Patent Law: Microsoft v. i4i Limited Partnership INTELLECTUAL PROPERTY

WilmerHale represents i4i Limited Partnership, which holds a patent on an improved method for editing certain computer documents. i4i successfully sued Microsoft for infringing this patent with certain versions of Word. The jury found wilful infringement, rejected Microsoft’s claim that i4i’s patent is invalid, and awarded i4i $240 million in damages (plus interest) and a preliminary injunction. The judgment was affirmed by the Federal Circuit, and the Supreme Court granted certiorari. The question presented pertains to the standard of proof applicable to an alleged infringer’s patent invalidity defense. Microsoft asked the Court to depart from longstanding Supreme Court and Federal Circuit precedent holding that a party challenging the validity of a patent in litigation must prove invalidity by clear and convincing evidence. The clear and convincing evidence standard rests on 35 U.S.C. § 282.

The case has garnered a great deal of amicus and media attention. Alleged infringers raise the affirmative defense of patent invalidity in most infringement actions. The outcome of this case could have a dramatic impact on patent-infringement litigation, the stability and value of patent rights, and the incentives to innovate across numerous sectors of the economy.

WilmerHale partner Seth Waxman argued the case in the Supreme Court on April 18, 2011. On June 9, 2011, the Court ruled unanimously in favour of our client i4i.

Other WilmerHale attorneys on the team were Paul Wolfson, Daniel Volchok, Francesco Valentini and Arthur Coviello. With WilmerHale on the briefs were co-counsel from Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., McKool Smith P.C., and Sterne, Kessler, Goldstein & Fox PLLC.

Supreme Court Argument and Decision

Parties' Briefs

Amicus Brief

WilmerHale represents i4i Limited Partnership, which holds a patent on an improved method for editing certain computer documents. i4i successfully sued Microsoft for infringing this patent with certain versions of Word. The jury found wilful infringement, rejected Microsoft’s claim that i4i’s patent is invalid, and awarded i4i $240 million in damages (plus interest) and a preliminary injunction. The judgment was affirmed by the Federal Circuit, and the Supreme Court granted certiorari. The question presented pertains to the standard of proof applicable to an alleged infringer’s patent invalidity defense. Microsoft asked the Court to depart from longstanding Supreme Court and Federal Circuit precedent holding that a party challenging the validity of a patent in litigation must prove invalidity by clear and convincing evidence. The clear and convincing evidence standard rests on 35 U.S.C. § 282.

The case has garnered a great deal of amicus and media attention. Alleged infringers raise the affirmative defense of patent invalidity in most infringement actions. The outcome of this case could have a dramatic impact on patent-infringement litigation, the stability and value of patent rights, and the incentives to innovate across numerous sectors of the economy.

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