Rethinking patent law's presumption of validity

Stanford Law Review

Volumn 60, Issue 1, 2007, Pages 45-72

  Lichtman, Doug ^a   Lemley, Mark A ^b,c  

^a UNIVERSITY OF CALIFORNIA   (United States)

^b STANFORD LAW SCHOOL   (United States)

^c Keker and Van Nest LLP ^*

Author keywords

[No Author keywords available]

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EID: 37849002863     PISSN: 00389765     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review

References (112)

1. U.S. PATENT & TRADEMARK OFFICE, 2007-2012 STRATEGIC PLAN (2007), available at http://www.uspto.gov/web/offices/com/strat2007.
2. See Mark A. Lemley, Rational Ignorance at the Patent Office, 95 NW. U. L. REV. 1495 (2001).
3. Until 1999, patent applications were kept secret in the United States. Most-but not all-applications are now published eighteen months after they are filed. 35 U.S.C § 122(b) (2000). But they are kept confidential until then.
4. For an interesting proposal to change this by instituting outside peer review of patents, see Beth Simone Noveck, "Peer to Patent": Collective Intelligence, Open Review, and Patent Reform, 20 HARV. J.L. & TECH. 123 (2006). The PTO is experimenting with such a procedure as a pilot project, but because of the confidentiality restriction they are doing so only for patent applicants who voluntarily agree to such review. That means that the pilot program requires volunteers on both sides of the transaction: the patent applicant must volunteer to participate in the review, and then reviewers must volunteer their time to actually do the evaluations. That latter condition strikes us as a significant hurdle. We know a lot of people who could be great "volunteer" patent examiners in their fields, but few of those individuals are likely to work for free, let alone do so on a project so intellectually unrewarding as poking holes in dud patent applications. Put differently, open source models work well when the underlying work is fun and rewarding-hence the success of Linux, the various Wiki projects, and the like-but reading undeserving patent applications is like grading F term papers and may not draw qualified volunteer reviewers in sufficient numbers to make peer review more than a pilot project.
5. Calls for patent reform have echoed loudly over the past several years, with industry organizations, patent scholars, and government agencies all publicly announcing that the patent system is broken and that the PTO in particular is letting a large number of undeserving patents be issued. See, e.g., FED. TRADE COMM'N, TO PROMOTE INNOVATION: THE PROPER BALANCE OF COMPETITION AND PATENT LAW AND POLICY (2003), available at http://www.ftc.gov/os/2003/10/ innovationrpt.pdf;
6. ADAM B. JAFFE & JOSH LERNER, INNOVATION AND ITS DISCONTENTS (2004);
7. A PATENT SYSTEM FOR THE 21ST CENTURY (Stephen A. Merrill, Richard C. Levin & Mark B. Myers eds., 2004). Even the mass media has picked up on the theme, frequently poking fun at PTO mistakes that are so obvious that a lay audience can appreciate the errors. See Editorial, Patently Ridiculous, N.Y. TIMES, Mar. 22, 2006, at A24;
8. Editorial, U.S. Patent System Has Run Aground, BOSTON HERALD, July 24, 2005, at 26;
9. Sara Schaefer Munoz, Patent No. 6,004,596: Peanut Butter and Jelly Sandwich, WALL ST. J., Apr. 5, 2005, at B1.
10. For an argument that the presumption can be justified as a matter of history based on an analogy to land title, see Adam Mossoff, Who Cares What Thomas Jefferson Thought About Patents? Reevaluating the Patent "Privilege" in Historical Context, 92 CORNELL L. REV. 953 (2007). Whether or not Mossoff is right as an historical matter, there seems to be no policy justification for a presumption of validity unearned by examiner expertise.
11. For an economic analysis of such holdup strategies, see Joseph Farrell & Robert P. Merges, Incentives to Challenge and Defend Patents: Why Litigation Won't Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help, 19 BERKELEY TECH. L.J. 943, 952-60 (2004);
12. Mark A. Lemley & Carl Shapiro, Patent Holdup and Royalty Stacking, 85 TEX. L. REV. 1991 (2007);
13. Joseph Farrell & Carl Shapiro, How Strong Are Weak Patents? (Competition Policy Ctr., Univ. of Cal., Berkeley, Paper No. CPC05-54, 2007), available at http://faculty.haas.berkeley.edu/shapiro/weak.pdf;
14. Carl Shapiro, Injunctions, Hold-Up, and Patent Royalties (Competition Policy Ctr., Univ. of Cal., Berkeley, Paper No. CPC06-062, 2006), available at http://faculty.haas.berkeley.edu/shapiro/royalties.pdf.
15. See Lemley, supra note 2.
16. This would not be true if competitors were nonetheless scared off by the mere existence of these patents. See Christopher R. Leslie, The Anticompetitive Effects of Unenforced Invalid Patents, 91 MINN. L. REV. 101 (2006). But we are skeptical that competitors are frequently deterred by patents that simply sit on a shelf. In many industries, particularly information technology, large companies tend to ignore patents unless they are brought to their attention by the patent owner (and sometimes the companies ignore them even then).
17. Not only do patent attorneys in these industries advise their clients not to read patents, see Mark A. Lemley & Ragesh K. Tangri, Ending Patent Law's Willfulness Game, 18 BERKELEY TECH. L.J. 1085 (2003), and perhaps not to conduct a prior art search,
18. cf. Bhaven N. Sampat, Determinants of Patent Quality: An Empirical Analysis 5 (Sept. 2005) (unpublished manuscript), available at http://siepr.stanford.edu/programs/SST_Seminars/patentquality_new.pdf_1.pdf,
19. but they even ignore letters that threaten suit, reasoning that if the patentee is serious he or she will either file suit or at least send a follow-up letter, see Mark A. Lemley, Ignoring Patents 4 (2007) (unpublished manuscript, on file with authors).
20. But cf. Josh Lerner, Patenting in the Shadow of Competitors, 38 J.L. & ECON. 463 (1995) (reporting an empirical study of small biotech firms suggesting that they were deterred by patents held by competitors).
21. See also Matthew Sag & Kurt Rohde, Patent Reform and Differential Impact, 8 MINN. J. L. SCI. & TECH. 1 (2007) (suggesting this as a goal for patent reform).
22. Under current Federal Circuit case law, courts are required to all but ignore an examiner's statement of reasons for allowance. Salazar v. Procter & Gamble Co., 414 F.3d 1342 (Fed. Cir. 2005). That rule makes no sense, and we think it should be reversed.
23. As is already the case with respect to most other PTO procedures, reduced fees would be available to smaller entities.
24. Indeed, the PTO is already experimenting with something similar, though the carrot it offers is not a stronger presumption of validity but accelerated examination. See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36,323 (June 26, 2006), available at http://www.uspto.gov/web/offices/com/sol/notices/ 71fr36323.htm.
25. Scholars have been debating the details of a possible post-grant opposition proceeding for years, and legislative proposals have been put forward several times, thus far to no avail. For a sense of the academic debate as well as links to some of the legislative proposals, see Mark D. Janis, Rethinking Reexamination: Toward a Viable Administrative Revocation System for U.S. Patent Law, 11 HARV. J.L. & TECH. 1 (1997);
26. Robert P. Merges, As Many as Six Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform, 14 BERKELEY TECH. L.J. 577 (1999);
27. Craig Allen Nard, Certainty, Fence Building, and the Useful Arts, 74 IND. L.J. 759 (1999);
28. J. H. Reichman, From Free Riders to Fair Followers: Global Competition Under the TRIPS Agreement, 29 N.Y.U. J. INT'L L. & POL. 11 (1997);
29. John R. Thomas, Collusion and Collective Action in the Patent System: A Proposai for Patent Bounties, 2001 U. ILL. L. REV. 305.
30. 35 U.S.C § 282 (2000).
31. The statutory language was not always read this way. Indeed, prior to the formation of the Federal Circuit, courts varied considerably in terms of the degree of deference they would show, both by circuit and on the basis of how closely the patent examiner had considered the validity argument now being raised. See, e.g., Mfg. Res. Corp. v. Graybar Elec. Co., 679 F.2d 1355 (11th Cir. 1982) (adopting the rule that only "considered art" was subject to the clear and convincing evidence presumption);
32. NDM Corp. v. Hayes Prods., Inc., 641 F.2d 1274 (9th Cir. 1981) (same);
33. Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341 (7th Cir. 1979) (same).
34. The Federal Circuit, however, has consistently applied the high bar, see Connell v. Sears, Roebuck & Co., 772 F.2d 1542 (Fed. Cir. 1983),
35. and it continues to do so today, see, e.g., Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000);
36. Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1480 (Fed. Cir. 1998) ("The presentation of evidence that was not before the examiner does not change the presumption of validity . . . .").
37. For a discussion of how the Federal Circuit changed the rules, see Don Martens & Guy Perry, Re-examining the Clear and Convincing Standard of Proof, IPL NEWSL., Summer 1999, at 16.
38. For a detailed discussion of the early opinions establishing this uniform deference and their problems, see Lee Hollaar & John Knight, Unclear and Unconvincing: How a Misunderstanding Led to the Heightened Evidentiary Requirement in Patent Litigation (May 20, 2007) (unpublished manuscript), available at http://digital-law-online.info/papers/jk/unclear.pdf.
39. The presumption of validity in theory reduces court costs by reducing the incentive to litigate. An accused infringer has little reason to litigate if the presumption all but guarantees a win to the patent holder. In cases where litigation does occur, however, the presumption does not likely reduce costs; patent litigants today spend a fortune fighting over whether the presumption has been rebutted in each specific case.
40. As one of us has emphasized elsewhere, patents are probabilistic rights-not rights to exclude with certainty, but rights to try to exclude. See Mark A. Lemley & Carl Shapiro, Probabilistic Patents, 19 J. ECON. PERSP. 75 (2005).
41. In fiscal 2005, for example, the PTO reported receiving the following: 384,228 conventional patent applications; 46,926 applications that were filed pursuant to special rules that apply to foreign filings; and 111,753 provisional applications that are, in essence, place holders that can later mature into conventional applications. See U.S. PATENT & TRADEMARK OFFICE, PERFORMANCE AND ACCOUNTABILITY REPORT FOR FISCAL YEAR 2005, at 18 (2005), available at http://www.uspto.gov/web/offices/com/annual/ 2005/2005annualreport.pdf.
42. See Thomas, supra note 14, at 314.
43. See Kristen Osenga, Entrance Ramps, Tolls, and Express Lanes-Proposals for Decreasing Traffic Congestion in the Patent Office, 33 FLA. ST. U. L. REV. 119, 130 (2005).
44. Cf. Lemley, supra note 2, at 1508-09 (estimating additional costs to double the amount of time each examiner -who makes significantly less than $200 per hour-spends on an application at $1.52 billion).
45. See id. at 1510-11.
46. Among the abundant literature on the adversary system and its benefits and costs, see GEOFFREY C. HAZARD, ETHICS IN THE PRACTICE OF LAW 121 (1978);
47. David Luban, The Adversary System Excuse, in THE GOOD LAWYER: LAWYERS' ROLES AND LAWYERS' ETHICS 83, 94 (David Luban ed., 1984);
48. Stephen A. Saltzburg, Lawyers, Clients, and the Adversary System, 37 MERCER L. REV. 647, 656 (1986);
49. cf. Lon Fuller, The Adversary System, in TALKS ON AMERICAN LAW 30, 31 (Harold J. Berman ed., 1961) (discussing the importance of "partisan zeal" in achieving a fair outcome).
50. But cf. Stephen McG. Bundy & Einer Richard Elhauge, Do Lawyers Improve the Adversary System? A General Theory of Litigation Advice and Its Regulation, 79 CAL. L. REV. 315 (1991) (asking the distinct question whether legal advice benefits or harms the adversary system).
51. To some extent Congress did this several years ago when it required publication of most patent applications eighteen months after they are filed. The bill actually passed merely required those who file counterpart applications abroad to publish their applications here, however. 35 U.S.C.A. § 122(b) (West 2007). Because the rest of the world already required publication at eighteen months, the practical effect of this new statute was negligible-it merely required publication in the U.S. of applications that were already being published abroad.
52. On the traditional definition of willful infringement and its problems, see, for example, Lemley & Tangri, supra note 9;
53. Matthew D. Powers & Steven C. Carlson, The Evolution and Impact of the Doctrine of Willful Patent Infringement, 51 SYRACUSE L. REV. 53, 102-04 (2001).
54. A recent Federal Circuit decision, In re Seagate Technology, L.L.C., No. 830, 2007 WL 2358677 (Fed. Cir. Aug. 20, 2007) (en banc), may ameliorate this problem.
55. See, e.g., KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007).
56. For discussion of these "secondary considerations" of nonobviousness, see, for example, Greenwood v. Hattori Seiko Co., 900 F.2d 238, 241 (Fed. Cir. 1990);
57. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986);
58. Rochelle Cooper Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1 (1989);
59. Edmund W. Kitch, Graham v. John Deere Co.: New Standards for Patents, 1966 SUP. CT. REV. 293;
60. and Robert P. Merges, Commercial Success and Patent Standards: Economic Perspectives on Innovation, 76 CAL. L. REV. 803 (1988). With the exception of Dreyfuss, the commentators cited are critical of the commercial success factor as evidence of nonobviousness, though they agree that other factors are important.
61. Objective information such as this is also important because it helps combat hindsight bias. There is always in the patent system the concern that a decision-maker will see the purported invention and immediately think that it was obvious, even if no one had thought of it before. This problem is particularly troublesome in litigation because, by the time litigation begins, the patented invention will typically have been out in the world for many years and thus seem familiar. Objective evidence helps decision-makers combat this natural but troubling tendency.
62. We focus in the text on reasons why, as a matter of first principles, PTO review cannot work. Our point is that even a benevolent dictator would have trouble making PTO review effective because early stage evaluations of every application that comes in the door are too costly, insufficiently adversarial, and come too early in time for there to be adequate, reliable third-party information about invention quality. If these obstacles were somehow removed, there would then be an additional layer of practical and bureaucratic problems to address-structural problems about how examiners are hired, how examiner work is evaluated, and the degree to which an examiner can ultimately and decisively reject a patent application. See, e.g., Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. REV. 63 (2004) (discussing the rules that today allow an applicant to persevere indefinitely even in the face of repeated rejections by his examiner). These problems are important, but we do not focus on them here because they are not unavoidable difficulties associated with PTO review. That is, these problems could be solved by the appropriate reforms; the financial and informational problems, by contrast, cannot be.
63. There is some question whether a prior court's claim construction, as a legal ruling, is binding in subsequent cases involving the patent. See, e.g., Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1341-42 (Fed. Cir. 2001) (raising but not deciding this issue).
64. Blonder-Tongue Labs., Inc. v. Univ. of 111. Found., 402 U.S. 313 (1971).
65. See IPXL Holdings, L.L.C v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (holding mixed system-method claims invalid).
66. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558 (Fed. Cir. 2000) (holding that a narrowing amendment precludes reliance on the doctrine of equivalents altogether), vacated, 535 U.S. 722 (2002) (holding that a narrowing amendment precludes reliance on the doctrine of equivalents except in very narrow, specified circumstances).
67. For discussion of this particular patent issue, see Douglas Lichtman, Rethinking Prosecution History Estoppel, 71 U. CHI. L. REV. 151 (2004).
68. See Kimberly A. Moore, Are District Court Judges Equipped to Resolve Patent Cases?, 15 HARV. J.L. & TECH. 1 (2001); Kimberly A. Moore, Markman Eight Years Later: Is Claim Construction More Predictable?, 9 LEWIS & CLARK L. REV. 231, 239 (2005) (stating that the Federal Circuit rejects at least one claim construction in 37.5% of cases and reverses or vacates 29.7% of these cases).
69. See eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006).
70. See, e.g., 35 U.S.C.A. § 102(e), (g) (West 2007).
71. It is always possible that a wayward judge and a wayward jury will combine to wrongly invalidate a patent that should have been held valid. But that possibility exists even with the presumption of validity. The only way to eliminate legal error entirely would be to eliminate judicial review of validity altogether, and that would increase the harm from PTO error.
72. See, e.g., Ian Ayres & Paul Klemperer, Limiting Patentees ' Market Power Without Reducing Innovation Incentives: The Perverse Benefits of Uncertainty and Non-Injunctive Remedies, 97 MICH. L. REV. 985 (1999).
73. See, e.g., Gideon Parchomovsky & R. Polk Wagner, Patent Portfolios, 154 U. PA. L. REV. 1 (2005).
74. 35 U.S.C. § 282 (2000).
75. Indeed, it is worth noting that when the PTO itself considers the validity of the patents it has already issued, in both reissue and reexamination proceedings, it ignores the presumption of validity and reconsiders the patent without any deference to the first determination. See 35 U.S.C §§ 251 (reissue applications treated the same as original applications for patent), 305 (ex parte reexamination), 314(a) (inter partes reexamination) (2000).
76. See, e.g., Salazar v. Procter & Gamble Co., 414 F.3d 1342 (Fed. Cir. 2005). Under Salazar, examiner statements of reasons for allowance-as opposed to applicant statements clearly disavowing claim breadth-are given no weight.
77. The Supreme Court held in 1999 that the Administrative Procedure Act (APA) applies to the PTO. Dickinson v. Zurko, 527 U.S. 150 (1999).
78. For discussions of deference to the PTO under the APA, see, for example, Stuart Minor Benjamin & Arti K. Rai, Who's Afraid of the APA? What the Patent System Can Learn from Administrative Law, 95 GEO. L.J. 269 (2007);
79. Orin S. Kerr, Rethinking Patent Law in the Administrative State, 42 WM. & MARY L. REV. 127 (2000);
80. Craig Allen Nard, Deference, Defiance, and the Useful Arts, 56 OHIO ST. L.J. 1415 (1995). The PTO does not have substantive rulemaking authority, however, so if PTO statements to this effect are to have force it must be in the context of particular determinations of patent validity, not a general rule interpreting section 282 of the Patent Act.
81. Section 282 of the Patent Act currently states that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C § 282 (2000). Congress could add a second sentence here that would clarify the extent ofthat burden; for example, "That burden is met whenever a party brings forward new evidence sufficient to show that, more likely than not, the patent would not have been granted had the patent examiner been aware of the new evidence at the time of initial patent review."
82. For an argument in favor of judicial reinterpretation, see Benjamin & Rai, supra note 45, at 319;
83. Lemley, supra note 2, at 1531.
84. See, e.g., Mfg. Research Corp. v. Graybar Elec. Co., 679 F.2d 1355, 1360-61 (11th Cir. 1982) (adopting the rule that the clear and convincing evidence presumption applies only to prior art considered by the examiner);
85. NDM Corp. v. Hayes Prods., Inc., 641 F.2d 1274, 1277 (9th Cir. 1981) (same);
86. Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341, 342-43 (7th Cir. 1979) (same).
87. See John F. Duffy, The Festo Decision and the Return of the Supreme Court to the Bar of Patents, 2002 SUP. CT. REV. 273. Since Duffy's article was written, the Court has gotten more involved and, indeed, had more patent cases on its docket in 2006 than in any year since 1966.
88. See KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1745 (2007) ("We nevertheless think it appropriate to note that the rationale underlying the presumption-that the PTO, in its expertise, has approved the claim-seems much diminished" where the examiners had not considered the art in question.).
89. If Congress does not act, the PTO could implement a similar procedure. Indeed, it is already talking about something of this sort. See Changes to Practice for Petitions in Patent Applications to Make Special and for Accelerated Examination, 71 Fed. Reg. 36,323 (June 26, 2006), available at http://www.uspto.gov/web/offices/com/sol/notices/71fr36323.htm. If the PTO implemented such a procedure, it would be up to the courts to give a correspondingly stronger presumption of validity to the more thoroughly vetted patents.
90. The goal of using outside experts is to make sure the PTO has the technical knowledge in the specific field necessary to understand how a person having ordinary skill in the art would view the application. Outside experts are not experts in patent law, and it would be unwise to delegate to them authority over the ultimate issues, like whether the invention is or is not "obvious" under section 103.
91. Cf. Changes to Information Disclosure Statement Requirements and Other Related Matters, 71 Fed. Reg. 38,808, 38,810 (proposed July 10, 2006) (to be codified at 37 C.F.R. pt. 1), available at http://www.uspto.gov/web/ offices/com/sol/notices/71fr38808.pdf (requiring applicants submitting more than twenty-five pieces of prior art to explain the relevance of each piece).
92. The rule extending the conclusive presumption to duplicative art would both prevent applicants from having to submit duplicative art to the examiner and prevent accused infringers from avoiding the presumption by finding a reference that says the same thing in a slightly different way.
93. See F.M. Scherer, The Innovation Lottery, in EXPANDING THE BOUNDARIES OF INTELLECTUAL PROPERTY: INNOVATION POLICY FOR THE KNOWLEDGE SOCIETY 3 (Rochelle Cooper Dreyfuss et al. eds., 2001).
94. See John R. Allison et al., Valuable Patents, 92 GEO. L.J. 435, 461 (2004).
95. On patent signaling, see, for example, Clarisa Long, Patent Signals, 69 U. CHI. L. REV. 625 (2002). Note that the private market could provide other ways to credibly signal this information. Indeed, private solutions might be better, for instance if a private alternative could be even more rigorous or reliable than a PTO-run gold-plating process.
96. Some deference is appropriate, but not the complete res judicata effect the law currently recognizes. See 35 U.S.C § 315(c) (2000).
97. There might be some effect in practice, however, as fact-finders might find themselves inclined to defer to the decisions of other fact-finders.
98. Our overall theme here is that the presumption of validity should be tailored to the reality of patent review, and that obviously applies to decisions made in court and at the International Trade Commission just as to decisions made at the PTO. Thus, presumptions would not be appropriate to the extent a later court believes that the earlier litigation was a sham, or to the extent that important information was for some reason not available during the prior evaluative process. Put another way, one design issue here is to make sure that patent holders do not have too strong an incentive to sue weak defendants first in the hope of being awarded a presumption.
99. See, e.g., H.R. 2795, 109th Cong. (2005);
100. see also sources cited supra note 5 (collecting academic commentary). It is important to design a post-grant opposition system carefully, with an eye toward strategic behavior by both patentees and accused infringers. For instance, as the procedure is described in some of the literature, a strategic infringer could abuse the process by triggering post-grant opposition merely as a tactic to drain a small patent holder's resources. To avoid this, there should be limits on both the number of post-grant oppositions and the novelty of the issues raised, and perhaps a provision for fee shifting. At the same time, other proposals would allow post-grant opposition only within the first nine months after a patent issues. That would render the procedure largely useless, because in many situations the firms that would challenge a given patent are not even going to be in business at the nine-month mark, let alone know that the relevant patent is important enough to warrant the expense and investment associated with post-grant opposition.
101. See Arti K. Rai, Allocating Power over Fact-Finding in the Patent System, 19 BERKELEY TECH. LJ. 907, 918-19 (2004) (arguing for deference to the results of a post-grant opposition, if implemented).
102. For a detailed expression of this concern, see Michael Meehan, An Economic Approach for Increasing Certainty in the Patent System 48-52 (Jan. 12, 2007) (unpublished manuscript, on file with authors).
103. See Daralyn J. Durie & Mark A. Lemley, A Realist Approach to the Obviousness of Inventions (unpublished manuscript, on file with authors).
104. See, e.g., Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1385-86 (Fed. Cir. 1999) (requiring that, to be prior art, a reference must be reasonably accessible to the public). H.R. 2795, 109th Cong. (2005), would have enshrined this standard in the statute.
105. See, e.g., William C. Rooklidge & Matthew F. Weil, En Banc Review, Horror Pleni, and the Resolution of Patent Law Conflicts, 40 SANTA CLARA L. REV. 787 (2000). To be fair to the Federal Circuit, we believe the conflict problem was much worse in the 1990s than it is today, in part because the court has taken several issues en banc to resolve conflicts.
106. See Mark A. Lemley & Bhaven Sampat, Is the Patent Office a Rubber Stamp? (2007) (unpublished manuscript, on file with authors) (reporting a PTO grant rate around 75% and that the PTO only actually rejects 15-20% of applications).
107. George L. Priest & Benjamin Klein, The Selection of Disputes for Litigation, 13 J. LEGAL STUD. 1, 16 (1984).
108. See John R. Allison & Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185, 205-06 (1998) (noting increase in validity from 35% to 54% from the 1970s to the 1990s).
109. See Jay P. Kesan & Gwendolyn G. Ball, How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes, 84 WASH. U. L. REV. 237, 271 (2006) (reporting that more patent cases are resolved on summary judgment than at trial).
110. For an example, see Aventis Pharma Deutschland GmbH v. Lupin Ltd., 2006 WL 2008962, at *47 (E.D. Va. July 17, 2006) ("If the preponderance of the evidence standard was the standard to judge this case, the Court might agree with Lupin, but, as the Court has said many times, that is not the standard to be applied here since the '722 patent was granted. A patent is presumed valid and invalidity must be shown by clear and convincing evidence."). The court further noted, "It is quite possible that the '722 patent should have never been granted, but once it was granted, attacking its validity is a very difficult task indeed. Unfortunately, the law is the law."
111. Id. at *49.
112. 126 S. Ct. 1837 (2006).