Preponderance bad

AIA post-grant proceedings use the "preponderance of the evidence" standard. 16 After several years, our experience proves that this evidentiary standard is too low. Patents covering important inventions are too easily invalidated. Congress should amend the statute so that the "clear and convincing" standard--the same used in district court proceedings--is used in AIA post-grant proceedings.

When the AIA was passed, a patent owner expected to have an opportunity to amend challenged claims. The procedure would in part resemble an examination of the claims, similar to what occurs in ex parte patent prosecution. Patent examination is an ex parte process, and using a too-high evidentiary standard would hamper the PTO examiner's ability to reject claims of questionable patentability. If a post-grant proceeding were, in fact, like patent examination, it would make sense to use the lower "preponderance of the evidence" standard when assessing the patentability of any given claim. 17

But a post-grant proceeding differs significantly. AIA proceedings are adversarial adjudications of patent validity. The petitioner and the patent owner put forth competing arguments based on the evidence presented. There is no meaningful procedure by which patent owners can amend claims and have their new claims examined for patentability. The post-grant proceedings include discovery and the taking of witness testimony. Indeed, AIA post-grant proceedings were intended to be a less expensive, faster alternative to traditional district court litigation. 18

Establishing a more efficient forum for adjudicating patent validity disputes is a reasonable objective, but little justification exists for lowering the evidentiary standard for assessing the validity of a duly-issued patent. Post-grant proceedings should focus on confirming valid patent rights and canceling [*270] invalid claims, consistent with outcomes expected in district court litigation, but without the unnecessary costs associated with burdensome discovery matters and the delays due to crowded district court dockets.

In Microsoft Corp. v. i4i Ltd. Partnership, 19 the Supreme Court unanimously upheld that the clear-and-convincing standard applies to validity determinations in patent infringement actions. The Court ruled that 35 U.S.C. § 282 embodied the common-law rule for the standard of proof: "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." 20

If, in the Supreme Court's view, the "preponderance of the evidence" standard is "too dubious" for patent invalidation, then that dubious standard should not be used in AIA post-grant proceedings, especially when a patent owner cannot amend or add patent claims and the proceeding is not structured to enable the PTO to examine new or amended claims.

Similarly, validity determinations in AIA post-grant proceedings should be consistent with district court proceedings by properly applying the statutory presumption of validity set forth in 35 U.S.C. § 282. As Judge Rich explained over thirty years ago, § 282 "creates a presumption that a patent is valid and imposes the burden of proving invalidity on the attacker" and "[t]hat burden is constant and never changes and is to convince the court of invalidity by clear evidence." 21 The Supreme Court reaffirmed the importance of the statutory burden of proof in Microsoft v. i4i, but currently, too many patent owners feel that the deck is stacked against them and that they have the burden to prove their patents valid once they set foot in the PTAB.

In total, post-grant proceedings should use a clear and convincing evidence standard of proof and a presumption of validity when deciding the validity of issued patents in AIA post-grant proceedings.