Tuesday, April 19, 2011

"You're contradicting Cardozo?"

Online wsj said this of oral arguments in the i4i/Microsoft case:

But Mr. Hungar's argument ran smack into a 1934 precedent from one of the court's most revered justices, Benjamin Cardozo, who in a case involving radio technology wrote that once issued [Radio Corporation of America v. Radio Eng’g Labs., Inc., 293 U.S. 1 (1934) ], patents enjoy a presumed validity "not to be overthrown except by clear and cogent evidence."
"You're contradicting Cardozo?" said Justice Antonin Scalia, the court's senior member, who presided over the hearing because Chief Justice John Roberts, who owns Microsoft stock, recused himself.
Mr. Hungar said the Cardozo opinion concerned a narrower and different subset of patent challenges,
"But Justice Cardozo certainly didn't limit his holding in the way you suggest," retorted the court's newest member, Justice Elena Kagan. "The language of that opinion is extremely broad."

Within the 1934 case, one does find broad language, as Justice Kagan stated:

A patent regularly issued, and even more obviously a patent issued after a hearing of all the rival claimants, is presumed to be valid until the presumption has been overcome by convincing evidence of error. The force of that presumption has found varying expression in this and other courts. Sometimes it is said that, in a suit for infringement, when the defense is a prior invention, "the burden of proof to make good this defense" is "upon the party setting it up," and "every reasonable doubt should be resolved against him." Cantrell v. Wallick, 117 U. S. 689, 117 U. S. 695-696; 85 U. S. 124; The Barbed Wire Patent, 143 U. S. 275, 143 U. S. 285; Washburn v. Gould, 3 Story, 122, 142; H. J. Heinz Co. v. Cohn, 207 F.5d 7, 554; Detroit Motor Appliance Co. v. Burke, 4 F.2d 118, 122; Wilson & Willard Mfg. Co. v. Bole, 227 F.6d 7, 609; Stoody Co. v. Mills Alloys, Inc., 67 F.2d 807, 809; cf. Morgan v. Daniels, supra,@ p. 153 U. S. 123. Again, it is said that
"the presumption of the validity of the patent is such that the defense of invention by another must be established by the clearest proof -- perhaps beyond reasonable doubt."
Austin Machinery Co. v. Buckeye Traction Ditcher Co., 13 F.2d 697, 700. The context suggests that, in these and like phrases, the courts were not defining a standard in terms of scientific accuracy or literal precision, but were offering counsel and suggestion to guide the course of judgment. Through all the verbal variances, however, there runs this common core of thought and truth -- that one otherwise an infringer who assails 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. Cf. Philippine Sugar E.D. Co. v. Philippine Islands, 247 U. S. 385, 247 U. S. 391. If that is true where the assailant connects himself in some way with the title of the true inventor, it is so a fortiori where he is a stranger to the invention, without claim of title of his own. If it is true where the assailant launches his attack with evidence different, at least in form, from any theretofore produced in opposition to the patent, it is so a bit more clearly where the evidence is even verbally the same.

Furthermore, the 1934 case does represent a fact pattern in which the "first to file" (Langmuir) did NOT ultimately receive the patent. De Forest was the fourth to file, but ultimately got the valuable patent rights. The whole history of radio would have been different if the current patent reform bill were then the operative patent law. De Forest, the actual inventor, would have been out of luck.

Radio Corporation v. Radio Laboratories

See prior IPBiz posts on i4i:




Blogger New said...

It looks to me like i4i's got the upper hand in this patent litigation, and not only because of the U.S. arguing as amicus on its behalf. I've always thought i4i had the better arguments, not to mention the legal precedent and reliance issues on its side.

5:20 PM  

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