McDonald Hopkins Alert: Dislike Your Competitor's Patent? It May Become Easier to Invalidate It

Dec 15, 2010, 13:23 ET from McDonald Hopkins LLC

CLEVELAND, Dec. 15, 2010 /PRNewswire/ -- The Supreme Court recently granted a petition to consider whether patent law requires a heightened standard of clear and convincing evidence to invalidate an issued patent in all circumstances. That is the law now. The petitioner, Microsoft Corporation, is asking the Supreme Court to rule that, when the patent office did not previously consider the evidence of invalidity that was presented at trial, the appropriate standard for invalidating issued patent claims is instead a preponderance of evidence.

In the Microsoft v. i4i case, the district court held that Microsoft's 2003 and 2007 versions of Word infringed i4i's patent that relates to custom XML. The court awarded i4i over $290 million in damages and issued a permanent injunction ordering Microsoft to stop selling Word 2003 and 2007 unless it removed the infringing portion of the software. Microsoft has complied with the injunction by using a patch to prevent use of the custom XML feature.

Microsoft appealed the decision to the Federal Circuit, which affirmed the trial court's findings. Microsoft also petitioned the USPTO for an ex parte reexamination, alleging that the '449 Patent was invalid. The USPTO confirmed the validity of the '449 Patent and the claims remained unchanged.

Click below to read the McDonald Hopkins Intellectual Property Alert:

McDonald Hopkins Law Firm Alert; Dislike Your Competitor's Patent? It may become easier to invalidate it

For more information, please contact:

David B. Cupar


David T. Movius


About McDonald Hopkins

With more than 130 attorneys in Chicago, Cleveland, Columbus, Detroit, and West Palm Beach, McDonald Hopkins is a business advisory and advocacy law firm focused on business law, litigation, intellectual property, business restructuring, labor and employment, government affairs, healthcare, and estate planning. The president of McDonald Hopkins is Carl J. Grassi. For more information about McDonald Hopkins, visit

SOURCE McDonald Hopkins LLC