OPINION OF THE COURT
MICROSOFT CORP. V. I4I LTD. PARTNERSHIP
564 U. S. ____ (2011)
SUPREME COURT OF THE UNITED STATES
NO. 10-290
MICROSOFT CORPORATION, PETITIONER
v. i4i
LIMITED PARTNERSHIP et al.
on writ of certiorari to the united states court of
appeals for the federal circuit
[June 9, 2011]
Justice Sotomayor delivered the
opinion of the Court.
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.
I
A
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. To receive patent
protection a claimed invention must, among other things, fall
within one of the express categories of patentable subject matter,
§101, and be novel, §102, and nonobvious, §103. Most relevant here,
the on-sale bar of §102(b) precludes patent protection for any
“invention” that was “on sale in this country” more than one year
prior to the filing of a patent application. See generally
Pfaff v.
Wells Electronics, Inc.,
525 U. S. 55, 67–68
(1998). In evaluating whether these and other statutory conditions
have been met, PTO examiners must make various factual
determinations—for instance, the state of the prior art in the
field and the nature of the advancement embodied in the invention.
See
Dickinson v.
Zurko,
527 U. S. 150, 153 (1999).
Once issued, a patent grants
certain exclusive rights to its holder, including the exclusive
right to use the invention during the patent’s duration. To enforce
that right, a patentee can bring a civil action for infringement if
another person “without authority makes, uses, offers to sell, or
sells any patented invention, within the United States.” §271(a);
see also §281.
Among other defenses under §282 of the Patent
Act of 1952 (1952 Act), an alleged infringer may assert the
invalidity of the patent—that is, he may attempt to prove that the
patent never should have issued in the first place. See §§282(2),
(3). A defendant may argue, for instance, that the claimed
invention was obvious at the time and thus that one of the
conditions of patentability was lacking. See §282(2); see also
§103. “While the ultimate question of patent validity is one of
law,”
Graham v.
John Deere Co. of Kansas City,
383 U. S. 1, 17
(1966) (citing
Great Atlantic & Pacific Tea Co. v.
Supermarket Equipment Corp.,
340 U. S. 147, 155
(1950) (Douglas, J., concurring)); see
post, at 1 (Breyer,
J., concurring), the same factual questions underlying the PTO’s
original examination of a patent ap-plication will also bear on an
invalidity defense in an in-fringement action. See,
e.g.,
383 U. S., at 17 (describing the “basic factual inquiries” that
form the “background” for evaluating obviousness);
Pfaff,
525 U. S., at 67–69 (same, as to the on-sale bar).
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.”[
Footnote 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. Relying on this Court’s pre-1952 precedent as to the
“force of the presumption,”
ibid. (citing
Radio Corp.
of America v.
Radio Engineering Laboratories, Inc.,
293 U. S.
1 (1934)
(RCA)), Judge Rich concluded:
“[Section] 282 creates a presumption that a patent
is valid and imposes the burden of proving invalidity on the
attacker. That burden is constant and never changes and is to
convince the court of invalidity by clear evidence.” 725
F. 2d, at 1360.
In the nearly 30 years since
American
Hoist, the Federal Circuit has never wavered in this
interpretation of §282. See,
e.g., Greenwood v.
Hattori Seiko Co., 900 F. 2d 238, 240–241 (CA Fed.
1990);
Ultra-Tex Surfaces, Inc. v.
Hill Bros. Chemical
Co., 204 F. 3d 1360, 1367 (CA Fed. 2000);
ALZA
Corp. v.
Andrx Pharmaceuticals, LLC, 603 F. 3d
935, 940 (CA Fed. 2010).
B
Respondents i4i Limited
Partnership and Infrastructures for Information Inc. (collectively,
i4i) hold the patent at issue in this suit. The i4i patent claims
an improved method for editing computer documents, which stores a
document’s content separately from the metacodes asso-ciated with
the document’s structure. In 2007, i4i sued petitioner Microsoft
Corporation for willful infringement, claiming that Microsoft’s
manufacture and sale of certain Microsoft Word products infringed
i4i’s patent. In addition to denying infringement, Microsoft
counterclaimed and sought a declaration that i4i’s patent was
invalid and unenforceable.
Specifically and as relevant
here, Microsoft claimed that the on-sale bar of §102(b) rendered
the patent invalid, pointing to i4i’s prior sale of a software
program known as S4. The parties agreed that, more than one year
prior to the filing of the i4i patent application, i4i had sold S4
in the United States. They presented opposing arguments to the
jury, however, as to whether that software embodied the invention
claimed in i4i’s patent. Because the software’s source code had
been destroyed years before the commencement of this litigation,
the factual dispute turned largely on trial testimony by S4’s two
inventors—also the named inventors on the i4i patent—both of whom
testified that S4 did not practice the key invention disclosed in
the patent.
Relying on the undisputed fact that the S4
software was never presented to the PTO examiner, Microsoft
objected to i4i’s proposed instruction that it was required to
prove its invalidity defense by clear and convincing evidence.
Instead, “if an instruction on the ‘clear and convincing’ burden
were [to be] given,” App. 124a, n. 8, Microsoft re-quested the
following:
“ ‘Microsoft’s burden of proving invalidity
and unenforceability is by clear and convincing evidence. However,
Microsoft’s burden of proof with regard to its defense of
invalidity based on prior art that the ex-aminer did not review
during the prosecution of the patent-in-suit is by preponderance of
the evidence.’ ”
Ibid.
Rejecting the hybrid standard of proof that
Microsoft advocated, the District Court instructed the jury that
“Microsoft has the burden of proving invalidity by clear and
convincing evidence.” App. to Pet. for Cert. 195a.
The jury found that Microsoft willfully
infringed the i4i patent and that Microsoft failed to prove
invalidity due to the on-sale bar or otherwise. Denying Microsoft’s
post-trial motions, the District Court rejected Microsoft’s
contention that the court improperly instructed the jury on the
standard of proof. The Court of Appeals for the Federal Circuit
affirmed.[Footnote 2] 598
F. 3d 831, 848 (2010). Relying on its settled interpretation
of §282, the court explained that it could “discern [no] error” in
the jury instruction requiring Microsoft to prove its invalidity
defense by clear and convincing evidence. Ibid. We granted
certiorari. 562 U. S. ___ (2010).
II
According to Microsoft, a
defendant in an infringement action need only persuade the jury of
an invalidity defense by a preponderance of the evidence. In the
alternative, Microsoft insists that a preponderance standard must
apply at least when an invalidity defense rests on evidence that
was never considered by the PTO in the examination process. We
reject both contentions.[
Footnote
3]
A
Where Congress has prescribed the
governing standard of proof, its choice controls absent
“countervailing constitutional 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 patent validity,
and it provides that a challenger must overcome 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.[
Footnote
4]
Our statutory inquiry, however, cannot simply
end there. We begin, of course, with “the assumption that the
ordinary meaning of the language” chosen by Congress “accurately
expresses the legislative purpose.”
Engine Mfrs. Assn. v.
South Coast Air Quality Management Dist.,
541 U. S. 246, 252
(2004) (internal quotation marks omitted). But where Congress uses
a common-law term in a statute, we assume the “term … comes with a
common law meaning, absent anything pointing another way.”
Safeco Ins. Co. of America v.
Burr,
551 U. S. 47, 58 (2007)
(citing
Beck v.
Prupis,
529 U. S. 494, 500–501
(2000)). Here, by stating that a patent is “presumed valid,” §282,
Congress used a term with a settled meaning in the common law.
Our decision in
RCA, 293 U. S.
1, is authoritative. There, tracing nearly a century of case
law from this Court and others, Justice Cardozo wrote for a
unanimous Court that “there is a presumption of validity, a
presumption not to be overthrown except by clear and cogent
evidence.”
Id., at 2. Although the “force” of the
presumption found “varying expression” in this Court and elsewhere,
id., at 7, Justice Cardozo explained, one “common core of
thought and truth” unified the decisions:
“[O]ne 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. 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.”
Id., at 8 (internal citation omitted).[
Footnote 5]
The common-law presumption, in other words,
reflected the universal understanding that a preponderance standard
of proof was too “dubious” a basis to deem a patent invalid.
Ibid.; see also
id., at 7 (“[A] patent … is
presumed to be valid until the presumption has been overcome by
convincing evidence of error”).
Thus, by the time Congress enacted §282 and
declared that a patent is “presumed valid,” the presumption of
patent validity had long been a fixture of the common law.
According to its settled meaning, a defendant raising an invalidity
defense bore “a heavy burden of persuasion,” requiring proof of the
defense by clear and convincing evidence.
Id., at 8. That
is, the presumption encompassed not only an allocation of the
burden of proof but also an imposition of a heightened standard of
proof. Under the general rule that a common-law term comes with its
common-law meaning, we cannot conclude that Congress intended to
“drop” the heightened standard proof from the presumption simply
because §282 fails to reiterate it expressly.
Neder v.
United States,
527 U. S. 1, 23 (1999);
see also
id., at 21 (“ ‘Where Congress uses terms
that have accumulated settled meaning under . . . the common law,
[we] must infer, unless the statute otherwise dictates, that
Congress means to incorporate the established meaning of those
terms.’ ” (quoting
Nationwide Mut. Ins. Co. v.
Darden,
503
U. S. 318, 322 (1992)));
Standard Oil Co. of N. J. v.
United Sates,
221 U. S. 1, 59 (1911)
(“[W]here words are employed in a statute which had at the time a
well-known meaning at common law or in the law of this country they
are presumed to have been used in that sense …”). “On the contrary,
we must
presume that Congress intended to incorporate” the
heightened standard of proof, “unless the statute otherwise
dictates.”
Neder, 527 U. S., at 23 (internal quotation
marks omitted)
.
We recognize that it may be unusual to treat a
presumption as alone establishing the governing standard of proof.
See,
e.g., J. Thayer, Preliminary Treatise on Evidence at
the Common Law 336–337 (1898) (hereinafter Thayer) (“When … we read
that the contrary of any particular presumption must be proved
beyond a reasonable doubt, … it is to be recognized that we have
something superadded to the rule of presumption, namely, another
rule as to the amount of evidence which is needed to overcome the
presumption”). But given how judges, including Justice Cardozo,
repeatedly understood and explained the presumption 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 production and the burden of persuasion.” Brief for
Petitioner 21–22 (emphasis deleted). Whatever the significance of a
presumption in the abstract, basic principles of statutory
construction require us to assume that Congress meant to
incorporate “the cluster of ideas” attached to the common-law term
it adopted.
Beck, 529 U. S., at 501 (internal quotation
marks omitted). And
RCA leaves no doubt that attached to
the common-law presumption of patent validity was an expression as
to its “force,” 293 U. S., at 7—that is, the standard of proof
required to overcome it.[
Footnote
6]
Resisting the conclusion that Congress adopted
the heightened standard of proof reflected in our pre-1952 cases,
Microsoft contends that those cases applied a clear-and-convincing
standard of proof only in two limited circumstances, not in every
case involving an invalidity defense. First, according to
Microsoft, the heightened standard of proof applied in cases
“involving oral testimony of prior invention,” simply to account
for the unreliability of such testimony. Brief for Petitioner 25.
Second, Microsoft tells us, the heightened standard of proof
applied to “invalidity challenges based on priority of invention,”
where that issue had previously been litigated between the parties
in PTO proceedings.
Id., at 28.
Squint as we may, we fail to see the
qualifications that Microsoft purports to identify in our cases.
They certainly make no appearance in
RCA’s explanation of
the presumption of patent validity.
RCA simply said,
without qualification, “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.” 293 U. S., at 8; see also
id., at 7 (“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” (emphasis added)). Nor do they appear in any of
our cases as express limitations on the application of the
heightened standard of proof. Cf.,
e.g., Smith v.
Hall,
301
U. S. 216, 233 (1937) (citing
RCA for the proposition
that a “heavy burden of persuasion … rests upon one who seeks to
negative novelty in a patent by showing prior use”);
Mumm
v.
Jacob E. Decker & Sons,
301 U. S. 168, 171
(1937) (“Not only is the burden to make good this defense upon the
party setting it up, but his burden is a heavy one, as it has been
held that every reasonable doubt should be resolved against him”
(internal quotation marks omitted)). In fact, Microsoft itself
admits that our cases “could be read as announcing a heightened
standard applicable to all invalidity assertions.” Brief for
Petitioner 30 (emphasis deleted).
Furthermore, we cannot agree that Microsoft’s
proposed limitations are inherent—even if unexpressed—in our
pre-1952 cases. As early as 1874 we explained that the burden of
proving prior inventorship “rests upon [the de-fendant], and every
reasonable doubt should be resolved against him,” without tying
that rule to the vagaries and manipulability of oral testimony.
Coffin v.
Ogden, 18 Wall. 120, 124 (1874). And,
more than 60 years later, we applied that rule where the evidence
in support of a prior-use defense included documentary proof—not
just oral testimony—in a case presenting no priority issues at all.
See
Smith, 301 U. S., at 221, 233. Thus, even if Congress
searched for some unstated limitations on the heightened standard
of proof in our cases, it would have found none.[
Footnote 7]
Microsoft also argues that the Federal
Circuit’s interpretation of §282’s statement that “[a] patent shall
be pre-sumed valid” must fail because it renders superfluous the
statute’s additional statement that “[t]he burden of establishing
invalidity of a patent … shall rest on the party asserting such
invalidity.” We agree that if the presumption imposes a heightened
standard of proof on the patent challenger, then it alone suffices
to establish that the defendant bears the burden of persuasion. Cf.
Director, Office of Workers’ Compensation Programs v.
Greenwich Collieries,
512 U. S. 267, 278
(1994) (“A standard of proof … can apply only to a burden of
persuasion”). Indeed, the Federal Circuit essentially recognized as
much in
American Hoist. See 725 F. 3d, at 1359.
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 Microsoft—avoids
excess language. That is, if the presumption only “allocates the
burden of production,” Brief for Petitioner 21, or if it instead
“shift[s] both the burden of production and the burden of
persuasion,”
id., at 22 (emphasis deleted), then
it would be unnecessary in light of §282’s statement that
the challenger bears the “burden of establishing invalidity.” See
21B Fed. Practice §5122, at 401 (“[T]he same party who has the
burden of persuasion also starts out with the burden of producing
evidence”). “There are times when Congress enacts provisions that
are superfluous,”
Corley v.
United States, 556 U.
S. ___, ___ (2009) (Alito, J., dissenting) (slip op., at 3), and
the kind of excess language that Microsoft identifies in §282 is
hardly unusual in comparison to other statutes that set forth a
presumption, a burden of persuasion, and a standard of proof. Cf.,
e.g., 28 U. S. C. §2254(e)(1).[
Footnote 8]
B
Reprising the more limited
argument that it pressed below, Microsoft argues in the alternative
that a preponderance standard must at least apply where the
evidence before the factfinder was not before the PTO during the
examination process. In particular, it relies on
KSR Int’l
Co. v.
Teleflex Inc.,
550 U. S. 398 (2007),
where we ob-served that, in these circumstances, “the rationale
underlying the presumption—that the PTO, in its expertise, has
approved the claim—seems much diminished.”
Id., at
426.
That statement is true enough,
although other rationales may animate the presumption in such
circumstances. See
The Barbed Wire Patent,
143 U. S. 275, 292 (1892) (explaining
that because the patentee “first published this device; put it upon
record; made use of it for a practical purpose; and gave it to the
public … . doubts … concerning the actual inventor … should be
resolved in favor of the patentee”); cf. Brief for United States as
Amicus Curiae 33 (arguing that even when the
administrative cor-rectness rationale has no relevance, the
heightened standard of proof “serves to protect the patent holder’s
reliance interests” in disclosing an invention to the public in
exchange for patent protection). The question remains, however,
whether Congress has specified the applicable standard of proof. As
established, Congress did just that by codifying the common-law
presumption of patent validity and, implicitly, the heightened
standard of proof attached to it.
Our pre-1952 cases never adopted or endorsed
the kind of fluctuating standard of proof that Microsoft envisions.
And they do not indicate, even in dicta, that anything less than a
clear-and-convincing standard would ever apply to an invalidity
defense raised in an infringement action. To the contrary, the
Court spoke on this issue directly in
RCA, stating that
because the heightened standard of proof applied where the evidence
before the court was “different” from that considered by the PTO,
it applied even more clearly where the evidence was identical. 293
U. S., at 8. Likewise, the Court’s statement that a “dubious
preponderance” will never suffice to sustain an invalidity defense,
ibid., admitted of no apparent exceptions. Finally, this
Court often applied the heightened standard of proof without any
mention of whether the relevant prior-art evidence had been before
the PTO examiner, in circumstances strongly suggesting it had not.
See,
e.g.,
Smith, 301 U. S., at 227,
233.[
Footnote 9]
Nothing in §282’s text suggests that Congress
meant to depart from that understanding to enact a standard of
proof that would rise and fall with the facts of each case. Indeed,
had Congress intended to drop the heightened standard of proof
where the evidence before the jury varied from that before the
PTO—and thus to take the unusual and impractical step of enacting a
variable standard of proof that must itself be adjudicated in each
case, cf.
Santosky v.
Kramer,
455 U. S. 745, 757
(1982)[
Footnote 10]—we
assume it would have said so expressly.
To be sure, numerous courts of appeals in the
years preceding the 1952 Act observed that the presumption of
validity is “weakened” or “dissipated” in the circumstance that the
evidence in an infringement action was never considered by the PTO.
See
Jacuzzi Bros.,
Inc. v.
Berkeley Pump
Co., 191 F. 2d 632, 634 (CA9 1951) (“largely
dissipated”);
H. Schindler & Co. v.
C.
Saladino & Sons, 81 F. 2d 649, 651 (CA1
1936) (“weakened”);
Gillette Safety Razor Co. v.
Cliff
Weil Cigar Co., 107 F. 2d 105, 107 (CA4 1939) (“greatly
weakened”);
Butler Mfg. Co. v.
Enterprise Cleaning
Co., 81 F. 2d 711, 716 (CA8 1936) (“weakened”). But we
cannot read these cases to hold or even to suggest that a
preponderance standard would apply in such circumstances, and we
decline to impute such a reading to Congress. Instead, we
understand these cases to reflect the same commonsense principle
that the Federal Circuit has recognized throughout its
existence—namely, that new evidence supporting an invalidity
defense may “carry more weight” in an infringement action than
evidence previously considered by the PTO,
American Hoist,
725 F. 2d, at 1360. As Judge Rich explained:
“When new evidence touching validity of the patent
not considered by the PTO is relied on, the tribunal considering it
is not faced with having to disagree with the PTO or with deferring
to its judgment or with taking its expertise into account. The
evidence may, therefore, carry more weight and go further toward
sustaining the attacker’s unchanging burden.”
Ibid.
(emphasis deleted)
See also
SIBIA Neurosciences, Inc. v.
Cadus Pharmaceutical Corp., 225 F. 3d 1349, 1355–1356
(CA Fed. 2000) (“[T]he alleged infringer’s burden may be more
easily car-ried because of th[e] additional [evidence]”);
Group
One, Ltd. v.
Hallmark Cards, Inc., 407 F. 3d
1297, 1306 (CA Fed. 2005) (similar).
Simply put, if the PTO did not have all
material facts before it, its considered judgment may lose
significant force. Cf.
KSR, 550 U. S., at 427. And,
concomitantly, the challenger’s burden to persuade the jury of its
invalidity defense by clear and convincing evidence may be easier
to sustain. In this respect, although we have no occasion to
endorse any particular formulation, we note that a jury instruction
on the effect of new evidence can, and when requested, most often
should be given. When warranted, the jury may be instructed to
consider that it has heard evidence that the PTO had no opportunity
to evaluate before granting the patent. When it is disputed whether
the evidence presented to the jury differs from that evaluated by
the PTO, the jury may be instructed to consider that question. In
either case, the jury may be instructed to evaluate whether the
evidence before it is materially new, and if so, to consider that
fact when determining whether an invalidity defense has been proved
by clear and convincing evidence. Cf.,
e.g.,
Mendenhall v.
Cedarapids, Inc., 5 F. 3d
1557, 1563–1564 (CA Fed. 1993); see also Brief for International
Business Machines Corp. as
Amicus Curiae 31–37. Although
Microsoft emphasized in its argument to the jury that S4 was never
considered by the PTO, it failed to request an instruction along
these lines from the District Court. Now, in its reply brief in
this Court, Microsoft insists that an instruction of this kind was
warranted. Reply Brief for Petitioner 22–23. That argument,
however, comes far too late, and we therefore refuse to consider
it. See
Rent-A-Center, West, Inc. v.
Jackson, 561
U. S. ___ , ___ (2010) (slip op., at 12); cf. Fed. Rule Civ. Proc.
51(d)(1)(B).
III
The parties and their
amici have presented opposing views as to the wisdom of
the clear-and-convincing-evidence standard that Congress adopted.
Microsoft and its
amici contend that the heightened
standard of proof dampens innovation by unduly insulating “bad”
patents from invalidity challenges. They point to the high
invalidation rate as evidence that the PTO grants patent protection
to too many undeserving “inventions.” They claim that
inter
partes reexamination proceedings before the PTO cannot fix the
problem, as some grounds for invalidation (like the on-sale bar at
issue here) cannot be raised in such proceedings. They question the
deference that the PTO’s expert determinations warrant, in light of
the agency’s resources and procedures, which they deem inadequate.
And, they insist that the heightened standard of proof essentially
causes juries to abdicate their role in reviewing invalidity claims
raised in infringement actions.
For their part, i4i and its
amici, including the United States, contend that the
heightened standard of proof properly limits the circumstances in
which a lay jury overturns the considered judgment of an expert
agency. They claim that the heightened standard of proof is an
essential component of the patent “bargain,” see
Bonito Boats,
Inc. v.
Thunder Craft Boats, Inc.,
489 U. S. 141, 150–151
(1989), and the incentives for inventors to disclose their
innovations to the public in exchange for patent protection. They
disagree with the notion that the patent issuance rate is above the
optimal level. They explain that limits on the reexamination
process reflect a judgment by Congress as to the appropriate degree
of interference with patentees’ reliance interests. Finally, they
maintain that juries that are properly instructed as to the
application of the clear-and-convincing-evidence standard can, and
often do, find an invalidity defense established.
We find ourselves in no position to judge the
comparative force of these policy arguments. For nearly 30 years,
the Federal Circuit has interpreted §282 as we do today. During
this period, Congress has often amended §282, see,
e.g.,
Pub. L. 104–141, §2, 109 Stat. 352; Pub. L. 98–417, §203, 98 Stat.
1603; not once, so far as we (and Microsoft) are aware, has it even
considered a proposal to lower the standard of proof, see Tr. Oral
Arg. 10. Moreover, Congress has amended the patent laws to account
for concerns about “bad” patents, including by expanding the
reexamination process to provide for
inter partes
proceedings. See Optional Inter Partes Reexamination Procedure Act
of 1999, 113 Stat. 1501A–567, codified at 35 U. S. C. §311
et seq. Through it all, the evidentiary standard adopted
in §282 has gone untouched. Indeed, Congress has left the Federal
Circuit’s interpretation of §282 in place despite ongoing
criticism, both from within the Federal Government and
without.[
Footnote 11]
Congress specified the applicable standard of
proof in 1952 when it codified the common-law presumption of patent
validity. Since then, it has allowed the Federal Circuit’s correct
interpretation of §282 to stand. Any re-calibration of the standard
of proof remains in its hands.
* * *
For the reasons stated, the
judgment of the Court of Appeals for the Federal Circuit is
Affirmed.
The Chief Justice took no part in
the consideration or decision of this case.
Footnote 1
As originally enacted in 1952, the first
paragraph of §282 read: “A patent shall be presumed valid. The
burden of establishing invalidity of a patent shall rest on a party
asserting it.” 66 Stat. 812. Congress has since amended §282,
inserting two sentences not relevant here and modifying the
language of the second sentence to that in the text.
Footnote 2
Although not relevant here, the Court of
Appeals modified the effective date of the permanent injunction
that the District Court entered in favor of i4i. 598 F. 3d
831, 863–864 (CA Fed. 2010).
Footnote 3
i4i contends that Microsoft forfeited the
first argument by failing to raise it until its merits brief in
this Court. The argument, however, is within the scope of the
question presented, and because we reject it on its merits, we need
not decide whether it has been preserved.
Footnote 4
A preliminary word on terminology is in
order. As we have said, “[t]he term ‘burden of proof’ is one of the
‘the slipperiest members of the family of legal terms.’ ”
Schaffer v.
Weast,
546 U. S. 49, 56 (2005)
(quoting 2 J. Strong, McCormick on Evidence §342, p. 433 (5th ed.
1999) (alteration omitted)). Historically, the term has encompassed
two separate burdens: the “burden of persuasion” (specifying which
party loses if the evidence is balanced), as well as the “burden of
production” (specifying which party must come forward with evidence
at various stages in the litigation).
Ibid. Adding more
confusion, the term “burden of proof” has occasionally been used as
a synonym for “standard of proof.”
E.g.,
Grogan
v.
Garner,
498 U. S. 279, 286
(1991).
Here we use “burden of proof” interchangeably with “burden of
persuasion” to identify the party who must persuade the jury in its
favor to prevail. We use the term “standard of proof” to refer to
the degree of certainty by which the factfinder must be persuaded
of a factual conclusion to find in favor of the party bearing the
burden of persuasion. See
Addington v.
Texas,
441 U. S. 418,
423 (1979). In other words, the term “standard of proof” specifies
how difficult it will be for the party bearing the burden of
persuasion to convince the jury of the facts in its favor. Various
standards of proof are familiar—beyond a reasonable doubt, by clear
and convincing evidence, and by a preponderance of the evidence.
See generally 21B C. Wright & K. Graham, Federal Practice &
Procedure §5122, pp. 405–411 (2d ed. 2005) (hereinafter Fed.
Practice) (describing these and other standards of proof).
Footnote 5
Among other cases, Justice Cardozo cited
Cantrell v.
Wallick,
117 U. S. 689, 695–696
(1886) (“Not only is the burden of proof to make good this defence
upon the party setting it up, but … every reasonable doubt should
be resolved against him” (internal quotation marks omitted));
Coffin v.
Ogden, 18 Wall. 120, 124 (1874) (“The
burden of proof rests upon [the defendant], and every reasonable
doubt should be resolved against him”);
The Barbed Wire
Patent,
143 U. S. 275, 285 (1892) (“[This]
principle has been repeatedly acted upon in the different
circuits”); and
Washburn v.
Gould, 29
F. Cas. 312, 320 (No. 17,214) (CC Mass. 1844) (charging jury
that “[i]f it should so happen, that your minds are led to a
reasonable doubt on the question, inasmuch as it is incumbent on
the defendant to satisfy you beyond that doubt, you will find for
the plaintiff”).
Footnote 6
Microsoft objects that this reading of §282
“conflicts with the usual understanding of presumptions.” Reply
Brief for Petitioner 4. In sup-port, it relies on the
“understanding” reflected in Federal Rule of Evidence 301, which
explains the ordinary effect of a presumption in federal civil
actions. That Rule, however, postdates the 1952 Act by nearly 30
years, and it is not dispositive of how Congress in 1952 understood
presumptions generally, much less the presumption of pat-ent
validity. In any event, the word “presumption” has often been used
when another term might be more accurate. See Thayer 335 (“Often …
maxims and ground principles get expressed in this form of a
presumption perversely and inaccurately”). And, to the extent
Congress used the words “presumed valid” in an imprecise way, we
cannot fault it for following our lead.
Footnote 7
In a similar vein, Microsoft insists that
there simply was no settled presumption of validity for Congress to
codify in 1952. Microsoft points to a handful of district court
decisions, which “question[ed] whether any presumption of validity
was warranted,” or which “required the patentee to prove the
validity of his patent by a preponderance of the evidence.” Brief
for Petitioner 24 (emphasis deleted; brackets and internal
quotation marks omitted); see,
e.g., Ginsberg v.
Railway Express Agency, Inc., 72 F. Supp. 43, 44
(SDNY 1947) (stating, in dicta, that “[i]t may now well be said
that no presumption whatever arises from the grant of patent”); see
also
post, at 1 (Thomas, J., concurring in judgment).
RCA makes clear, however, that the presumption of patent
validity had an established meaning traceable to the mid-19th
century,
293 U. S.
1, 7–8 (1934); that some lower courts doubted its wisdom or
even pretended it did not exist is of no moment. Microsoft may be
correct that Congress enacted §282 to correct lower courts that
required the patentee to prove the validity of a patent. See
American Hoist & Derrick Co. v.
Sowa & Sons,
Inc., 725 F. 2d 1350, 1359 (CA Fed. 1984). But the
language Congress selected reveals its intent not only to specify
that the defendant bears the burden of proving invalidity but also
that the evidence in support of the defense must be clear and
convincing.
Footnote 8
For those of us for whom it is relevant, the
legislative history of §282 provides additional evidence that
Congress meant to codify the judge-made presumption of validity,
not to set forth a new presumption of its own making. The
accompanying House and Senate Reports both explain that §282
“introduces a declaration of the presumption of va-lidity of a
patent, which is now a statement made by courts in deci-sions, but
has had no expression in the statute.” H. R. Rep. No. 1923,
82d Cong., 2d Sess., 10 (1952) (hereinafter H. R. Rep.);
S. Rep. No. 1979, 82d Cong., 2d Sess., 9 (1952) (hereinafter
S. Rep.). To the same effect, the Reviser’s Note indicates
that §282’s “first paragraph declares the existing presumption of
validity of patents.” Note following 35 U. S. C. §282 (1952
ed.).
Prior to 1952, the existing patent laws already incorporated the
sum and substance of the presumption as Microsoft would define
it—that is, they “assign[ed] the burden of proving invalidity to
the accused infringer,” Brief for Petitioner 14 (emphasis deleted).
See 35 U. S. C. §69 (1946 ed.) (providing that a defendant in
an infringement action “may plead” and “prove on trial” the
invalidity of the patent as a defense); see also Patent Act of
1870, ch. 230, §61, 16 Stat. 208 (same); Patent Act of 1836, ch.
357, §15, 5 Stat. 123 (similar); Patent Act of 1793, ch. II, §6, 1
Stat. 322 (similar);
Coffin, 18 Wall., at 124 (explaining
that the Patent Act of 1836 “allowed a party sued for infringement
to prove, among other defences, that the patentee was not the
original and first inventor of the thing patented, or of a
substantial and material part thereof claimed to be new” (internal
quotation marks omitted)). The House and Senate Reports state,
however, that §282 established a principle that previously “had no
expression in the statute.” H. R. Rep., at 10; S. Rep.,
at 9. Thus, because the only thing missing from §282’s predecessor
was the heightened standard of proof itself, Congress must have
understood the presumption of patent validity to include the
heightened standard of proof attached to it.
Footnote 9
Microsoft cites numerous court of appeals
decisions as support for its claim that a preponderance standard
must apply in the event that the evidence in the infringement
action varies from that considered by the PTO. We see no hint of
the hybrid standard of proof that Microsoft advocates in these
cases. Indeed, in some of these cases it appears that the court
even evaluated the evidence according to a heightened standard of
proof. See
Jacuzzi Bros.,
Inc. v.
Berkeley
Pump Co., 191 F. 2d 632, 634 (CA9 1951) (“Although it is
not expressly stated that th[e] conclusion [of invalidity] is based
upon evidence establishing the thesis beyond a reasonable doubt,
the Trial Court expressed no doubt. And the record shows that such
conclusion was supported by substantial evidence”);
Western
Auto Supply Co. v.
American-National Co., 114
F. 2d 711, 713 (CA6 1940) (concluding that the patent was
invalid where the court “entertain[ed] no doubt” on the
question).
Footnote 10
Not the least of the impracticalities of such
an approach arises from the fact that whether a PTO examiner
considered a particular reference will often be a question without
a clear answer. In granting a patent, an examiner is under no duty
to cite every reference he considers. 1 Dept. of Commerce, PTO,
Manual of Patent Examining Procedure §904.03, p. 900–51 (8th
rev. ed. 2010) (“The examiner is not called upon to cite all
references that may be available, but only the ‘best.’ Multiplying
references, any one of which is as good as, but no better than, the
others, adds to the burden and cost of prosecution and should
therefore be avoided” (emphasis deleted)); Manual of Patent
Examining Procedure §904.02, p. 129 (1st rev. ed. 1952)
(same), http://www.uspto.gov/ web/offices/pac/mpep/old/E1R3_900.pdf
(all Internet materials as visited June 6, 2011, and available in
Clerk of Court’s case file); see also Brief for Respondents 45–46
(describing additional impracticalities). We see no indication in
§282 that Congress meant to require collateral litigation on such
an inherently uncertain question.
Footnote 11
See,
e.g., FTC, To Promote
Innovation: The Proper Balance of Competition and Patent Law and
Policy 28 (Oct. 2003), http://www.ftc.gov/
os/2003/10/innovationrpt.pdf (recommending that “legislation be
enacted specifying that challenges to the validity of a patent be
determined based on a preponderance of the evidence”); Alsup, Memo
to Congress: A District Judge’s Proposal for Patent Reform, 24
Berkeley Tech. L. J. 1647, 1655 (2009) (same); Lichtman &
Lemley, Rethinking Patent Law’s Presumption of Validity, 60 Stan.
L. Rev. 45, 60 (2007) (proposing “statutory amendment or …
judicial reinterpretation of the existing statute and its
associated case law” to lower the standard of proof to a
preponderance of the evidence (footnote omitted)).
Comments
Be the first to comment
Leave a Comment