Academic journal article Santa Clara Computer & High Technology Law Journal

Knocking the Eagle off the Patent Owner's Shoulder: Chiron Holds That Jurors Don't Have to Be Told That a Patent Is Presumed Valid

Academic journal article Santa Clara Computer & High Technology Law Journal

Knocking the Eagle off the Patent Owner's Shoulder: Chiron Holds That Jurors Don't Have to Be Told That a Patent Is Presumed Valid

Article excerpt

I. INTRODUCTION

The development of patent law in the United States has been marked by a high level of confidence that the Patent Office "gets it right" when it issues a patent. This confidence sprang up from the belief that a patent application is subjected to a thorough investigation by well-trained examiners who regularly analyze the technical issues presented by the patent application, and whose job it is, day in and day out, to make sure that patents are awarded to only those applications that comply with the patent rules.

Based upon the high level of confidence in the decisions made by Patent Office examiners, courts derived the presumption that a patent is valid. Congress ultimately codified both this presumption, and that the burden of proving invalidity, falls upon the person challenging the patent, in amendments to the patent statute. Courts, in turn, have interpreted the amended statute as requiring that the challenger meet a higher standard of proof, clear and convincing evidence, in order to overcome the presumption.

The overall effect of the presumptions, burdens and standards originating from the core confidence in the patent examiner's decision is to make it harder to invalidate an issued patent. Patent owners therefore wear the American eagle on their shoulders: those who attack the validity of a patent must overcome the significant obstacles that spring from the belief that the government "gets it right."

There is a perception among an increasing number of legislators, judges, and practitioners, however, that patent examiners are making mistakes and issuing an unduly large number of invalid patents. This perception has caused the Federal Trade Commission (FTC) and, most recently, the National Academy of Sciences (NAS) to propose changes to the patent laws that make it easier to challenge the validity of issued patents. (1) The proposed reforms therefore seek to knock the eagle off of patent owners' shoulders: the growing suspicion that the government "gets it wrong" has created the impetus for reforms directed at lowering, if not eliminating, the significant obstacles to proving invalidity.

The recent decision in Chiron Corp. v. Genentech, Inc. demonstrates that the Federal Circuit is already moving in the same direction as the proposed reforms. (2) In Chiron, the Federal Circuit held that the district court was not required to instruct the jury that a patent is presumed valid. (3) The decision of the Federal Circuit thus set the stage to approve of a situation where the presumed correctness of the government's actions and the presumed validity of the patent are not readily transparent to the jury in the trial of a patent infringement case. (4) Although not so far reaching as the FTC's proposal to lower the burden of proving invalidity, Chiron knocks the eagle off of the patent owner's shoulder by denying the jury the compelling explanation for why the heavy burden of proving invalidity is imposed upon the party challenging the validity of the patent. Chiron is likely a harbinger of further judicial implementation of the proposed reforms. Its unspoken, but nonetheless obvious rationale, is that the challenger should not bear the traditional heavy burdens associated with proving invalidity if the patent examiner cannot be relied upon to "get it right."

II. PATENT OWNERS WEAR THE EAGLE ON THEIR SHOULDERS

A recurrent theme throughout what are literally decades of developing patent law is the confidence expressed by judges, practicing attorneys, and academics in the job done by the Patent Office. Patent examiners have long been viewed as correctly examining patents to make sure the claimed invention meets the statutory tests of patentable subject matter, (5) novelty, (6) nonobviousness, (7) utility, (8) and disclosure (9) such that, at least historically, there has been a high level of confidence that bad patents are not being allowed to slip through the system. …

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