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A silver lining for patent challengers after Supreme Court’s Microsoft v. i4i ruling

The Supreme Court gave trial counsel for accused patent infringers at least one small bit of good news in yesterday’s Microsoft v. i4i opinion: The Court addressed the common situation in which prior art introduced at trial had not been considered by the patent examiner. The Court urged judges to give specific instructions to the jury on that point:

Simply put, if the PTO did not have all material facts before it, its considered judgment may lose significant force. 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. …

Microsoft Corp. v. i4i Ltd., No. 10-290, slip op. at 17-18, 564 U. S. ____ (2011) (emphasis and extra paragraphing added, citations omitted).

That little goodie should be useful for defense counsel. Here’s why:

• In trial, defense counsel always worry about the halo effect: Jurors tend to put inventors on a pedestal. They often unconsciously assume that if the patent examiner thought the invention was patentable, that’s good enough for them.

• You always hope the judge will caution the jurors about the effect of evidence that wasn’t before the patent examiner. And I would guess most judges probably do just that.

• But you never know whether a given judge on a given day will agree to do so. It should be helpful to be able to point the judge to a specific Supreme Court “suggestion” on that point.

• [ADDED 2011-06-11:] And in closing arguments, defense counsel will no doubt be happy to emphasize to the jury, “the Supreme Court of the United States said ….” That might help offset the halo effect a bit.

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