Law, Fact, and Patent Validity

Abstract

Judges, not juries, typically decide questions of law. Likewise, it is judges who usually review the legality of actions taken by government agencies. And when judges or juries decide fact-laden issues in civil litigation, those decisions commonly receive deference on appeal. Patent law, however, does all of this precisely backwards. In patent infringement cases, juries often decide the legal question of patent validity. When a jury rules on a patent’s validity, it is reviewing the work of an administrative agency, the U.S. Patent and Trademark Office. And decisions on the case-specific, fact-specific issue of patent validity are reviewed de novo by the U.S. Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent cases.

These unusual features of patent litigation create significant inefficiencies: patent jury trials are expensive and jury decisions on technologically complex questions of patentability can be unpredictable; stringent standards of appellate review encourage prolonged litigation and result in costly post-appeal do-overs. All of this occurs because the Federal Circuit has drawn a strict, bright line between questions of law and questions of fact, leaving little room for a middle category of questions that require applying the law to the facts of a particular case. In most areas of law—but not often in patent law—those questions are called mixed questions of law and fact.

This article advances a simple thesis: that all questions of patent validity are, ultimately, mixed questions of law and fact. This approach would greatly simplify Federal Circuit doctrine, which currently treats some validity issues as questions of law, others as questions of fact, and still others as questions of law based on underlying facts. It would also clarify ambiguities in Supreme Court precedent on the law-fact distinction in patent litigation, which similarly resists using the phrase “mixed question.” In addition, treating patent validity as a mixed question would improve the procedure of patent litigation in numerous ways: patent validity would be resolved in reasoned opinions by a judge rather than in the black box of a general jury verdict, those on-the-record judicial decisions would receive appropriate deference on appeal, and judicial review of Patent Office actions would be brought further into the mainstream of administrative law.