Clear and convincing evidence is good

Similarly, and with greater reason for statutory amendment, the presumption of validity, as well as the burden and standard of rebutting that presumption by clear and convincing evidence, should also be the same in the agency as they have long been in the courts and those presumptions of validity were recently reaffirmed by the Supreme Court in Microsoft Corp. v. i4i Limited Partnership.433In enacting the AIA, Congress dealt specifically with the standard of proof and chose a mere preponderance of the evidence as the standard.434This was a mistake of policy by Congress for the same reason that the initial use of broadest reasonable interpretations was a mistake of policy by the Patent Office. Although the agency did, and does, have significant virtues of superior expertise and access relative to the federal courts, those virtues still do not justify the use of divergent substantive standards for evaluating patentability. Not only does this disparity allow patents that would otherwise have survived judicial review to be struck down, but it also tolerates and even encourages numerous instances in which patents actually did survive prior judicial review only to fall in the PTAB as the result of legal arbitrage.

It is no reply, moreover, to say that if aligned standards of proof are all that matter, then the courts, as well as the Patent Office (and, for that matter, the ITC), could all turn instead to a preponderance standard. Before the enactment of the AIA, this very question came before the Court in Microsoft v. i4i.435In that case, i4i had sued Microsoft for allegedly infringing i4i's patent on an improved method for computer document editing, and Microsoft responded by asserting that i4i's patent was invalid. 436There was no doubt that the patent examiner during examination had never considered the prior art that Microsoft now offered as evidence that i4i's patent was invalid, but there was vigorous dispute over whether that prior art would actually have any invalidating effect on the i4i patent.437Microsoft argued that it should not be required in court to prove invalidity by clear and convincing evidence but rather that a mere preponderance should be enough where the evidence offered was evidence that had not been before the examiner.438

The Supreme Court disagreed, explaining that the common law background against which Congress had codified the presumption of validity in the 1952 Patent Act included an understanding that the presumption was "not to be overthrown except by clear and cogent evidence."439That background understanding, in turn, reflected "nearly a century of case law from [the Supreme Court] and others" supporting a near-universal consensus "that a preponderance standard of proof was too 'dubious' a basis to deem a patent invalid."440For the same reason, it would be prudent now to revise the PTAB's statutory standard of proof in ex post patent [*123] validity review proceedings to require clear and convincing evidence, just as the courts require.