Microsoft smoked in i4i case: clear and convincing evidence remains

Microsoft lost the i4i case. The Court of Appeals for the Federal Circuit has
been affirmed by the Supreme Court in two straight cases. The voting at
the Supreme Court went as follows:

SOTOMAYOR, J., delivered the opinion of the Court, in which SCALIA,
KENNEDY, GINSBURG, BREYER, ALITO, and KAGAN, JJ., joined. BREYER,
J., filed a concurring opinion, in which SCALIA and ALITO, JJ., joined.
THOMAS, J., filed an opinion concurring in the judgment. ROBERTS,
C. J., took no part in the consideration or decision of the case.

Clear and convincing evidence is still required to establish invalidity:

Under §282 of the Patent Act of 1952, “[a] patent shall
be presumed valid” and “[t]he burden of establishing in-
validity of a patent or any claim thereof shall rest on the
party asserting such invalidity.” 35 U. S. C. §282. We
consider whether §282 requires an invalidity defense to be
proved by clear and convincing evidence. We hold that it
does.

The U.S. Constitution is mentioned:

Pursuant to its authority under the Patent Clause, U. S.
Const., Art. I, §8, cl. 8, Congress has charged the United
States Patent and Trademark Office (PTO) with the task
of examining patent applications, 35 U. S. C. §2(a)(1), and
issuing patents if “it appears that the applicant is entitled
to a patent under the law,” §131. Congress has set forth
the prerequisites for issuance of a patent, which the PTO
must evaluate in the examination process.

Looking to the future of first to file, will the Supreme Court say it is Congress,
or the US Constitution, that defines who an inventor is?
[Here: Congress has set forth the prerequisites for issuance of a patent}

Judge Rich is mentioned:

In asserting an invalidity defense, an alleged infringer
must contend with the first paragraph of §282, which
provides that “[a] patent shall be presumed valid” and
“[t]he burden of establishing invalidity . . . rest[s] on the
party asserting such invalidity.”1 Under the Federal
Circuit’s reading of §282, a defendant seeking to overcome
this presumption must persuade the factfinder of its in-
validity defense by clear and convincing evidence. Judge
Rich, a principal drafter of the 1952 Act, articulated this
view for the court in American Hoist & Derrick Co. v.
Sowa & Sons, Inc., 725 F. 2d 1350 (CA Fed. 1984). There,
the Federal Circuit held that §282 codified “the existing
presumption of validity of patents,” id., at 1359 (internal
quotation marks omitted)—what, until that point, had
been a common-law presumption based on “the basic
proposition that a government agency such as the [PTO]
was presumed to do its job,” ibid.

The issue:

Where Congress has prescribed the governing standard
of proof, its choice controls absent “countervailing consti-
tutional constraints.” Steadman v. SEC, 450 U. S. 91, 95
(1981). The question, then, is whether Congress has made
such a choice here.
As stated, the first paragraph of §282 provides that
“[a] patent shall be presumed valid” and “[t]he burden of
establishing invalidity of a patent or any claim thereof
shall rest on the party asserting such invalidity.” Thus, by
its express terms, §282 establishes a presumption of pat-
ent validity, and it provides that a challenger must over-
come that presumption to prevail on an invalidity defense.
But, while the statute explicitly specifies the burden of
proof, it includes no express articulation of the standard of
proof.

Justice Cardozo is mentioned:

But given how judges, including Justice
Cardozo, repeatedly understood and explained the pre-
sumption of patent validity, we cannot accept Microsoft’s
argument that Congress used the words “presumed valid”
to adopt only a procedural device for “shifting the burden
of production,” or for “shifting both the burden of produc-
tion and the burden of persuasion.”

Humor at Microsoft's expense:

Squint as we may, we fail to see the qualifications that
Microsoft purports to identify in our cases.

AND

But the canon against superfluity assists only where a
competing interpretation gives effect “‘to every clause and
word of a statute.’” Duncan v. Walker, 533 U. S. 167, 174
(2001) (quoting United States v. Menasche, 348 U. S. 528,
538–539 (1955)); see Bruesewitz v. Wyeth LLC, 562 U. S.
___, ___ (2011) (slip op., at 12). Here, no interpretation of
§282—including the two alternatives advanced by Micro-
soft—avoids excess language.

The Breyer concurring opinion noted:

I join the Court’s opinion in full. I write separately be-
cause, given the technical but important nature of the
invalidity question, I believe it worth emphasizing that in
this area of law as in others the evidentiary standard of
proof applies to questions of fact and not to questions of
law. See, e.g., Addington v. Texas, 441 U. S. 418, 423
(1979). Thus a factfinder must use the “clear and convinc-
ing” standard where there are disputes about, say, when a
product was first sold or whether a prior art reference had
been published.

Justice Thomas wrote:

(...)American Hoist & Derrick Co. v.
Sowa & Sons, Inc., 725 F. 2d 1350, 1359 (CA Fed. 1984)
(“[I]n 1952, the case law was far from consistent—even
contradictory—about the presumption”); cf. Bruesewitz v.
Wyeth LLC, 562 U. S. ___, ___–___ (2011) (slip op., at 9–
10) (Congress’ use of a word that is similar to a term of art
does not codify the term of art). Therefore, I would not
conclude that Congress’ use of that phrase codified a stan-
dard of proof.

Nevertheless, I reach the same outcome as the Court.
Because §282 is silent as to the standard of proof, it did
not alter the common-law rule. See ante, at 6 (“[§282]
includes no express articulation of the standard of proof”).
For that reason, I agree with the Court that the height-
ened standard of proof set forth in Radio Corp. of Amer-
ica v. Radio Engineering Laboratories, Inc., 293 U. S. 1
(1934)—which has never been overruled by this Court or
modified by Congress—applies.