Supreme Court gives Microsoft small victory, say patent experts

But it must pay $300M to Canadian dev i4i within 15 days

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Sotomayor's opinion expressly said that juries could be instructed to weigh such failings of the USPTO.

"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," she wrote. "The jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence."

Although Microsoft couldn't profit from that in retrospect -- the company did not make the argument during trial -- it and other patent holders will benefit in the future, said Long.

"In some ways, this is more important than the [change in the] standard that the Court considered," said Long. "This will have a big impact in litigation. Patent attorneys on both sides will look at this language and will cite it in every case this day forward."

According to Long, the new guidelines for jury instructions will make it easier for defendants -- like Microsoft -- to get a jury to reject the USPTO's decisions on patents. "By and large, I think patent invalidation will be more likely based on these instructions," said Long.

Although Chang didn't agree -- he saw the ruling as a clear defeat for Microsoft -- neither he or Long thought that Microsoft wasted time or money taking their appeal all the way to the Supreme Court.

"The sheer volume of interest in this case indicated that it was a question that a lot of people were thinking about," said Chang. "Even though the status quo [on the standard or proof] was confirmed, this offers some analysis and thought on jury instructions."

For his part, Long saw Microsoft's move in a larger context.

"What often happens in patent law is that the courts and Congress stare at each other, and each wants the other to make a move," said Long. By getting the Supreme Court to rule -- even though not in its favor -- Microsoft gains because it can now more effectively lobby Congress for changes in U.S. patent law.

"Microsoft can now say to Congress that 'The ball is in your court,'" said Long.

Not surprisingly, Microsoft was disappointed in Thursday's ruling.

"While the outcome is not what we had hoped for, we will continue to advocate for changes to the law that will prevent abuse of the patent system and protect inventors who hold patents representing true innovation," Microsoft said in a statement.

But i4i's Owen was looking forward to a big payday. By the terms of an earlier deal between the firms, Microsoft must pay the judgment -- at this point, slightly more than $300 million -- within 15 days of exhausting its final appeal.

"This was unprecedented, a watershed moment for patent law," Owen said of the ruling.

i4i has repeatedly portrayed its battle with Microsoft as a David and Goliath contest. Owen did not disappoint Thursday.

"This was David in the wilderness fighting against Goliath," Owen said. "We've very appreciative of the tremendous support for our position. People believed in what we believed in."

Gregg Keizer covers Microsoft, security issues, Apple, Web browsers and general technology breaking news for Computerworld. Follow Gregg on Twitter at @gkeizer or subscribe to Gregg's RSS feed . His e-mail address is

Copyright © 2011 IDG Communications, Inc.

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