Does the Presumption of Validity Matter? An Experimental Assessment

Jeremy W. Bock*

We don’t know exactly how often the presumption makes a difference to a case outcome.[1]

In patent law, the presumption of validity[2] exerts a profound influence on litigation strategy.[3] It has attracted criticism—not only from academics but also from at least one federal judge[5]—for making weak patents difficult to invalidate. When mentioned to the jury, the presumption is perceived by litigants as exerting a powerful pro-patentee influence that overshadows its nominal procedural function of assigning the burden of proving invalidity.[6]

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* © 2015 Jeremy W. Bock.   Assistant Professor of Law, University of Memphis Cecil C. Humphreys School of Law. The author thanks Bernard Chao, John Golden, Richard Gruner, Parisa Jorjani, Mark Lemley, Su Li, Evelyn Mak, Shawn Miller, Lisa Larrimore Ouellette, Efthimios Parasidis, Greg Reilly, David Schwartz, Ryan Vacca, Michelle Yang, his colleagues at Memphis Law, and the participants at the June 2013 Workshop on Research Design for Causal Inference at Northwestern University School of Law, the Fifth Annual Legal Scholars Conference at Arizona State University College of Law, PatCon4 at University of San Diego School of Law, the 2014 SEALS Conference, and the 14th Annual Intellectual Property Scholars Conference at Berkeley Law for helpful discussions and feedback. The author thanks the University of Memphis Cecil C. Humphreys School of Law for supporting this research. The survey experiment reported in this article was conducted pursuant to a protocol approved by the Institutional Review Board at the University of Memphis.

[1].   Doug Lichtman & Mark A. Lemley, Rethinking Patent Law’s Presumption of Validity, 60 Stan. L. Rev. 45, 70 (2007).

[2].   35 U.S.C. § 282(a) (2012) (“A patent shall be presumed valid.”).

[3].   For example, accused infringers may prioritize noninfringement defenses over invalidity defenses because of the heightened burden associated with proving invalidity. See, e.g., Roger Allan Ford, Patent Invalidity Versus Noninfringement, 99 Cornell L. Rev. 71, 118 (2013) (observing that “the elevated burden of proof that applies to invalidity, . . . which stems from the statutory presumption that a patent is valid unless proved otherwise, makes it relatively more difficult to win an invalidity defense than a noninfringement defense even if the two defenses would otherwise have similar merits”).

[4].   See, e.g., F. Scott Kieff, The Case for Preferring Patent-Validity Litigation Over Second-Window Review and Gold-Plated Patents: When One Size Doesn’t Fit All, How Could Two Do the Trick?, 157 U. Pa. L. Rev. 1937, 1955 (2009) (“[A] weakening of the presumption of validity would be particularly good for the ‘Davids’ of the system who face off against the ‘Goliaths.’ It directly protects them from the in terrorem effect of junk patents . . . .”); Lichtman & Lemley, supra note 1, at 47 (“[T]he law makes [patent] issuance mistakes hard to reverse. The culprit is a legal doctrine known as the presumption of validity.”).

[5].   See William Alsup, Memo to Congress, A District Judge’s Proposal for Patent Reform: Revisiting the Clear and Convincing Standard and Calibrating Deference to the Strength of the Examination, 24 Berkeley Tech. L.J. 1647, 1648 (2009) (“A central reason for the litigation boom is the presumption of validity and the ‘clear and convincing’ standard. . . . This presumption of validity applies equally to all patents—even those that are almost certainly invalid. This is a huge advantage for the patent holder—and it is often an unfair advantage . . . .”).

[6].   See, e.g., William G. Childs, The Implementation of FDA Determinations in Litigation: Why Do We Defer to the PTO but Not to the FDA?, 5 Minn. Intell. Prop. Rev. 155, 172 (2004) (“The psychological impact of this presumption of validity is difficult to measure. However, it is not insignificant that a jury is instructed by the one nominally neutral person in the courtroom that it must begin deliberations with the belief that the patent is valid.” (emphasis omitted)).