Megan Keane · June 2009
77 GEO. WASH. L. REV. 1101 (2009)
Because patents are increasingly valuable and the number of patents issued increases every year, oversight by the U.S. Patent and Trademark Office (“PTO”) and the judiciary must be streamlined to ensure the patent holders’ rights are protected. After a patent has been issued by the PTO, there are two ways in which the patent’s validity may be subsequently challenged. Patent reexamination is one way and consists of a statutory procedure by which patents issued by the PTO are reexamined for validity. In addition, defendants in patent infringement suits can challenge the validity of a patent by raising patent invalidity as an affirmative defense. Because the reexamination statutes allow any party to challenge patent validity, defendants to infringement actions often collaterally attack validity by raising that issue with the PTO. Consequently, patents are often reexamined by the PTO when the patent holder is already involved in contentious litigation. The end result is that patent reexamination proceedings and patent infringement litigation have the potential of taking place concurrently and resulting in different outcomes.
The Federal Circuit, the governing court on issues of patent law, has yet to develop a clear policy on how patent reexamination and litigation should coexist. As a result, a few recent cases have been resolved by reversing jury verdicts based on PTO reexamination decisions. This application of patent reexamination decisions by the Federal Circuit is thus unconstitutional because the procedure violates litigants’ Seventh Amendment right to a jury trial. Further, as patent litigation and reexamination proceedings increase, the need for a clear, constitutional policy persists.
This Essay proceeds in five parts. The first and second discuss the interplay between judicial review and patent reexamination. The third part moves to a discussion of the history and implications of the Seventh Amendment. The fourth part is a discussion of relevant evidentiary standards and standards of review. Finally, this Essay concludes by discussing the conflict between the Seventh Amendment and patent reexamination, explaining how the procedures of the PTO and the Federal Circuit infringe litigants’ rights to a jury trial.
