With a few mistakes during the trial, Microsoft soon found itself having to appeal this seemingly unreasonable damage award to the US Supreme Court. In its argument, Microsoft insisted that a preponderance standard must at least apply where the evidence was never before the USPTO during the examination process. However, the Supreme Court rejected this argument and suggested that the issue of some evidence not accessed by the USPTO during examination can be resolved at least by a proper jury instruction. That is, the jury can give a different weight to the evidence based on whether such evidence was considered by the USPTO, without the need to change the evidential standard.

Before this decision was issued, some patent professionals were worried that the Court might further lower the standard for proving invalidity, which would potentially reduce the value a US patent. Obviously this did not happen. Today’s decision may be particularly important for foreign patent owners, because the foreign patent owners generally submit less amount of information during the examination process. Thus, this decision should be viewed as an encouragement to the foreign patent owners, like i4i. Together with the Federal Circuit’s latest decision in Therasense, Inc. v. Becton on May 25, patent owners may be able or even need to reconsider their US patent prosecution procedures and document retention policies in order to be more efficient.

(The opinions expressed are those of the authors and do not necessarily reflect the views of the firm, its clients or China IP)