U-Turns on the One-Way Street: Public Rights and Representation Theory in Patent Validity Litigation*
Rosenthal, Brett, Texas Law Review
Blonder-Tongue1 is a rough "one-way street" for a patent owner.2 If the patent owner loses a judgment on validity just one time, his patent becomes invalid against the world.3 Conversely, if he wins, absentee infringers can challenge the same patent's validity again and again in subsequent suits.4 At the core of this rule are the due process right and the "deep-rooted historic tradition that everyone should have his own day in court."5 Although a oncevictorious patent owner already had his day in court, the absentee infringer did not. Thus, even though issues relevant to validity do not differ between infringers, the patentee must defend his patent anew against every subsequent infringer that arises.
But does due process require that every infringer have a day in court to challenge patent validity?6 After all, an infringer that challenges patent validity stands not for an individual right, but for "the public's right to retain knowledge already in the public domain."7 Because patent validity challenges vindicate public rights, the same procedural entitlements that attach to individual rights may not attach for successive challenges of validity. 8 Moreover, the law's allowance of successive challenges to patent validity frustrates the notice function and valuation of patents, provides disincentives to actually litigate the validity of bad patents, and impairs judicial economy.9 Therefore, this Note contends that a vigorous challenge against a patent's validity fully vindicates the public right to access ideas in the public domain and should preclude successive challenges by future infringers.
Part I looks at the foundational tools of group litigation-joinder and consolidation-as applied in patent law, including recently adopted restrictions in the Leahy-Smith America Invents Act of 2011 (AIA).10 Part II asks whether the Rule 23 class action allows certification of present and future infringers for validity determinations. Part III examines whether the "public law" nature of the validity inquiry reinvigorates the notion of "virtual representation" rejected in Taylor v. Sturgell.11 Part IV analyzes whether procedural rules that facilitate the establishment of patent validity further the substantive goals of patent law and the imperatives of wise judicial administration.
I. Joinder and Consolidation
The ordinary mechanism for binding a party to a judgment is joinder.12 However, for a patentee seeking to fortify his patent from validity challenges, simply suing all available infringers has several practical limitations. First, future infringers-at least, those not imminently near the act of infringement-cannot be precluded because they cannot be sued.13 Second, a patentee may not have the resources to identify and sue all current infringers.14 Third, a host of jurisdictional problems can arise.15 Finally, recently adopted provisions in the AIA restrict joinder and consolidation for trial of defendants simply on the basis of their alleged infringement of the same patent.16
A. Mandatory Joinder
Absentee infringers are not necessary parties under any category of Rule 19. Rule 19 provides that parties must be joined if their presence in the litigation is necessary to provide complete relief between the parties, the litigation threatens to "impair or impede" their legal rights, or there is a risk that conflicting judgments will create inconsistent obligations for the opposing party in litigation.17 None of these apply to absentee infringers on the issue of validity. First, because the court can resolve patent disputes without the involvement of unrelated infringers, these additional parties are not necessary to provide complete relief.18 Second, because a prior judgment does not affect absentees' rights beyond the effect of mere negative legal precedent, a court's denial of an infringer's invalidity arguments does not "impair or impede" the rights of absentees.19 Finally, conflicting judgments do not create inconsistent obligations for the patent owner because the patent is presumed valid against all and becomes invalid against all if ever found invalid. …