microsoft limited partnership et argued april decided june asserting patent invalidity defense infringement action alleged infringer must contend patent act act patent shall presumed valid burden establishing invalidity shall rest party asserting since federal circuit read require defendant seeking overcome presumption persuade factfinder invalidity defense clear convincing evidence respondents collectively hold patent issue claims improved method editing computer documents sued petitioner microsoft willful infringement patent microsoft counterclaimed sought declaration patent invalid bar precludes patent protection invention sale country one year prior filing patent application parties agreed year filing patent application sold software program known disagreed whether software embodied invention claimed patent relying undisputed fact software never presented patent trademark office pto examination patent application microsoft objected proposed jury instruction invalidity defense must proved clear convincing evidence district nevertheless gave instruction rejecting microsoft alternative instruction proposing preponderance evidence standard jury found microsoft willfully infringed patent failed prove patent invalidity federal circuit affirmed relying settled interpretation held section requires invalidity defense proved clear convincing evidence pp rejects microsoft contention defendant need persuade jury patent invalidity defense preponderance evidence congress prescribed governing standard proof choice generally controls steadman sec congress made choice includes express articulation standard proof congress uses term statute assumes term comes common law meaning safeco ins america burr stating patent presumed valid congress used term settled meaning radio america radio engineering laboratories rca authoritative tracing nearly century case law stated inter alia presumption patent validity overthrown except clear cogent evidence microsoft contention precedents applied standard two limited circumstances unavailing given absence qualifications cases also unpersuasive microsoft argument federal circuit interpretation must fail renders superfluous additional statement burden establishing invalidity shall rest party asserting canon superfluity assists competing interpretation gives effect every clause word statute duncan walker interpretation avoids excess language either microsoft alternative theories presumption allocates burden production shifts burdens production persuasion presumption unnecessary light additional statement challenger burden pp also rejected microsoft argument preponderance standard must least apply evidence factfinder pto examination process true enough circumstances rationale underlying presumption pto expertise approved claim seems much diminished ksr teleflex though rationales may still animate presumption question remains whether congress specified applicable standard proof established today congress codifying presumption patent validity implicitly heightened standard proof attached cases never adopted endorsed microsoft fluctuating standard proof indicate even dicta anything less standard ever apply invalidity defense fact indicated contrary see rca finally often applied heightened standard proof without mentioning whether relevant evidence pto examiner circumstances strongly suggesting see smith hall nothing text suggests congress meant depart understanding enact standard proof rise fall facts case indeed congress intended drop heightened standard proof evidence jury varied pto presumably said expressly cases various courts appeals observed presumption weakened dissipated evidence never considered pto read reflect commonsense principle pto material facts considered judgment may lose significant force cf ksr consistent principle jury may instructed evaluate whether evidence materially new consider fact determining whether invalidity defense proved clear convincing evidence pp position judge comparative force parties policy arguments wisdom standard congress adopted congress specified applicable standard proof codified presumption patent validity nearly years federal circuit interpreted today congress often amended patent laws apparently never considered proposal lower standard proof indeed congress left federal circuit interpretation place despite ongoing criticism within federal government without accordingly recalibration standard proof remains congress hands pp affirmed sotomayor delivered opinion scalia kennedy ginsburg breyer alito kagan joined breyer filed concurring opinion scalia alito joined thomas filed opinion concurring judgment roberts took part consideration decision case microsoft corporation petitioner limited partnership et al writ certiorari appeals federal circuit june justice sotomayor delivered opinion patent act patent shall presumed valid burden establishing patent claim thereof shall rest party asserting invalidity consider whether requires invalidity defense proved clear convincing evidence hold pursuant authority patent clause art cl congress charged patent trademark office pto task examining patent applications issuing patents appears applicant entitled patent law congress set forth prerequisites issuance patent pto must evaluate examination process receive patent protection claimed invention must among things fall within one express categories patentable subject matter novel nonobvious relevant bar precludes patent protection invention sale country one year prior filing patent application see generally pfaff wells electronics evaluating whether statutory conditions met pto examiners must make various factual determinations instance state prior art field nature advancement embodied invention see dickinson zurko issued patent grants certain exclusive rights holder including exclusive right use invention patent duration enforce right patentee bring civil action infringement another person without authority makes uses offers sell sells patented invention within see also among defenses patent act act alleged infringer may assert invalidity patent may attempt prove patent never issued first place see defendant may argue instance claimed invention obvious time thus one conditions patentability lacking see see also ultimate question patent validity one law graham john deere kansas city citing great atlantic pacific tea supermarket equipment douglas concurring see post breyer concurring factual questions underlying pto original examination patent also bear invalidity defense action see describing basic factual inquiries form background evaluating obviousness pfaff bar asserting invalidity defense alleged infringer must contend first paragraph provides patent shall presumed valid burden establishing invalidity rest party asserting invalidity federal circuit reading defendant seeking overcome presumption must persuade factfinder defense clear convincing evidence judge rich principal drafter act articulated view american hoist derrick sowa sons ca fed federal circuit held codified existing presumption validity patents internal quotation marks omitted point presumption based basic proposition government agency pto presumed job ibid relying precedent force presumption ibid citing radio america radio engineering laboratories rca judge rich concluded section creates presumption patent valid imposes burden proving invalidity attacker burden constant never changes convince invalidity clear evidence nearly years since american hoist federal circuit never wavered interpretation see greenwood hattori seiko ca fed surfaces hill chemical ca fed alza andrx pharmaceuticals llc ca fed respondents limited partnership infrastructures information collectively hold patent issue suit patent claims improved method editing computer documents stores document content separately metacodes document structure sued petitioner microsoft corporation willful infringement claiming microsoft manufacture sale certain microsoft word products infringed patent addition denying infringement microsoft counterclaimed sought declaration patent invalid unenforceable specifically relevant microsoft claimed bar rendered patent invalid pointing prior sale software program known parties agreed one year prior filing patent application sold presented opposing arguments jury however whether software embodied invention claimed patent software source code destroyed years commencement litigation factual dispute turned largely trial testimony two inventors also named inventors patent testified practice key invention disclosed patent relying undisputed fact software never presented pto examiner microsoft objected proposed instruction required prove invalidity defense clear convincing evidence instead instruction convincing burden given app microsoft following burden proving invalidity unenforceability clear convincing evidence however microsoft burden proof regard defense invalidity based prior art review prosecution preponderance evidence ibid rejecting hybrid standard proof microsoft advocated district instructed jury microsoft burden proving invalidity clear convincing evidence app pet cert jury found microsoft willfully infringed patent microsoft failed prove invalidity due bar otherwise denying microsoft motions district rejected microsoft contention improperly instructed jury standard proof appeals federal circuit relying settled interpretation explained discern error jury instruction requiring microsoft prove invalidity defense clear convincing evidence ibid granted certiorari ii according microsoft defendant infringement action need persuade jury invalidity defense preponderance evidence alternative microsoft insists preponderance standard must apply least invalidity defense rests evidence never considered pto examination process reject congress prescribed governing standard proof choice controls absent countervailing constitutional constraints steadman sec question whether congress made choice stated first paragraph provides patent shall presumed valid burden establishing invalidity patent claim thereof shall rest party asserting invalidity thus express terms establishes presumption patent validity provides challenger must overcome presumption prevail invalidity defense statute explicitly specifies burden proof includes express articulation standard statutory inquiry however simply end begin course assumption ordinary meaning language chosen congress accurately expresses legislative purpose engine mfrs assn south coast air quality management internal quotation marks omitted congress uses term statute assume term comes common law meaning absent anything pointing another way safeco ins america burr citing beck prupis stating patent presumed valid congress used term settled meaning common law decision rca authoritative tracing nearly century case law others justice cardozo wrote unanimous presumption validity presumption overthrown except clear cogent evidence although force presumption found varying expression elsewhere justice cardozo explained one common core thought truth unified decisions ne otherwise infringer assails validity patent fair upon face bears heavy burden persuasion fails unless evidence dubious preponderance true assailant connects way title true inventor fortiori stranger invention without claim title true assailant launches attack evidence different least form theretofore produced opposition patent bit clearly evidence even verbally internal citation omitted presumption words reflected universal understanding preponderance standard proof dubious basis deem patent invalid ibid see also patent presumed valid presumption overcome convincing evidence error thus time congress enacted declared patent presumed valid presumption patent validity long fixture common law according settled meaning defendant raising invalidity defense bore heavy burden persuasion requiring proof defense clear convincing evidence presumption encompassed allocation burden proof also imposition heightened standard proof general rule term comes meaning conclude congress intended drop heightened standard proof presumption simply fails reiterate expressly neder see also congress uses terms accumulated settled meaning common law must infer unless statute otherwise dictates congress means incorporate established meaning terms quoting nationwide mut ins darden standard oil sates words employed statute time meaning common law law country presumed used sense contrary must presume congress intended incorporate heightened standard proof unless statute otherwise dictates neder internal quotation marks omitted recognize may unusual treat presumption alone establishing governing standard proof see thayer preliminary treatise evidence common law hereinafter thayer read contrary particular presumption must proved beyond reasonable doubt recognized something superadded rule presumption namely another rule amount evidence needed overcome presumption given judges including justice cardozo repeatedly understood explained presumption patent validity accept microsoft argument congress used words presumed valid adopt procedural device shifting burden production shifting burden production burden persuasion brief petitioner emphasis deleted whatever significance presumption abstract basic principles statutory construction require us assume congress meant incorporate cluster ideas attached term adopted beck internal quotation marks omitted rca leaves doubt attached presumption patent validity expression force standard proof required overcome resisting conclusion congress adopted heightened standard proof reflected cases microsoft contends cases applied standard proof two limited circumstances every case involving invalidity defense first according microsoft heightened standard proof applied cases involving oral testimony prior invention simply account unreliability testimony brief petitioner second microsoft tells us heightened standard proof applied invalidity challenges based priority invention issue previously litigated parties pto proceedings squint may fail see qualifications microsoft purports identify cases certainly make appearance rca explanation presumption patent validity rca simply said without qualification one otherwise infringer assails validity patent fair upon face bears heavy burden persuasion fails unless evidence dubious preponderance see also patent regularly issued even obviously patent issued hearing rival claimants presumed valid presumption overcome convincing evidence error emphasis added appear cases express limitations application heightened standard proof smith hall citing rca proposition heavy burden persuasion rests upon one seeks negative novelty patent showing prior use mumm jacob decker sons burden make good defense upon party setting burden heavy one held every reasonable doubt resolved internal quotation marks omitted fact microsoft admits cases read announcing heightened standard applicable invalidity assertions brief petitioner emphasis deleted furthermore agree microsoft proposed limitations inherent even unexpressed cases early explained burden proving prior inventorship rests upon every reasonable doubt resolved without tying rule vagaries manipulability oral testimony coffin ogden wall years later applied rule evidence support defense included documentary proof oral testimony case presenting priority issues see smith thus even congress searched unstated limitations heightened standard proof cases found microsoft also argues federal circuit interpretation statement patent shall valid must fail renders superfluous statute additional statement burden establishing invalidity patent shall rest party asserting invalidity agree presumption imposes heightened standard proof patent challenger alone suffices establish defendant bears burden persuasion cf director office workers compensation programs greenwich collieries standard proof apply burden persuasion indeed federal circuit essentially recognized much american hoist see canon superfluity assists competing interpretation gives effect every clause word statute duncan walker quoting menasche see bruesewitz wyeth llc slip interpretation including two alternatives advanced microsoft avoids excess language presumption allocates burden production brief petitioner instead shift burden production burden persuasion emphasis deleted unnecessary light statement challenger bears burden establishing invalidity see fed practice party burden persuasion also starts burden producing evidence times congress enacts provisions superfluous corley alito dissenting slip kind excess language microsoft identifies hardly unusual comparison statutes set forth presumption burden persuasion standard proof reprising limited argument pressed microsoft argues alternative preponderance standard must least apply evidence factfinder pto examination process particular relies ksr teleflex circumstances rationale underlying presumption pto expertise approved claim seems much diminished statement true enough although rationales may animate presumption circumstances see barbed wire patent explaining patentee first published device put upon record made use practical purpose gave public doubts concerning actual inventor resolved favor patentee cf brief amicus curiae arguing even administrative rationale relevance heightened standard proof serves protect patent holder reliance interests disclosing invention public exchange patent protection question remains however whether congress specified applicable standard proof established congress codifying presumption patent validity implicitly heightened standard proof attached cases never adopted endorsed kind fluctuating standard proof microsoft envisions indicate even dicta anything less standard ever apply invalidity defense raised infringement action contrary spoke issue directly rca stating heightened standard proof applied evidence different considered pto applied even clearly evidence identical likewise statement dubious preponderance never suffice sustain invalidity defense admitted apparent exceptions finally often applied heightened standard proof without mention whether relevant evidence pto examiner circumstances strongly suggesting see smith nothing text suggests congress meant depart understanding enact standard proof rise fall facts case indeed congress intended drop heightened standard proof evidence jury varied pto thus take unusual impractical step enacting variable standard proof must adjudicated case cf santosky kramer assume said expressly sure numerous courts appeals years preceding act observed presumption validity weakened dissipated circumstance evidence infringement action never considered pto see jacuzzi berkeley pump largely dissipated schindler saladino sons weakened gillette safety razor cliff weil cigar greatly weakened butler mfg enterprise cleaning weakened read cases hold even suggest preponderance standard apply circumstances decline impute reading congress instead understand cases reflect commonsense principle federal circuit recognized throughout existence namely new evidence supporting invalidity defense may carry weight infringement action evidence previously considered pto american hoist judge rich explained new evidence touching validity patent considered pto relied tribunal considering faced disagree pto deferring judgment taking expertise account evidence may therefore carry weight go toward sustaining attacker unchanging burden ibid emphasis deleted see also sibia neurosciences cadus pharmaceutical ca fed alleged infringer burden may easily th additional evidence group one hallmark cards ca fed similar simply put pto material facts considered judgment may lose significant force cf ksr concomitantly challenger burden persuade jury invalidity defense clear convincing evidence may easier sustain respect although occasion endorse particular formulation note jury instruction effect new evidence requested often given warranted jury may instructed consider heard evidence pto opportunity evaluate granting patent disputed whether evidence presented jury differs evaluated pto jury may instructed consider question either case jury may instructed evaluate whether evidence materially new consider fact determining whether invalidity defense proved clear convincing evidence mendenhall cedarapids ca fed see also brief international business machines amicus curiae although microsoft emphasized argument jury never considered pto failed request instruction along lines district reply brief microsoft insists instruction kind warranted reply brief petitioner argument however comes far late therefore refuse consider see west jackson slip cf fed rule civ proc iii parties amici presented opposing views wisdom standard congress adopted microsoft amici contend heightened standard proof dampens innovation unduly insulating bad patents invalidity challenges point high invalidation rate evidence pto grants patent protection many undeserving inventions claim inter partes reexamination proceedings pto fix problem grounds invalidation like bar issue raised proceedings question deference pto expert determinations warrant light agency resources procedures deem inadequate insist heightened standard proof essentially causes juries abdicate role reviewing invalidity claims raised infringement actions part amici including contend heightened standard proof properly limits circumstances lay jury overturns considered judgment expert agency claim heightened standard proof essential component patent bargain see bonito boats thunder craft boats incentives inventors disclose innovations public exchange patent protection disagree notion patent issuance rate optimal level explain limits reexamination process reflect judgment congress appropriate degree interference patentees reliance interests finally maintain juries properly instructed application standard often find invalidity defense established find position judge comparative force policy arguments nearly years federal circuit interpreted today period congress often amended see pub stat pub stat far microsoft aware even considered proposal lower standard proof see tr oral arg moreover congress amended patent laws account concerns bad patents including expanding reexamination process provide inter partes proceedings see optional inter partes reexamination procedure act stat codified et seq evidentiary standard adopted gone untouched indeed congress left federal circuit interpretation place despite ongoing criticism within federal government congress specified applicable standard proof codified presumption patent validity since allowed federal circuit correct interpretation stand standard proof remains hands reasons stated judgment appeals federal circuit affirmed chief justice took part consideration decision case microsoft corporation petitioner limited partnership et al writ certiorari appeals federal circuit june justice breyer justice scalia justice alito join concurring join opinion full write separately given technical important nature invalidity question believe worth emphasizing area law others evidentiary standard proof applies questions fact questions law see addington texas thus factfinder must use clear convincing standard disputes say product first sold whether prior art reference published many claims invalidity rest however upon factual disputes upon law applies facts given given facts show product previously public use show invention nove show patent described claims properly ultimate question patent validity turns correct answer legal questions subsidiary legal standards mean apply facts given today strict standard proof application see graham john deere kansas city minnesota mining mfg chemque ca fed transocean offshore deepwater drilling maersk contractors usa ca fed cf markman westview instruments courts help keep application today clear convincing standard within proper legal bounds separating factual legal aspects invalidity claim say using instructions based circumstances help jury make distinction using interrogatories special verdicts make clear specific factual findings underlie jury conclusions see fed rules civ proc isolating facts determined help clear convincing standard courts thereby assure proper interpretation application correct legal standard without use clear convincing standard preventing clear convincing standard roaming outside reservation courts increase likelihood discoveries inventions receive legal protection none due microsoft corporation petitioner limited partnership et al writ certiorari appeals federal circuit june justice thomas concurring judgment persuaded congress codified standard proof stated patent act patent shall presumed valid see ante congress borrows terms art presumes congress knows adopts cluster ideas attached borrowed word meaning use convey judicial mind morissette think words patent shall presumed valid clearly conveyed particular standard proof judicial mind constitute term art see ante ome lower courts doubted presumption wisdom even pretended exist philip hunt mallinckrodt chemical works supp edny impact upon presumption many late decisions seems rendered attenuated shadow wraith myers beall pipe tank supp presumption patent validity treated appellate courts evanescent cloud american hoist derrick sowa sons ca fed case law far consistent even contradictory presumption cf bruesewitz wyeth llc slip congress use word similar term art codify term art therefore conclude congress use phrase codified standard proof nevertheless reach outcome silent standard proof alter rule see ante includes express articulation standard proof reason agree heightened standard proof set forth radio america radio engineering laboratories never overruled modified congress applies footnotes originally enacted first paragraph read patent shall presumed valid burden establishing invalidity patent shall rest party asserting stat congress since amended inserting two sentences relevant modifying language second sentence text although relevant appeals modified effective date permanent injunction district entered favor ca fed contends microsoft forfeited first argument failing raise merits brief argument however within scope question presented reject merits need decide whether preserved preliminary word terminology order said term proof one slipperiest members family legal terms schaffer weast quoting strong mccormick evidence ed alteration omitted historically term encompassed two separate burdens burden persuasion specifying party loses evidence balanced well burden production specifying party must come forward evidence various stages litigation ibid adding confusion term burden proof occasionally used synonym standard proof grogan garner use burden proof interchangeably burden persuasion identify party must persuade jury favor prevail use term standard proof refer degree certainty factfinder must persuaded factual conclusion find favor party bearing burden persuasion see addington texas words term standard proof specifies difficult party bearing burden persuasion convince jury facts favor various standards proof familiar beyond reasonable doubt clear convincing evidence preponderance evidence see generally wright graham federal practice procedure pp ed hereinafter fed practice describing standards proof among cases justice cardozo cited cantrell wallick burden proof make good defence upon party setting every reasonable doubt resolved internal quotation marks omitted coffin ogden wall burden proof rests upon defendant every reasonable doubt resolved barbed wire patent principle repeatedly acted upon different circuits washburn gould cas cc mass charging jury happen minds led reasonable doubt question inasmuch incumbent defendant satisfy beyond doubt find plaintiff microsoft objects reading conflicts usual understanding presumptions reply brief petitioner relies understanding reflected federal rule evidence explains ordinary effect presumption federal civil actions rule however postdates act nearly years dispositive congress understood presumptions generally much less presumption validity event word presumption often used another term might accurate see thayer often maxims ground principles get expressed form presumption perversely inaccurately extent congress used words presumed valid imprecise way fault following lead similar vein microsoft insists simply settled presumption validity congress codify microsoft points handful district decisions question ed whether presumption validity warranted required patentee prove validity patent preponderance evidence brief petitioner emphasis deleted brackets internal quotation marks omitted see ginsberg railway express agency supp sdny stating dicta may well said presumption whatever arises grant patent see also post thomas concurring judgment rca makes clear however presumption patent validity established meaning traceable century lower courts doubted wisdom even pretended exist moment microsoft may correct congress enacted correct lower courts required patentee prove validity patent see american hoist derrick sowa sons ca fed language congress selected reveals intent specify defendant bears burden proving invalidity also evidence support defense must clear convincing us relevant legislative history provides additional evidence congress meant codify presumption validity set forth new presumption making accompanying house senate reports explain introduces declaration presumption patent statement made courts expression statute hereinafter hereinafter effect reviser note indicates first paragraph declares existing presumption validity patents note following prior existing patent laws already incorporated sum substance presumption microsoft define assign ed burden proving invalidity accused infringer brief petitioner emphasis deleted see ed providing defendant infringement action may plead prove trial invalidity patent defense see also patent act ch stat patent act ch stat similar patent act ch ii stat similar coffin explaining patent act allowed party sued infringement prove among defences patentee original first inventor thing patented substantial material part thereof claimed new internal quotation marks omitted house senate reports state however established principle previously expression statute thus thing missing predecessor heightened standard proof congress must understood presumption patent validity include heightened standard proof attached microsoft cites numerous appeals decisions support claim preponderance standard must apply event evidence infringement action varies considered pto see hint hybrid standard proof microsoft advocates cases indeed cases appears even evaluated evidence according heightened standard proof see jacuzzi berkeley pump although expressly stated th conclusion invalidity based upon evidence establishing thesis beyond reasonable doubt trial expressed doubt record shows conclusion supported substantial evidence western auto supply concluding patent invalid entertain ed doubt question least impracticalities approach arises fact whether pto examiner considered particular reference often question without clear answer granting patent examiner duty cite every reference considers dept commerce pto manual patent examining procedure rev ed examiner called upon cite references may available multiplying references one good better others adds burden cost prosecution therefore avoided emphasis deleted manual patent examining procedure rev ed http internet materials visited june available clerk case file see also brief respondents describing additional impracticalities see indication congress meant require collateral litigation inherently uncertain question see ftc promote innovation proper balance competition patent law policy http recommending legislation enacted specifying challenges validity patent determined based preponderance evidence alsup memo congress district judge proposal patent reform berkeley tech lichtman lemley rethinking patent law presumption validity stan rev proposing statutory amendment judicial reinterpretation existing statute associated case law lower standard proof preponderance evidence omitted