Score One For The Trolls: Supreme Court Says Congress Intended It To Be Very Difficult To Invalidate Patents

from the canada-celebrates dept

This isn’t a huge surprise, but in the Microsoft v. i4i case over what the standard for invalidating a patent should be (either the super high bar of “clear and convincing evidence” or the slightly lower bar of “the preponderance of the evidence,”) the Supreme Court has now decided that the higher bar is what Congress intended (pdf). This means that it’s that much more difficult to invalidate bad patents. The Court’s ruling is basically that the common law presumption of validity mostly (but not entirely) used this standard, and when Congress passed the 1952 Patent Act (really written by patent lawyers), it simply meant to codify what the common law had said on that issue. It was an 8-0 ruling (with Chief Justice Roberts not taking part due to Microsoft investments, I believe), though Justice Thomas had some reservations about the thinking, but not the final judgment. The opinion was written by Justice Sotomayor, who got a bit snarky at points:

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

I recognize the general reasoning of the Court in the case. Basically, it looks like, historically, a higher standard was frequently used, and since Congress didn’t specify a different standard, it seems to suggest they were fine with the standard. But I think to some extent that ignores reality. First of all, the 1952 Act was written by patent lawyers and it’s not clear Congress even understood all of it, so it seems a bit rich to suggest that it purposely was trying to codify that standard. On top of that, the use of the patent system has changed dramatically over the past few decades, and the entire presumption of validity is increasingly in question given the massive number of ridiculously bad patents approved by the Patent Office. As it currently stands, USPTO examiners rush through applications, spending an average of about 18 hours on each application. To grant patents with so little review and then presume they’re valid with a ridiculously high barrier to challenging that presumption seems economically stupid.

In what world does it make sense to grant innovation-limiting monopolies for nearly two decades based on 18 hours of review?

But, in the end, this is really Congress’ problem to fix — which means they won’t. Congress could fix this quite easily by clarifying a lower standard to invalidate patents. This makes tremendous sense. The only patents it would impact are bad patents. And no one — even patent supporters — should want bad patents. But you know who does like bad patents? Those who have them and those who profit from them — and those people are really loud in their support of not messing with the system that gives them so much in monopoly rents. So it seems highly unlikely that Congress will even bother to look at making this simple change to the patent system.

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Companies: i4i, microsoft

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Comments on “Score One For The Trolls: Supreme Court Says Congress Intended It To Be Very Difficult To Invalidate Patents”

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Anonymous Coward says:

I wonder what it will take for critical mass to be reached and for Congress to be forced (by individuals, businesses, or economic forces) to fix the laws.

Will we look back 20 years from now and think “wow, how insane were ACTA/PROTECT IP/Patent laws back then?”. or will we look back and think “wow, if we’d done something 20 years ago we might still be a global economic powerhouse… now all the growth and invention is overseas where the trolls and RIAA’s never got a foothold”

Gumnos (profile) says:

Directly suing the USPTO?

Could one directly sue the USPTO on the grounds that the reviewers are unqualified as “a person having ordinary skill in the art“? Unless the reviewers can be shown to meet this (albeit low) level of skill, any patents granted outside their skills would almost have to be invalidated (or at least subject to reconsideration/review).

Anonymous Coward says:

I don’t think it’s accurate to say that bad patents are the only patents that would be affected by a lower standard for proving invalidity.

Let’s say you’ve got a “good” patent. If you have to litigate over that patent 4-5 times, there’s a decent chance that one of those suits might end up with an invalidity judgment under a a preponderance of the evidence standard. Once that happens once, the patent is dead forever.

sheenyglass (profile) says:

Not as bad as it looks (but still not good)

This opinion is actually a bit less monolithic than it initially appears. The concurring opinion is pretty interesting in that it upholds the clear and convincing standard, but characterizes the scope of its application as fairly narrow.

The concurrence draws the line between a question of fact and question of law such that the clear and convincing standard (which applies only to questions of fact) applies only to determining the narrow questions about whether alleged events occurred:

“Thus a factfinder must use the ?clear and convincing? standard where there are disputes about, say, when a product was first sold or whether a prior art reference hadbeen published”

The concurrence goes on to state that question of whether these facts amount to public use or can show a lack of novelty or that the patent is obvious is a question of law, and the clear and convincing standard doesn’t apply.

ChrisB (profile) says:


The state of patents today is retarded. I search for patents very frequently, and you wouldn’t believe what is granted a patent. Vibration absorbers, for example, were invented around 1910, and there are still big companies (like 3M) who try and claim their new little tweak allows them to re-patent a device which is over 100 years old. (Vibration absorbers are at the top of sky-scrapers which help them from swaying too much in the wind, and also on industrial equipment.)

In my opinion, if I can’t build it from the drawing, the patent should be instantly invalid. Or, “No screws, you lose.”

Josh in CharlotteNC (profile) says:


Let’s say you’ve got a “good” patent. If you have to litigate over that patent 4-5 times, there’s a decent chance that one of those suits might end up with an invalidity judgment under a a preponderance of the evidence standard.

Your definition of “good” doesn’t match mine.

Besides, at the speed court cases and appeals take, if you’re litigating it 4-5 times, the patent should have expired.

Once that happens once, the patent is dead forever.

And that’s bad why?

Anonymous Coward says:

What it will take is when it impacts the government/military/safety of the country in a very clear and significant way (read: economically).

See the potential RiM shutdown/injunction. This would have had broad impact on many sectors of the economy, including Government operations.

So the solution is to

1. Be a Patent troll.
2. Come up with some insane unreasonable licensing rate.
3. Go after the government/military.

Chronno S. Trigger (profile) says:

Patents are suppose to be vary difficult to invalidate. The Supreme Court got that one right, they just got the direction wrong. Patents are suppose to be difficult to get in the first place with the idea that only valid patents get threw. That way, if a patent is questioned it can stand on it’s own merits instead of an interpretation of the law.

That’s not what happens, but it’s how it should be.

TimothyAWiseman (profile) says:

I believe your commentary somewhat conflates two related but definitely distinct questions.

The first is “Should a lower standard be used in judging these patents?” I do not really know the answer to this question, but I know you have made some very compelling arguments.

The second is “Should the Supreme Court mandate that a lower standard be used?” I believe the answer to this one is a resounding No. Even if a lower standard should be used, Congress did, as the Supreme Court itself points out, seem to ratify the higher standard in legislation. It is not the Supreme Court’s place to modify this legislation unless it is in direct conflict with a higher authority such as the Constitution. Whether or not the members of Congress actually understood what they were doing in passing this legislation is largely irrelevant in deciding if The Surpeme Court should be able to change it, it remains Congress’s bailiwick, and not the court systems, to change it now that it stands as statute.

Anonymous Coward says:


I don’t think I’ve provided a definition of a “good” patent, so I’m not sure why you think your definition is different than mine. “Good” can mean whatever you want it to mean, unless you think no patent is a good patent.

Although lawsuits take a long time, they are not always filed one after another. Rather, they are sometimes filed concurrently, so getting 4-5 judgments doesn’t necessarily take an entire patent term.

The detriment of a “good” patent being declared invalid is that the owner no longer gets the benefits of patenting. If you think there are no benefits whatsoever to the patent system, then this is not an issue. But if that’s your opinion, the standard of proof is a minor concern.

Mike Masnick (profile) says:


Let’s say you’ve got a “good” patent. If you have to litigate over that patent 4-5 times, there’s a decent chance that one of those suits might end up with an invalidity judgment under a a preponderance of the evidence standard

I don’t see how that’s possible. If it’s a good patent, then the preponderance of the evidence will never show it as being invalid.

Once that happens once, the patent is dead forever

If the preponderance of the evidence shows that it’s a bad patent, then that’s a good thing.

Anonymous Coward says:


Right. You still end up with the same problem, using exceptional cases to try to throw the entire system out the window. You want to burn down the house to get rid of the fleas.

As for “No screws, you lose.”, I can think of plenty of things that are made with interference fits or similar designs that don’t have any screws at all. Or, “broadbrushing the system, you lose”.

Anonymous Coward says:


General question, how many posts have you ever made about ridiculous outcomes in court cases(not IP, just “McDonalds Coffee” style outcomes)? You know, ones that the facts and the law read together have weird outcomes. I think that right there should take your perfect world comment a little bit too perfect to actually work. You’re asking to change an imperfect system into a perfect system, which I don’t think is possible.


The true mother of invention...

> The detriment of a “good” patent being declared invalid is that the owner no longer gets the benefits of patenting.

ANY patent represents considerable harm to society at large. That damage has to be weighed against it’s benefit. When considered against the vast majority of patents that yield no benefit at all, the loss of a few good patents seems like the far better bargain.

The true mother of invention is necessity, not avarice.


Always disfavor the least desirable thing.

Patents are inherently a bad thing.

Therefore the tendency should always be against them. It should be harder to get them and harder to keep them.

There is this mythology that patents are an inherently more desirable thing when they really are not. They are the least desirable thing. One’s “null hypothesis” a court room should reflect that.

Yes. Patents are harmful. They stifle innovation for the better part of a Human generation. They should be viewed in the same manner as toxic waste or a spent reactor core.

Same Anonymous Coward says:

Always disfavor the least desirable thing.

Why are patents inherently a bad thing? Please link to pertinent studies(using hard data). For all your reasons(which I think are valid concerns), I could give you 20 reasons whey patents are a good thing. Nobody gets anywhere by performing thought experiments and using anecdotes to prove their point.

My only point was that a simple change would not make much difference as Mike likes to extrapolate, and it’s idiotic to expect perfection to justify your viewpoint, when imperfection from the opposite side of the coin is what you hate. The Court did what was in the law, and although the law was “written by Patent lawyers”(an aside: aren’t most laws written by people who know the most about that area), the tech community has had 60 years to change it but they haven’t.

Anonymous Coward says:

Always disfavor the least desirable thing.

We live in an imperfect world where otherwise reasonable people can arrive quite reasonably at different positions on the same set of facts and law.

It was not at all unusual in law school to read two cases on all fours with each other, and yet the outcomes were diametrically opposed.

Such is the nature of law. 2+2 does not always equal 4. Hence, the reason underlying why it is so difficult for one to get a lawyer to say anything other than “maybe”.

Only a very few times in my career have I ever predicted an outcome with virtually absolute certainty. i4i is one example, as is Stanford v. Roche, the former because it has been a mainstay of federal common law for since at least as early as the 1920s, and the latter because Stanford was arguing for a construction of Bayh-Dole that would have laid waste to Article 1, Section 8, Clause 8 and Title 35.

Grokster was a case with a fairly predictable outcome, but even it was less of a sure thing than i4i and Stanford.

darryl says:

if 18 hours is enough - then why take any more time ?

In what world does it make sense to grant innovation-limiting monopolies for nearly two decades based on 18 hours of review?


If it only takes 18 hours to asses a patent, then it takes 18 hours, it is not going to ‘change’ if you spend 36 hours looking at it.. or 3600 hours looking at it.

It it takes 18 hours it takes 18 hours, deal with it..

May be your mind works considerably slower than the patent office.

May be they know what they are doing, but whinning about time how long it takes sounds like a total losing argument.

Next you’ll be saying it depends on how long it takes the inventor to come up with the idea !

Or how many ‘words’ and pictures are in the patent application !!..

What a joke…..

You know you have massive problems when you have to resort to “fighting the system”, as opposed to individual issues.

In other words when you run out of any form or “real” or ‘specific” arguments to confirm your mantra.

You try to pick holes where none exist, it makes you appear frivilious and petty, and childish…

Next you will be complaining that the patent office allowed a patent that contained a spelling error, or approved a patent that once you heard about it seemed obvious to you..

(after you seen it of course)… which is always the way with you anti-‘people have their own right’ types.

Here’s an idea, why not actually INVENT SOMETHING YOURSELF.

get some first hand experience about what you are talking about, instead of sitting on the sidelines and making pointless and stupid comments about other peoples achievments.

It is clear, all you guys want is to be able to take advantage of everyone elses idea’s regardless of your incapacity of coming up with the idea yourself.

But you allready know all this,, but you are now ‘fixed’ in your ways, you have given up on any possibility of being creative, or in ever inventing something independently by yourself.

That much is clear by your ‘writing style’ Masnik..

What does you ‘writing style’ mean ??

You scour the web,, find articles that might relate closely to your internal bias, you then “lift” that work, and you tack on a few of you’re own rants to “confirm” you argument.

Then you print away,,

It’s always..

“This guy points us to this”


“here is a study from someone else, that I will use to my own advantage”.

Here is a new article (allthough untrue) that supports my bias therefore I will print it..

You’re entire lifes work so far Mike appears to be specilising in taking what others have done and filtering through your bias system, tack on a few comments for effect, put your name on the top.

Then you can be ‘fat, happy and stupid’ not at all caring about “TRUTH” or “accuracy” or reality..

Just as long as you can steal work from others, and make some profit from that work for yourself. sad really..

When I do contract work for someone I change then between $150 and $200 per hour for my time.

About the going rate for a qualified engineer, so for 18 hours labour for a qualified person to investigate a patent for 18 hours would cost somewhere between $4000 and $5000 dollars in labour along.

And if an experienced engineer could not ‘understand’ a patent application and determine with database searches whether it was original or not, could NOT DO THAT WITHIN 18 hours then he needs to find a new job.

It appears to take you less than 18 seconds to determine that a ‘software patent’ has ‘prior knowledge’ and therefore is invalid, when it is clear you cannot show any example of prior knowledge, (you dont even bother to look).

You are not an engineer, nor are you a patent lawyer, yet you think that you can take SECONDS in a decision that is ‘better’ than taking 18 hours from professionals who actually know what they are talking about..

You do not appear to be even slightly qualified to comment on this issue (or most others), but yet you do constantly show you’re ignorance on all subjects..

But on subjects that disagree with your very warped “world view”.

Perhaps if you EVER created anything original all by yourself you would have a different persepective on things.

But so far, I cannot see that ever happening, you appear to be more than happy sitting in a rut, and watching the world go by.

Good luck with that, But it would be nice to see, you apply your brain to doing something GOOD for once..

But I cannot see that happening anytime soon… it appears you are happy to wallow in your own crapulance, and receive your weekly Google cheque, and to continue to use the works of others to feather your own nest..

Anonymous Coward says:

Always disfavor the least desirable thing.

I completely agree. As a 3L,I understand your sentiment. It’s just sometimes when I read this site I feel like an evolutionary biologist reading a creationist’s take on an evolutionary study. The author mangles what is actually written(even when it has been put into laymens terms by many other sources(see SCOTUS Blog for most SC cases)), the posters don’t take kindly to dissent in the ranks(i.e. when someone asks a question to affirm internal validity to the authors criticism, or point out glaring mistakes), and essentially treat the anti-IP stance more like a religion than an actual tested hypothesis. All I’m asking is why, give me convincing studies and I’ll step to your side of the fence, don’t just spew the same rhetoric that is either a) not proven or b) used to knock down strawmen.

Anonymous Coward says:

Always disfavor the least desirable thing.

I can’t. Nobody can, which is why proclaiming that all patents are inherently bad is a completely ridiculous statement for any sane individual to make. Despite living in a digital age, real life doesn’t have binary systems, and to proclaim it does just to make your argument easier is a fallacy.

Anonymous Coward says:


You point out the failings of this lawsuit. It fails to address the real issue, which is patents that are poor or are extended without merit. As long as nobody is looking at that part of the discussion, these lawsuits will pretty much always fail because the law is on the side of the patent holder once the patent is granted.

Josh in CharlotteNC (profile) says:


I don’t think I’ve provided a definition of a “good” patent, so I’m not sure why you think your definition is different than mine.

A good patent is one in which the invention is truly new, non-obvious and novel.

By definition, it is impossible for any evidence to exist that could be used to support invalidating that patent, because that evidence would not exist. If evidence exists, then there was no need for the patent and it should be rightfully invalidated.

If you think there are no benefits whatsoever to the patent system, then this is not an issue.

I recognize that there can, in theory, be good patents. I am for the complete elimination of the patent system because those cases are rare enough that the inventor should easily be able to profit from their invention because it is new and novel enough for them to have a significant time advantage in marketing it. The current patent system, as seems completely obvious to me, is nothing but a benefit to lawyers who are doing nothing but writing vague and generalized nonsense down on paper and suing productive members of our society for millions of dollars, or other lawyers who are charging hundreds or thousands per hour defending against the first set.

Anonymous Coward says:

The true mother of invention...

Ok, that’s a reasonable viewpoint (i.e., that the potential negative effect of losing some good patents is outweighed by the potential benefit of making it easier to get rid of bad patents).

At any rate, though, it’s not just bad patents that would be affected by a lower evidentiary standard.

Anonymous Coward says:


“I don’t see how that’s possible. If it’s a good patent, then the preponderance of the evidence will never show it as being invalid.”

Juries are unpredictable and imperfect. You ask 5 different juries the same question on the same evidence, and it’s not unreasonable to expect to get different answers from *at least* one of the five.

Juries do things like award millions of dollars in damages for file-sharing under 30 songs.

patent litigation (profile) says:


I’m quite pleased that the Justices defied pundits’ predictions and issued this ruling — I always thought i4i had the stronger arguments, not to mention many years of tradition and precedent on its side. Moreover, I think there’s a decent argument that a strong presumption of validity is indicated in the Constitution; and, on a policy note, in countries with weaker patent rights, there lurks always the danger that well-funded entities can use that lesser standard to bankrupt patentees, or even to deprive them of their IP altogether. Thank you, SCOTUS; well done.

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