The End User's Predicament: User Standing in Patent Litigation

47 Pages Posted: 9 Jan 2017

Date Written: January 6, 2017


The traditional parties in patent litigation are technologically savvy competitors. Yet recently, patent owners have begun hauling end users — including farmers, small cafés, and podcasters — into patent disputes. This Article shows that end users, unlike competitors, cannot take proactive measures to protect their interests in defending against patent enforcement. The standing doctrine impedes end users’ access to federal court to challenge a patent’s validity in a declaratory judgment action. At the same time, standing and timing requirements prevent end users from taking advantage of the new procedures created under the America Invents Act to challenge patents at the U.S. Patent and Trademark Office (“PTO”).

This Article argues that although standing requirements impose a significant obstacle for competitors as well as end users, the unique characteristics of end users place them in a particular predicament. First, the U.S. Court of Appeals for the Federal Circuit requires that plaintiffs filing a declaratory judgment suit show that they undertook “meaningful preparations” to use the patented technology. Yet since users “use” but do not “make” technology, they often do not engage in complex preparations. Second, the Federal Circuit requires plaintiffs to point to enforcement acts by the patentee, known as the reasonable apprehension test. Users, however, are usually part of a large group, and those users who have been sued or threatened with suit are not necessarily the ones with the motivation and resources to file declaratory judgment suits. Third, patent enforcement against other similarly situated parties is more likely to chill a user’s engagement with a patented technology than a competitor’s engagement because users usually lack the technological sophistication to assess the validity of a patent threat. Fourth, the standing doctrine does not protect users because it assumes competitors will defend them. Yet the involuntary appearance of thousands of users on the defense side of patent litigation underscores the fallacy of this assumption. Fifth, end users typically enter patent conflicts late in the life of the patent. By that point, most procedures at the PTO — the forum to challenge patents outside federal court — are unavailable to them.

This Article concludes that although end users’ current standing status is unclear, end users should qualify for standing under the Federal Circuit’s currently diluted reasonable apprehension test. This Article also concludes that end users can satisfy the meaningful preparations test because they do not need complex preparations, which fulfills the immediacy criteria of the test.

Keywords: patent, standing, procedure, end user, PAE, PTO procedures, declaratory judgment

Suggested Citation

Bernstein, Gaia, The End User's Predicament: User Standing in Patent Litigation (January 6, 2017). Boston University Law Review, Vol. 96, No. 1929, 2016, Seton Hall Public Law Research Paper, Available at SSRN:

Gaia Bernstein (Contact Author)

Seton Hall Law School ( email )

One Newark Center
Newark, NJ 07102
United States

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