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N.Y.U. JOURNAL OF INTELL. PROP. & ENT. LAW
[Vol. 2:73
validity, a private party challenging a patent on grounds of misjoinder or nonjoinder bears the clear and convincing burden of persuasion. 158 In enacting the 1952 Patent Act, Congress chose not to specify the standard of proof for parties alleging patent invalidity for reasons unknown. In the recent case Microsoft v. i4i, the Supreme Court inferred from Congress’s silence that the legislature intended to incorporate (part of) the judicially invented standard of proof into the statute. 159 Indeed, the Court asserted that it “must” presume— apparently as a canon of statutory construction—that Congress intended to continue the status quo unless the statute otherwise specifies.160 It is doubtful that, whenever Congress fails to comment on a matter within the scope of a statute, Congress thereby automatically endorses all case law not expressly disclaimed by the statute. 161 However, the fact that Congress has overlooked numerous opportunities to change the highly visible standard of proof suggests that the clear and convincing standard generally aligns with congressional intent in this instance. Doug Lichtman and Mark Lemley have argued against the strong presumption of validity, except with respect to a narrow category of patent challenges, on policy grounds.162 Although the courts have never articulated a fully developed policy basis for the strong presumption, Lichtman and Lemley infer the two most likely justifications as being deference to the PTO’s expertise and a desire to strengthen patent rights in order to encourage commercialization.163 But Lichtman and Lemley point out that the PTO does not, probably with current funding cannot, and in any event lacks sufficient motivation to, invest the resources necessary to render an authoritative determination on all questions of patentability. 164 The absence of third-party information in most cases further limits
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Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004); Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1472 (Fed. Cir. 1997). 159 Microsoft Corp. v. i4i Ltd. P’ship, 131 S.Ct. 2238, 98 U.S.P.Q.2d 1857, 1862 (2011). 160 Id., 98 U.S.P.Q.2d at 1863. 161 Only Justice Thomas declined to read Section 282 as implicitly incorporating the judicially developed standard of proof. Id. at 1868 (Thomas, J., concurring). 162 Doug Lichtman & Mark A. Lemley, Rethinking Patent Law’s Presumption of Validity, 60 STAN. L. REV. 45 (2007). 163 Id. at 52-53. 164 Id. at 53-55. Lemley and Sampat’s empirical research indicates that the PTO effectively weeds out a small but significant percentage of applications. See generally Mark A. Lemley & Bhaven Sampat, Is the Patent Office a Rubber Stamp?, 58 EMORY L.J. 181 (2008) (evaluating the PTO’s patent rejection rate and finding it at 15%-20%).