, 2009
- Microsoft files notice of appeal against i4i ruling; stipulates waiver of bond, begs for stay, August 18, 2009
- Microsoft's Emergency Motion for a Stay Repeats Arguments Already Rejected by District Court, August 19, 2009
- The i4i-Microsoft Appeal - HP and Dell Ask to File Amicus Briefs in Support of Microsoft, August 26, 2009
- Microsoft's Appeal Brief (i4i), as text , August 26, 2009
- The Dell amicus brief, PDF and text, HP's as PDF (i4i v. Microsoft), August 29, 2009
- The i4i v. Microsoft Order Staying the Injunction, September 4, 2009
- i4i tells its side of the story: Microsoft ruined our business , September 10, 2009
- What Microsoft Doesn't Get - And What I Hope You Do, September 11, 2009
- i4i Wins Injunction Against Microsoft on Appeal Re Microsoft Word - Updated as text, December 22, 2009
- Some Amicus Briefs in Support of Microsoft in the i4i Case - Google's as text, October 1, 2010
Here's EFF's amicus brief [PDF], as text:
*******************************
No. 10-290
________________________
IN THE
Supreme Court of the United States
_________________
MICROSOFT CORPORATION,
Petitioner,
v.
I4I LIMITED PARTNERSHIP, ET AL.,
Respondents.
______________
On Writ of Certiorari
To the United States Court of Appeals
For the Federal Circuit
===============================
BRIEF OF AMICI CURIAE
ELECTRONIC FRONTIER FOUNDATION,
PUBLIC KNOWLEDGE, AND APACHE
SOFTWARE FOUNDATION IN SUPPORT OF
PETITIONER
===============================
MICHAEL BARCLAY
Counsel of Record
JULIE P. SAMUELS
CORYNNE MCSHERRY
JAMES S. TYRE
ELECTRONIC FRONTIER FOUNDATION
[Address, telephone, email]
Attorneys For Amici Curiae
[Additional Counsel Listed on Signature Page]
i
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .................................iii
INTEREST OF AMICI CURIAE............................1
SUMMARY OF ARGUMENT ...............................3
ARGUMENT ......................................................6
I. THE CLEAR AND CONVINCING
EVIDENCE STANDARD IMPEDES THE
DEVELOPMENT OF OPEN SOURCE
SOFTWARE AND HARMS SMALL
SOFTWARE INNOVATORS .......................6
A. The Standard Impedes the Development
of Open Source Software ..................6
B. The Standard Harms Small Software
Innovators .....................................10
II. FINDING CLEAR AND CONVINCING
EVIDENCE OF PATENT INVALIDITY IS A
RECURRING PROBLEM IN COMPUTER
SOFTWARE PATENT CASES ..................13
A. Patent Owners Assert that Accused
Infringers Must Use the Prior Arts
Source Code to Prove Invalidity, But
That Source Code Is Often
Unavailable Years After the Fact ....13
B. The Growth in the Number of Issued
Patents and of Patent Lawsuits Since
the Formation of the Federal Circuit
ii
Exacerbates the Problem................18
III. THE COURT SHOULD INTERPRET
SECTION 282 OF THE PATENT ACT
ACCORDING TO ITS PLAIN MEANING AND
THE COURT'S PRECEDENTS.................23
A. The Federal Circuits Standard Exceeds
Congress' Statutory Mandate .........23
B. Traditional Rules Governing Standard
of Proof Should Apply ....................26
C. The Federal Circuits Standard Results
from a Misapplication of This Court's
Precedent.......................................28
CONCLUSION .................................................33
iii
TABLE OF AUTHORITIES
Page(s)
Cases
Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.,
725 F.2d 1350 (Fed. Cir. 1984) ............. 28, 29, 30
Bilski v. Kappos,
561 U.S. __, 130 S. Ct. 3218 (2010) ........ 2, 20, 25
Connell v. Sears, Roebuck & Co.,
722 F.2d 1542 (Fed. Cir. 1983) .........................28
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2005).................... 2, 21, 22, 23, 25
Fonar Corp. v. General Electric Co.,
107 F.3d 1543 (Fed. Cir. 1997) .........................16
Grogan v. Garner, 498 U.S. 279 (1991)........24, 26
Herman & MacLean v. Huddleston,
459 U.S. 375 (1983)....................................26, 27
i4i Ltd. Partnership v. Microsoft Corp.,
598 F.3d 831 (Fed. Cir. 2010) ........... 9, 13, 16, 17
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) .....20
Jacobsen v. Katzer,
535 F.3d 1373 (Fed. Cir. 2008) .......................6, 7
KP Permanent Make-Up, Inc. v. Lasting Impression
I, Inc., 543 U.S. 111 (2004) ...............................24
iv
KSR Intl Co. v. Teleflex Inc.,
550 U.S. 398, 127 S. Ct. 1727 (2007) ...........2, 23
Markman v. Westview Instruments, Inc.,
517 U.S. 370 (1996)..........................................22
Microsoft Corp. v. AT&T Corp.,
550 U.S. 437, 127 S. Ct. 1746 (2007) ...............13
Northern Telecom, Inc. v. Datapoint Corp.,
908 F.2d 931 (Fed. Cir. 1990) ...........................16
Radio Corp. of Am. v. Radio Eng Labs., Inc.,
293 U.S. 1 (1934) ................................. 28, 29, 30
Russello v. United States, 464 U.S. 16 (1983) ....24
SEC v. C.M. Joiner Leasing Corp.,
320 U.S. 344 (1943)..........................................27
SSIH Equip. S.A. v. U.S. Intl Trade Commn,
718 F.2d 365 (Fed. Cir. 1983) ...........................28
State Street Bank & Trust Co. v. Signature
Financial Group, Inc.,
149 F.3d 1368 (Fed. Cir. 1998) .........................20
Steadman v. SEC, 450 U.S. 91 (1981) ...............27
Uniloc USA, Inc. v. Microsoft Corp.,
Nos. 2010-1035, -1055, 2011 WL 9738 (Fed. Cir.
January 4, 2011) ..............................................31
United States v. Regan, 232 U.S. 37 (1914) .......27
v
Statutes
35 U.S.C. § 101 ..........................................20, 25
35 U.S.C. § 103 ................................................23
35 U.S.C. § 273 ..........................................24, 25
35 U.S.C. § 282 ................................ 5, 24, 25, 32
35 U.S.C. § 283 ................................................23
Other Authorities
Bruce Byfield, FOSS: Free and Open Source
Software, Datamation, May 30, 2010.................7
D. Crouch, Patent Litigation Statistics: Number
of Patents Being Litigated, Patently-O Blog,
March 17, 2008 ................................................19
D. Crouch, USPTO Patent Grant Numbers,
Patently-O Blog, August 19, 2010 .....................18
Federal Trade Commission, To Promote
Innovation: The Proper Balance of Competition and
Patent Law and Policy (2003) .......... 4, 8, 9, 12, 16
H.R. REP. NO. 97-312 (1981) .............................22
James Bessen & Michael J. Meurer, The Patent
Litigation Explosion, BOSTON UNIVERSITY SCHOOL OF
LAW WORKING PAPER SERIES, LAW AND ECONOMICS
WORKING PAPER NO. 05-18 (2005) .......................21
Josh Lerner, Small Businesses, Innovation, and
Public Policy in the Information Technology
vi
Industry, in Understanding the Digital Economy:
Data, Tools, and Research 201
(Erik Brynjolfsson and Brian Kahin,
eds., Cambridge: MIT Press, 2000)...............10-11
Kyle Jensen, Guest Post: Counting Defendants in
Patent Litigation, Patently-O Blog,
October 27, 2010..............................................19
Mark A. Lemley & Julie E. Cohen,Patent Scope
and Innovation in the Software Industry,
89 CAL. L. REV. (2001) ........................... 15, 16, 20
Michael Meurer, Inventors, Entrepreneurs, and
Intellectual Property Law,
45 HOUS. L. REV. 1201 (2008)......................10, 11
P.R. 3-4(a) for the Eastern District of Texas ......14
Patent L.R. 3-4(a) for the Northern District of
California .........................................................14
Thomas Claburn, Study Finds Open Source
Benefits Business, InformationWeek
(January 17, 2007) .............................................8
Webbink, Red Hat's Comments To The Joint
FTC-DOJ Hearing on Competition and Intellectual
Property Law, March 20, 2002.........................15
Yochai Benkler, The Wealth of Networks: How
Social Production Transforms Markets and
Freedom (2006). ............................................. 6-7
1
INTEREST OF AMICI CURIAE
1
The Electronic Frontier Foundation (EFF)
is a nonprofit civil liberties organization that has
worked for more than twenty years to protect
consumer interests, innovation, and free
expression in the digital world. EFF and its more
than 14,000 dues-paying members have a strong
interest in helping the courts and policy-makers
in striking the appropriate balance between
intellectual property and the public interest. The
Federal Circuits requirement that an accused
infringer prove patent invalidity by clear and
convincing evidence undermines the traditional
patent bargain between private patent owners
and the public and threatens to impede
innovation and the dissemination of knowledge.
These are issues of critical importance to
consumers and the public interest. As an
established advocate for the interests of
consumers and innovators, EFF has a perspective
to share that is not represented by the parties to
this appeal, neither of whom speaks directly for
the interests of consumers or the public interest
generally.
2
As part of its mission, the EFF has often
served as amicus in key patent cases, including
Bilski v. Kappos, 561 U.S. __, 130 S. Ct. 3218
(2010); Quanta Computer, Inc. v. LG Electronics
Corp., 128 S. Ct. 2109 (2008); KSR Intl Co. v.
Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727
(2007); and eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2005).
Public Knowledge is a non-profit public
interest organization devoted to protecting
citizens rights in the emerging digital information
culture and focused on the intersection of
intellectual property and technology. Public
Knowledge seeks to guard the rights of
consumers, innovators, and creators at all layers
of our culture through legislative, administrative,
grassroots, and legal efforts, including regular
participation in patent and other intellectual
property cases that threaten consumers, trade,
and innovation.
The Apache Software Foundation (ASF) is a
non-profit 501(c)(3) corporation that produces
software projects under a pragmatic open-source
license for the public good.
3
SUMMARY OF ARGUMENT
Allowing parties to lawsuits a fair chance to
challenge the validity of patents asserted against
them serves as a necessary check on illegitimate
patents and helps ensure that improper patents
receive independent review in a court of law. That
review is essential to achieving the purposes of
patent law. Properly understood, a patent is a
distinct statutorily-created and limited set of
rights, designed to encourage inventors to
disclose their inventions to the public, thereby
promoting scientific and industrial progress.
Illegitimate patents inhibit that progress, the
sharing of knowledge, and the pace of innovation.
Improperly unbalanced standards of proof,
such as that advanced by the Federal Circuit for
invalidity, impede the ability of parties -- especially
parties engaged in developing free and open
source software and other small software
innovators -- to present effective challenges to
illegitimate patents. As a result, illegitimate
patents do not receive appropriate review, and the
traditional bargain between intellectual property
and the public interest is betrayed.
Amici submit this brief to call the Courts
attention to the disproportionate impact that the
Federal Circuits improper standard of proof has
had for two important innovation communities:
Free and Open Source Software (FOSS) projects
and small software innovators generally.
In recent years, FOSS projects -- which
involve the open development and exchange of
source code -- have become mainstream and are
now critical to computer and Internet technology.
4
Federal Trade Commission, To Promote
Innovation: The Proper Balance of Competition and
Patent Law and Policy (FTC Report) Chap. 3, at
51 (2003)
2 (software patentability has introduced
new costs, such as the cost of obtaining a patent,
determining whether a patent is infringed,
defending a patent infringement suit, or obtaining
a patent license . . . may disproportionally affect
small firms and individual programmers and the
open source community).
Small software companies also play an
important role in fueling innovation in the
information technology industry. Small
innovators make crucial contributions to our
nations economic growth.
Software patent litigation, which has
exploded in recent years, threatens the ability of
FOSS and small software innovators to grow their
business and engage in valuable research and
development. And the problem is exacerbated by
the proliferation of patents of dubious validity
that have been artificially strengthened -- and
their holders emboldened -- by an inflated
standard of proving invalidity. These otherwise
invalid patents operate as a tax on innovation;
their economic effect diverts resources from
useful R&D to fund defensive patent programs,
often crippling small and growing companies that
lack the resources required by patent litigation.
Furthermore, the Federal Circuits
heightened standard for proving invalidity creates
an especially pernicious effect in computer
5
software patent cases. Software patent plaintiffs
often argue that it is necessary to use the source
code of a prior art software product to prove
invalidity of a software patent. However, that
source code is frequently unavailable when
needed, often years after the life of the product in
question. Thus, while software patent plaintiffs
can use the accused infringers current source
code to prove infringement by a preponderance of
the evidence, if the prior art source code is
unavailable it will be difficult for the defendant to
prove invalidity by that same preponderance, let
alone by clear and convincing evidence. Although
the unavailability of the source code does not
foreclose an invalidity defense, given the complex
technical issues and the heightened standard, the
practical effect is that plaintiffs often have free
rein to argue that the alleged infringer cannot
meet its heightened standard of proof without the
source code.
What is worse, this uneven playing field has
no basis in the Patent Act. The statutory
language of 35 U.S.C. § 282 does not contain the
Federal Circuits enhanced standard of proof.
Following the statutes plain meaning and this
Courts long-established rules of statutory
interpretation, the proper standard of proving
patent invalidity should be preponderance of the
evidence.
Amici respectfully urge the Court to restore
that standard, and thereby help ensure that
patent law serves, rather than thwarts, the public
interest in innovation.
6
ARGUMENT
I. THE CLEAR AND CONVINCING
EVIDENCE STANDARD IMPEDES THE
DEVELOPMENT OF OPEN SOURCE
SOFTWARE AND HARMS SMALL
SOFTWARE INNOVATORS
A. The Standard Impedes the
Development of Open Source
Software
Started several decades ago by a few core
groups of programmers, free and open source
software (FOSS) development takes a variety of
forms. However, at heart FOSS embodies a
process that invite[s] computer programmers
from around the world to view software code and
make changes and improvements to it. Through
such collaboration, software programs can often
be written and debugged faster and at lower cost
than if the copyright holder were required to do
all of the work independently. Jacobsen v.
Katzer, 535 F.3d 1373, 1378-79 (Fed. Cir. 2008).
Over approximately the past decade in
particular, FOSS has blossomed into a valuable
and large segment of the information technology
industry, with companies such as IBM
Corporation, Novell, Sun Microsystems, and Red
Hat offering products built on the FOSS
development process. FOSS technologies are now
widely used by public and private entities, from
the United States government to private
corporations such as IBM, Hewlett-Packard, and
Google, Inc. See Yochai Benkler, The Wealth of
Networks: How Social Production Transforms
7
Markets and Freedom 64 (2006);3 Bruce Byfield,
FOSS: Free and Open Source Software,
Datamation, May 30, 2010.4
FOSS has also become an integral and
valuable part of today's scientific community. As
one court noted:
Open source licensing has become a
widely used method of creative
collaboration that serves to advance
the arts and sciences in a manner
and at a pace that few could have
imagined just a few decades ago. For
example, the Massachusetts Institute
of Technology (MIT) uses a Creative
Commons public license for an
OpenCourseWare project that
licenses all 1800 MIT courses. Other
public licenses support the
GNU/Linux operating system, the
Perl programming language, the
Apache web server programs, the
Firefox web browser, and a
collaborative web-based encyclopedia
called Wikipedia . . . . [which] has
more than 75,000 active contributors
working on some 9,000,000 articles
in more than 250 languages.
Jacobsen, 535 F.3d at 1378.
8
In FOSS projects, unlike the closed and
proprietary software developed by entities such as
Petitioner, software develops openly and
transparently. The public has full access to the
conversations, the computer code, and each stage
of development, maximizing access to scientific
and industrial knowledge in the community and
spurring further productivity and innovation.5 In
addition, most FOSS collaborations involve
contributors from a wide variety of companies,
groups, and countries, many of whom are
motivated to volunteer their time and ingenuity
out of passion and dedication, rather than
expectation of financial reward. One study found
that open source programmers volunteer roughly
$1 billion worth of labor per year. Thomas
Claburn, Study Finds Open Source Benefits
Business, InformationWeek (January 17, 2007).6
See also FTC Report, Chap. 3, at 48 (open source
software has been hailed as an important
organizational innovation).
FOSS's collaborative nature, while integral
9
to its success, creates several problems when
FOSS software is the subject of a patent lawsuit
(or threat), even where the basis of the threat may
be an invalid patent. First, because these
collaborations are forged primarily through
community rather than capital investment, many
FOSS projects lack the funding to pay for patent
counsel, much less litigation. Second, the FOSS
collaboration model makes it difficult to collect
prior art in a format that can be used to challenge
validity under current Federal Circuit guidelines.
To fend off patent threats, FOSS projects often
depend on the collective knowledge of their
members and the sometimes haphazard
documentation of the projects as prior art, to the
extent that such documents exist.
Much of this collective knowledge, however,
arguably could not be considered as evidence
under the Federal Circuit's current standard
requiring alleged infringers to provide invalidity
by clear and convincing evidence. Specifically,
the opinion below may be read to hold that,
without obtaining a full set of source code, a
party could not rely on evidence of the operation
of that source code to invalidate a patent. i4i
Ltd. Partnership v. Microsoft Corp., 598 F.3d 831,
848 (Fed. Cir. 2010), Pet. App., 22a.
In the FOSS context, that full set may be
difficult to assemble. The nature of software
development tends to be informal. FTC Report,
Chap. 3, at 54. Documentation likely takes the
form of emails or postings to internet message
boards and newsgroups that are much more
informal than traditional academic research or
industry publications. For example, the
10
development of a particular piece of software may
be documented primarily in emails exchanged
between developers all over the world, each with
different snippets of code and comments. Some
of those developers may archive their email;
others may not, or may not do so in an easily-
searchable form. Further, more often than not,
no party is tasked with creating explanatory
materials of any kind, and the discussions that
exist often get lost and become unobtainable at a
later date when needed in litigation.
Thus, the Federal Circuit's inflated
standard of proving invalidity means that patents
that might be invalidated by FOSS technology are
nonetheless impervious to ordinary legal
challenge. That, in turn, threatens the public
interest in promoting the innovative activities that
would take place but for improper lawsuits and
legal threats.
B. The Standard Harms Small
Software Innovators
The existing inflated standard of proof also
harms small software innovators generally.
Small- and medium-sized firms play a
major role in fueling innovation in the information
technology industry. Indeed, small innovators are
responsible for some of the most important
technological advances of our day, benefiting our
nation and the world by making crucial
contributions to technological progress and
economic growth. Michael Meurer, Inventors,
Entrepreneurs, and Intellectual Property Law, 45
HOUS. L. REV. 1201, 1202 (2008); Josh Lerner,
11
Small Businesses, Innovation, and Public Policy in
the Information Technology Industry, in
Understanding the Digital Economy: Data, Tools,
and Research 201, 202-03 (Erik Brynjolfsson and
Brian Kahin, eds., Cambridge: MIT Press, 2000)
(Lerner)7 (small firms often played a key role in
observing where new technologies could be
applied to meet customer needs and in
introducing products rapidly).
Moreover, the proliferation of small
companies, each taking a unique approach to a
given problem based on their specific areas of
expertise, in itself increases the likelihood that
breakthrough innovations will occur. Meurer, 45
HOUS. L. REV. at 1212 (noting an important
advantage to having diverse sorts of innovators
with different experience or technical knowledge.
Breakthrough innovations are sometimes realized
as combinations of previously known techniques.
In these cases, the probability of a breakthrough
will increase with the diversity of potential
innovators.).
Unlike their larger, more-traditional
counterparts, small software startups primarily
achieve their success by innovating, not by
relying on patent protection. Most small software
startups don't even need patent protection to
procure financing. Id. at 1232.
However, the threat of patent litigation --
particularly when that litigation is based upon
patents of dubious validity that have been
12
artificially strengthened by a high standard of
proving invalidity -- hampers the ability of small
software companies from doing what they do best:
innovating. The time, effort, energy, and dollars
that must be dedicated to litigation budgets all
come at the expense of research and
development, or else serve as a deterrent to
entering the market at all. In essence, therefore,
invalid patents operate as a tax on innovation.
Their economic effect is to divert resources from
R&D to fund their defensive patent programs.
FTC Report, Chap. 3, at 52-53; Lerner at 208
(describing the innovation tax that afflicts some
of Americas most important and creative small
firms). This substantial burden affects some of
the country's most important and creative small
businesses.
Thus, the costs associated with trumped-up
patent litigation disproportionately affect small
companies that often do not have the capital to
absorb such costs. See FTC Report, Chap. 3, at
51 (software patentability has introduced new
costs, such as the cost of obtaining a patent,
determining whether a patent is infringed,
defending a patent infringement lawsuit, or
obtaining a patent license, which may
disproportionally affect small firms and individual
programmers and the open source community.)
(footnotes omitted). In fact, a 1990 survey of 376
firms found that the time and expense associated
with intellectual property litigation was a major
factor in decisions concerning the R&D agendas
in almost twice as many firms with fewer than
500 employees compared to their larger
counterparts. Lerner at 209.
13
Clarifying the proof standard for invalidity
would take an important step toward leveling the
playing field, and encourage small software
companies to fight patents they believe to be
invalid. At the same time, it would discourage
companies from preying on their smaller
competitors with patents of questionable validity.
This, in turn, would allow small software
innovators to use their time and money to focus
on innovation rather than mounting prolonged
defenses to invalid patent claims.
II. FINDING CLEAR AND CONVINCING
EVIDENCE OF PATENT INVALIDITY IS A
RECURRING PROBLEM IN COMPUTER
SOFTWARE PATENT CASES
A. Patent Owners Assert that Accused
Infringers Must Use the Prior Art's
Source Code to Prove Invalidity,
But That Source Code Is Often
Unavailable Years After the Fact
In this case, respondent i4i argued, and
both lower courts agreed, that Microsoft could not
prove its invalidity case absent access to the
relevant prior art's source code.8 Microsoft cert.
14
petition at 9, 25; i4i v. Microsoft, 598 F.3d at 848,
Pet. App., 22a (i4i's expert opined that it was
impossible to know whether the claim limitation
was met without looking at [the prior art's] source
code.); see also Pet. App., 139a (district court
stated that the testimony of i4i's expert that no
one could assess whether S4 met the claims of
the 449 patent without the relevant source code
was compelling).
This scenario is both common and
pernicious. In a software patent case, proof of
infringement and/or validity will regularly involve
an examination of the program's source code. For
example, in many software patents, some claim
limitations may be practiced by the source code.
Therefore, the source code is compared to the
claims in order to establish infringement or, as in
this case, invalidity. Although the unavailability
of the source code does not foreclose an invalidity
defense, given the complex technical issues and
the heightened standard, as a practical matter
plaintiffs get free rein to argue that the alleged
infringer cannot establish invalidity without the
source code.
And that leads to a key problem. In most
cases, the patent owner can easily get the
accused infringer's current source code in
discovery, and prove infringement by a mere
preponderance that way. See, e.g.. Patent L.R. 3-
4(a) for the Northern District of California;9 P.R.
15
3-4(a) for the Eastern District of Texas10 (both
requiring the accused infringer to produce its
source code early in the case).
In contrast, the source code for prior art is
often unavailable. First, undocumented prior
art in software is not published as in other
scientific fields, and in fact [f]requently, the
source code itself is never released at all. Mark
A. Lemley & Julie E. Cohen, Patent Scope and
Innovation in the Software Industry, 89 CAL. L.
REV. 1, 13, 42-44 (2001) (Lemley & Cohen). As
one software company explained:
Unlike most other technologies -- such
as pharmaceuticals, chemicals, and
industrial design -- there are no
extensive, comprehensive databases
where software prior art can be
reliably found. In the computing arts,
particularly in the open source
community, a great amount of
innovation has been and is produced
by individuals who never publish in
industry journals. . . . Thus, diligent
searches for business methods and
software are often unreliable and
costly. . . . the burden typically falls
to the public and small-scale
innovators to consider expensive and
time-consuming litigation.
16
Webbink, Red Hat's Comments To The Joint
FTC-DOJ Hearing on Competition and Intellectual
Property Law, March 20, 2002,11 at pages 2-3.
What is worse, for confidentiality reasons, non-open source third-party companies (or even
parties who later litigate these issues) often
carefully guard their source code as valuable
trade secrets.
Even when a software company does patent
its technology, such patents often do not disclose
the source code. The Federal Circuit has held
that a high-level functional description will
suffice, thereby negating the need to disclose
source code, flowcharts, or detailed descriptions
of the patented program. See Fonar Corp. v.
General Electric Co., 107 F.3d 1543, 1549 (Fed.
Cir. 1997) (source code not needed to satisfy best
mode requirement); Northern Telecom, Inc. v.
Datapoint Corp., 908 F.2d 931, 941-43 (Fed. Cir.
1990) (source code not needed to satisfy
enablement requirement); Lemley & Cohen, 89
CAL. L. REV. at 24-25; FTC Report, Chap. 5 at 7
(difficulties are particularly acute when non-patent prior art is important and in new areas of
technology, e.g., software and biotechnology, and
new fields of patenting activity, e.g., business
methods).
Further, while the open source code
discussed above is not kept secret at the outset,
it, too, can be difficult to locate when it becomes
17
relevant, years later, during a patent lawsuit. For
example, as discussed previously, FOSS
developers often do not create and/or retain
explanatory materials that summarize and
identify relevant parts of prior art source code.
Thus, the mere passage of time means that many
forms of source code likely will be difficult to find
and introduce into evidence as possible prior art.
See, e.g.. i4i v. Microsoft, 598 F.3d at 846-47, Pet.
App., 20a (source code was destroyed before the
litigation began).
Thus, software patent litigation is
necessarily skewed against alleged infringers
whether those defendants be from the FOSS
community, small software innovators, or any
other alleged infringer -- because they are simply
unable to obtain all of the evidence that could be
used in their defense.
As a result, software patent litigation can
appear to be a game of gotcha. The patent
owner argues that it proved infringement by a
preponderance of the evidence, using the very
source code the accused infringer was required to
produce in discovery. At the same time, the
patent owner argues that the accused infringer
did not (and could not) prove invalidity because of
the absence of the prior art source code. See,
e.g., Pet. App., 138a-139a (i4i's expert attacked
Microsoft's expert for rendering an invalidity
opinion without reviewing the unavailable code).
Moreover, even in cases where a defendant does
not require source code to prove invalidity, the
lack of that very code will allow the patent owner
to prejudicially argue that the accused infringer
cannot even offer the same quantum of proof of
18
invalidity as the patent owner did for
infringement -- let alone meet the clear and
convincing standard. i4i v. Microsoft, 598 F.3d at
848, Pet. App., 22a (Microsoft failed to meet the
clear and convincing standard of proof because
the source code was missing).
Equalizing the standard of proof will not, of
course, resolve the longstanding issue of
identifying and preserving software prior art.
However, leveling the playing field should at least
help ensure that defendants who can marshal
other types of evidence have a fair chance to
challenge improper patents.
B. The Growth in the Number of
Issued Patents and of Patent
Lawsuits Since the Formation of
the Federal Circuit Exacerbates the
Problem
The creation of the Federal Circuit in 1982
coincides with sharp increases in both the
number of patents issued and the amount of
patent litigation. The following table shows the
number of issued patents per year since 1980:12
19
20
Moreover, in recent years, the number of
defendants in each lawsuit also has grown
dramatically.14
The increase in issued patents and patent
litigation has had serious consequences for the
software industry, particularly after the Federal
Circuit expanded patent protection for software.
In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994); State
Street Bank & Trust Co. v. Signature Financial
Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert.
denied, 525 U.S. 1093 (1999) (both Alappat and
State Street greatly expanded the definition of
patentable subject matter under 35 U.S.C. § 101
so as to include computer software);15 Lemley &
21
Cohen, 89 CAL. L. REV. at 10-11.
One of the most serious consequences has
been to discourage innovation, as software
companies find themselves forced to devote more
resources to litigation rather than development.
As one study explained:
[T]he increase in patent litigation
represents a growing disincentive to
R&D that is not likely offset by
growth in the number or value of
innovations. Furthermore, we find
evidence that this disincentive is
borne by firms not only in their roles
as patent holders, but also as
innovators having to defend against
patent lawsuits. We find that the
more R&D a firm performs, the more
likely it is to be sued. In most
industries, this pattern of litigation is
inconsistent with the view that most
defendants in patent lawsuits are
simple pirates or imitators. Instead,
patent defendants are, to a large
degree, innovators themselves,
spending as much on R&D as the
plaintiffs. . . .Thus an important part
of the burden of patent disputes falls
on defending firms. . . . Also, as
Lanjouw and Schankerman (2004)
find, the risk of litigation falls
disproportionately on small firms.
____________
__, 130 S. Ct. 3218 (2010). However, State Street permitted the issuance of broad software patents by being the law for more than ten years.
22
James Bessen & Michael J. Meurer, The Patent
Litigation Explosion, BOSTON UNIVERSITY SCHOOL OF
LAW WORKING PAPER SERIES, LAW AND ECONOMICS
WORKING PAPER NO. 05-18 (2005),16 at 27-28.
These effects are exacerbated by the many
non-practicing entities (sometimes called patent
trolls) that have built a cottage industry in
obtaining spurious patents and then using them
to extract settlements. Justice Kennedy's
concurring opinion in eBay Inc. v. MercExchange,
L.L.C., described the practice:
An industry has developed in which
firms use patents not as a basis for
producing and selling goods but,
instead, primarily for obtaining
licensing fees. See FTC, To Promote
Innovation: The Proper Balance of
Competition and Patent Law and
Policy, ch. 3, pp. 38-39 (Oct. 2003),
available at http://www.ftc.gov/
os/2003/10/innovationrpt.pdf (as
visited May 11, 2006, and available in
Clerk of Court's case file). For these
firms, an injunction, and the
potentially serious sanctions arising
from its violation, can be employed as
a bargaining tool to charge exorbitant
fees to companies that seek to buy
licenses to practice the patent.
547 U.S. 388, 396 (2005).
One way of mitigating the impact of this
23
increase in software patent grants and resulting
litigation would be to level the playing field for
challenging improper patents. An even-handed
standard for proving validity would be a step in
the right direction. As one example, in licensing
negotiations, a level playing field will help
licensees negotiate license terms that more fairly
reflect the true value of the patent in question.
This will lead to more settlements and reduce the
amount of litigation.
III. THE COURT SHOULD INTERPRET
SECTION 282 OF THE PATENT ACT
ACCORDING TO ITS PLAIN MEANING
AND THE COURT'S PRECEDENTS
A. The Federal Circuit's Standard
Exceeds Congress' Statutory
Mandate
Congress created the Federal Circuit in
order to strengthen the United States patent
system. Markman v. Westview Instruments, Inc.,
517 U.S. 370, 390 (1996), citing H.R. REP. NO. 97-
312, at 20-23 (1981). In practice, however, the
Federal Circuit has undermined the patent
system by exceeding the statutory mandates
upon which that system rests.
For example, in eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388, the Court reviewed the
Federal Circuit's implementation of its general
rule that courts will issue permanent injunctions
against patent infringement absent exceptional
circumstances. 401 F.3d 1323, 1339 (2005).
This Court reversed that rule, relying on the plain
language of 35 U. S. C. § 283, which states that if
24
a patent owner wins a trial, injunctions may
issue in accordance with the principles of
equity. This Court held that the Court of
Appeals erred in its categorical grant of
automatic injunctions. 547 U.S. at 394.
The Federal Circuit also had read into 35
U.S.C. § 103 a heightened standard for proving
obviousness, under which a patent claim is only
proved obvious if some motivation or suggestion
to combine the prior art teachings can be found
in the prior art, the nature of the problem, or the
knowledge of a person having ordinary skill in the
art. KSR Intl Co. v. Teleflex Inc., 550 U.S. 398,
407, 127 S. Ct. 1727, 1734 (2007). In its roughly
20-year history in the Federal Circuit, this
standard greatly favored patent owners; it was
often difficult or impossible for an accused
infringer to prove obviousness by showing a
teaching, suggestion, or motivation.
In 2007, this Court summarily rejected this
rule, holding that the Federal Circuit's
fundamental misunderstandings of the Patent
Act led the lower court to analyze the obviousness
standard in a narrow, rigid manner inconsistent
with § 103 and this Court's precedents. Id. at
422, 428, 127 S. Ct. at 1743, 1746.
Here, the Federal Circuit has once again
interpreted the Patent Act and relevant case law
to include unnecessary legal requirements that
disproportionately burden the defense. In this
case, the relevant statute does not require
invalidity to be proven by clear and convincing
evidence; rather, 35 U.S.C. § 282 merely states
that the burden of establishing invalidity of a
patent or any claim thereof shall rest on the party
25
asserting such invalidity. Of course, if Congress
wanted to create a clear and convincing standard
for proving invalidity, it could have included that
language in § 282. It did not.
Indeed, where Congress includes
particular language in one section of a statute but
omits it in another section of the same Act, it is
generally presumed that Congress acts
intentionally and purposely in the disparate
inclusion or exclusion. KP Permanent Make-Up,
Inc. v. Lasting Impression I, Inc., 543 U.S. 111,
118 (2004) (quoting Russello v. United States, 464
U.S. 16, 23 (1983)).
Here, § 282's silence on the standard of
proof stands in stark contrast to another section
of the Patent Act, 35 U.S.C. § 273. Section 273
provides a prior invention defense to business
method patents. Section 273(b)(4) expressly
states that a person asserting the defense under
this section shall have the burden of establishing
the defense by clear and convincing evidence.
Section 273 illustrates that when Congress
intended to impose a clear and convincing
standard of proof, it knew how to do so. The
omission of such a standard in § 282 means that
the ordinary preponderance standard of proof
should apply as a general rule. See Grogan v.
Garner, 498 U.S. 279, 286 (1991) (the silence on
the standard of proof was inconsistent with the
view that Congress intended to require a special,
heightened standard of proof.)
i4i argued that the use of § 273's express
heightened standard as a rule of statutory
construction does not apply here because § 282
and § 273 were enacted at different times. Brief
26
in Opposition to Petition for Certioriari, at 14 n.9.
i4i is wrong. Just last term, this Court
rejected such a limitation on the use of § 273 to
interpret another section of the Patent Act,
namely 35 U.S.C. § 101. In Bilski v. Kappos, 561
U.S. __, 130 S. Ct. 3218, 3228-29, the Court used
the presence of business methods in § 273 to
conclude that the term process in § 101 could
not exclude business methods -- or else § 273's
reference to business methods would be
meaningless. The Court reached this
conclusion even though § 273 was enacted at a
different time than § 101. 130 S.Ct. at 3229. In
fact, § 101 and § 282 were both enacted at the
same time (both before § 273's enactment),
making Bilski directly on point.
Thus, the express inclusion of the clear
and convincing standard in § 273(b)(4), and its
absence in § 282, shows that the latter statute
does not embrace a heightened standard of proof.
B. Traditional Rules Governing
Standard of Proof Should Apply
When interpreting the Patent Act, this
Court has applied familiar or traditional rules
of jurisprudence. See, e.g.. eBay, 547 U.S. at
391, 393-94.
Such traditional rules should apply here.
The standard of proof in civil cases is normally
just preponderance of the evidence. In Grogan,
498 U.S. 279, for example, the Court considered a
section of the Bankruptcy Code providing that a
debtor would not be discharged from a debt
obtained by actual fraud. The question was
whether a creditor seeking to prevent discharge
27
had to prove his claim of fraud by clear and
convincing evidence, or by a preponderance of the
evidence.
As here, the code section was silent on the
standard of proof. Id. at 282. The Eighth Circuit
held that the standard was one of clear and
convincing evidence. Id. This Court reversed, Id.
at 286, stating:
Because the preponderance-of-the-evidence standard results in a
roughly equal allocation of the risk of
error between litigants, we presume
that this standard is applicable in
civil actions between private litigants
unless particularly important
individual interests or rights are at
stake, citing Herman & MacLean v.
Huddleston, 459 U.S. 375, 389-390
(1983).
The Court found no such particularly important
interests in Grogan, even though it dealt with the
desirable goal of permitting a debtor to obtain a
fresh start under the Bankruptcy Code. 498
U.S. at 286-87.
Indeed, civil cases will rarely raise the
particularly important interests with which the
Court was concerned with in Grogan. In Herman
& MacLean v. Huddleston, 459 U.S. at 389-90,
the Court reviewed several cases where it had
declined to affirm a clear and convincing standard
even where there was a possibility that severe
civil sanctions may be imposed. Id., citing, e.g.,
United States v. Regan, 232 U.S. 37, 48-49 (1914)
(proof by a preponderance of the evidence suffices
28
in civil suits involving proof of acts that expose a
party to a criminal prosecution); Steadman v.
SEC, 450 U.S. 91, 95 (1981) (preponderance
standard upheld in SEC administrative
proceedings where the sanctions imposed in the
proceedings included an order permanently
barring an individual from practicing his
profession); SEC v. C.M. Joiner Leasing Corp., 320
U.S. 344, 355 (1943) (preponderance of the
evidence suffices to establish fraud under Section
17(a) of the 1933 Act).
Instead, the Court has affirmed such a
standard only in the most extreme civil cases,
such as proceedings to terminate parental rights
or for involuntary commitments. See Herman &
MacLean v. Huddleston, 459 U.S. at 389-90
(collecting cases).
No such interests exist here. A patent suit,
while an important exercise in striking an
appropriate balance between intellectual property
and the public interest, does not implicate
particularly important individual interests or
rights. Id. Thus, the Federal Circuit's decision
to disregard the normal evidence standard runs
contrary to this Courts clear guidance.
C. The Federal Circuit's Standard
Results from a Misapplication of
This Court's Precedent
The Federal Circuit's clear and convincing
standard appears to have originated in three of its
early cases. Am. Hoist & Derrick Co. v. Sowa &
Sons, Inc., 725 F.2d 1350, 135860 (Fed. Cir.
1984); Connell v. Sears, Roebuck & Co., 722 F.2d
29
1542, 1548-49 (Fed. Cir. 1983); SSIH Equip. S.A.
v. U.S. Intl Trade Commn, 718 F.2d 365, 375
(Fed. Cir. 1983).17 Subsequent Federal Circuit
cases generally cite one or more of those cases to
apply the heightened standard in all
circumstances.
But a careful review of those three cases
shows that even they do not properly stand for
the Federal Circuits broad clear and convincing
rule. The first such case, SSIH Equip., 718 F.2d
365, did not expressly adopt a clear and
convincing standard. Rather, the case just stated
that we find it inappropriate to speak in terms of
a particular standard of proof being necessary to
reach a legal conclusion. Id. at 375. The court
cited Radio Corp. of Am. v. Radio Engg Labs., Inc.,
293 U.S. 1 (1934), merely for the proposition that
certain facts in patent litigation must be proved
by clear and convincing evidence, without saying
what those certain facts were. SSIH Equip.
nowhere held that clear and convincing evidence
was a general rule.
In Connell, 722 F.2d 1542, the Federal
Circuit discussed the district court's invalidity
opinion. Id. at 1548-49. In the course of that
discussion the appeals court assumed that the
standard of proving invalidity was clear and
convincing evidence, but the case cited no
authority whatsoever for that principle. Id. at
1549.
The third case, Am. Hoist, 725 F.2d 1350,
30
relied on Radio Corp. for the clear and convincing
standard. Am. Hoist claimed that Radio Corp.
stood for the proposition that the clear and
convincing standard never changes. 725 F.2d
at 1359-60.
Thus, the question is whether Radio Corp.
truly adopted the heightened standard as a
general rule in all cases. It did not.
Radio Corp. arose out of an unusual, if not
unique, set of facts having to do with the
development of early radio technology. Edwin
Armstrong, Lee De Forest, and two others were
involved in contested interference proceedings in
the Patent Office (i.e., unlike ordinary patent
prosecution, the proceedings were adversarial).
Both those interference proceedings and separate
federal court litigation resulted in De Forest being
adjudged the inventor. 293 U.S. at 2-5.
Armstrong thus had lost on multiple fronts,
and was barred from relitigating the issue further.
Nonetheless, Armstrong funded a separate
company, Radio Engineering Laboratories, which
was not bound by the prior judgments under res
judicata principles. Id. at 7. Radio Engineering
then launched a new challenge to the patents
anyway, apparently based on nothing more than
the same evidence on which Armstrong had
already lost.
It was against this unusual background -- a
patent whose inventorship had previously been
determined in both administrative and judicial
proceedings -- that this Court stated that Radio
Engineering could not prove invalidity merely by a
preponderance of the evidence. In a passage
quoted in Am. Hoist (see 725 F.2d at 1359), this
31
Court stated:
Through all the verbal variances,
however, there runs this common
core of thought and truth, that one
otherwise an infringer who a§ails the
validity of a patent fair upon its face
bears a heavy burden of persuasion,
and fails unless his evidence has
more than a dubious preponderance.
293 U.S. at 8. Am. Hoist, and subsequent Federal
Circuit cases, relied on this statement to hold
that the standard of proof is clear and convincing
evidence in all cases -- even though this Court
clarified immediately after the above quote that it
was only talking about the unusual facts of Radio
Corp. Specifically, the Court justified a higher
standard of proof in that case since the
respondent had merely used a privilege under
the doctrine of res judicata to try the issues over
again, based on substantial identity of
evidence. 293 U.S. at 8-9. (emphasis in original).
Thus, Radio Corp. stands only for the
proposition that clear and convincing evidence is
needed when a defendant tries to relitigate an
already-adjudicated patent using the same
invalidity evidence. Radio Corp. most certainly
does not stand for the proposition that the clear
and convincing standard applies in all cases --
such as this case, where Microsoft is asserting
invalidity based on new prior art not previously
considered by the Patent Office, nor previously
litigated. Yet, to this day, the Federal Circuit
continues to rely on Am. Hoist for the proposition
that the standard of proof is clear and convincing
evidence in every case. See Uniloc USA, Inc. v.
32
Microsoft Corp., Nos. 2010-1035, -1055, slip opn.
at 55, 2011 WL 9738, at *26 (Fed. Cir. January 4,
2011) (Microsoft has made this argument before,
and we held that the statutory presumption of
validity can be overcome only by showing
invalidity by clear and convincing evidence, even
where allegedly invalidating prior art was not
before the patent office, citing solely this case
and Am. Hoist).
i4i and its amici might argue that the clear
and convincing standard should be retained
because it supposedly comports with settled
expectations of patent owners in a high standard
of proof. The above analysis shows that any such
expectations are not based on sound precedent.
33
CONCLUSION
In this case, the Federal Circuit has
incorrectly interpreted a clear statute. This Court
should correct the Federal Circuit's misreading of
§ 282 and hold that the standard of proving
patent invalidity is a preponderance of the
evidence.
Respectfully submitted,
MICHAEL BARCLAY
Counsel of Record
JULIE P. SAMUELS
CORYNNE MCSHERRY
JAMES S. TYRE
ELECTRONIC FRONTIER
FOUNDATION
[address, phone, email]
Attorneys for Amici Curiae
Electronic Frontier Foundation
Of Counsel:
Sherwin Siy
PUBLIC KNOWLEDGE
[address, phone, email]
34
Lawrence Rosen
THE APACHE SOFTWARE
FOUNDATION
Rosenlaw & Einschlag
[address, phone, email]
February 1, 2011
_______________
1 No counsel for a party authored this brief in whole
or in part, and no such counsel or party made a monetary
contribution intended to fund the preparation or
submi§ion of this brief. No person other than the amici
curiae, or their counsel, made a monetary contribution
intended to fund its preparation or submi§ion. The parties
have consented to the filing of this brief. Respondents
blanket consent and petitioners blanket consent were filed
with the Court on December 7 and 8, 2010, respectively.
Web sites cited in this brief were last visited on
January 25, 2011.
2 Available at:
http://www.ftc.gov/
os/2003/10/innovationrpt.pdf
3 Available at:
http://www.benkler.org/
Benkler_Wealth_Of_Networks.pdf
4 Available at:
http://
itmanagement.earthweb.com/osrc/article.php/
3885101/FOSS-Free-and-Open-Source-Software.htm
5 “Free software is a matter of the users’ freedom to run, copy, distribute, study, change and improve the software.” “The Free Software Definition,” available at:
http://www.gnu.org/philosophy/
free-sw.html
6 Available at:
http://www.informationweek.com/news/software/infrast.ructure/showArticle.jhtml?
articleID=196901596#. See also “Study on the Economic impact of open source software on innovation and the competitiveness of the Information and Communication Technologies (ICT) sector in the EU,” Final Report, November 20, 2006, at 10, available at:
http://ec.europa.eu/
enterprise/sectors/ict/files/
2006-11-20-flossimpact_en.pdf.
7Available at:
http://mitpress.mit.edu/
books/BRYUH/09.lerner.pdf
8Source code is the "'human readable' programming
language" in which computer programmers write their
programs. Source code is then generally converted by the
computer into a machine readable code or machine
language expressed in a binary format. Microsoft Corp. v.
AT&T Corp., 550 U.S. 437, 459, 127 S. Ct. 1746, 1760
(2007) (Alito, J., concurring). Commercial software
companies such as Microsoft generally distribute their
programs in machine readable code, not source code.
9 Available at:
http://www.cand.uscourts.gov/pages/56 and
http://www.cand.uscourts.gov/
filelibrary/177/Pat4.pdf
10Available at:
http://www.txed.uscourts.gov/
page1.shtml?location=rules and
http://www.txed.uscourts.gov/cgi-bin/view_document.cgi?document=1179&download=true
11 Available at:
http://www.ftc.gov/opp/
intellect/020320webbink.pdf
12 D. Crouch, "USPTO Patent Grant Numbers,"
Patently-O Blog, August 19, 2010, available at:
http://www.patentlyo.com/
patent/2010/08/uspto-patent-grant-numbers.html.
(The Patently-O Blog is recognized as one of the
leading patent law blogs, if not the leading blog. See, e.g.:
http://blawgit.com/
2009/08/11/50-best-patent-blogs/ and
http://ipwatchdog.com/
2009/02/11/the-top-25-patent-blogs/id=2015/)
13 D. Crouch, “Patent Litigation Statistics: Number of Patents Being Litigated,” Patently-O Blog, March 17, 2008 (noting “an increasing trend to include more defendants in a single complaint”), available at:
http://www.patentlyo.com/patent/
2008/03/patent-litigati.html
14 Kyle Jensen, "Guest Post: Counting Defendants in
Patent Litigation, Patently-O Blog, October 27, 2010
(noting that the number of named defendants increased
nearly 600% between 1990 and 2010), available at:
http://www.patentlyo.com/
patent/2010/10/
guest-post-counting-defendants-in-patent-litigation.html
15 State Street was probably overruled in part, at
least sub silentio, by this Court in Bilski v. Kappos, 561 U.S.
16 Available at:
http://papers.ssrn.com/sol3/papers.cfm?abstract_i
d=831685
17 Other Federal Circuit cases from 1983-84 dealt
with validity issues, but without discussing the standard of
proof.
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