Professor Michael J. Burstein
83 Geo Wash. L. Rev. 498
Patents have become a serious business risk. They issue from the Patent
and Trademark Office in record-breaking quantity and are aggressively enforced by
patent trolls. But many patents are likely to be invalid; and even
those which are valid are likely to be narrower than their owners claim. Firms
investing in innovation would find it desirable to clear their respective fields of
invalid or overbroad patents prior to making their investments, and there is
great social value in reducing the number of such patents. But the path to
determining the validity or scope of issued patents runs through the courts,
and in recent years the Federal Circuit has developed special standing rules for
patent challengers that allow access to the courts only when it appears that an
infringement suit is temporally or legally proximate. In this Article, I criticize
this “proximity” criterion on conceptual, doctrinal, and normative grounds
and provide a comprehensive account of standing to challenge the scope and
validity of patents. Conceptually, I argue that because patents are a form of
regulation, their effects sweep more broadly than the Federal Circuit currently
appreciates. When the risk of infringement liability deters business and
investment activities, the affected parties can bring a “quiet title” action to obtain
certainty about the validity or scope of adverse patents. I then argue as a
doctrinal matter that there is no reason to treat patent challenges differently
from other cases. Applying traditional principles of constitutional and
prudential standing broadens the range of potential plaintiffs. Finally, I justify
this result on normative grounds because the Federal Circuit’s restrictive
approach creates a misalignment between those who have incentives to challenge
patents and those who have access to the courts. Allowing challenges by a
broader range of plaintiffs will result in more socially valuable validity
litigation.
