University of Chicago Law SchoolChicago UnboundPublic Law and Legal Theory Working PapersWorking Papers2013Patent Invalidity versus NoninfringementRoger FordFollow this and additional works at:public_law_and_legal_theoryPart of theLaw CommonsChicago Unbound includes both works in progress and final versions of articles. Please be aware thata more recent version of this article may be available on Chicago Unbound, SSRN or elsewhere.This Working Paper is brought to you for free and open access by the Working Papers at Chicago Unbound. It has been accepted for inclusion in PublicLaw and Legal Theory Working Papers by an authorized administrator of Chicago Unbound. For more information, please contact[email protected].Recommended CitationRoger Ford, "Patent Invalidity versus Noninfringement" (University of Chicago Public Law & Legal Theory Working Paper No. 454,2013).
Electronic copy available at: CHICAGOCOASE-SANDOR INSTITUTE FOR LAW AND ECONOMICS WORKING PAPER NO.670 (2D SERIES)PUBLIC LAW AND LEGAL THEORY WORKING PAPER NO.454 PATENT INVALIDITY VERSUS NONINFRINGEMENTRoger Allan Ford THE LAW SCHOOL THE UNIVERSITY OF CHICAGODecember 2013 This paper can be downloaded without charge at the Institute for Law and Economics Working Paper Series: and at the Public Law and Legal Theory Working Paper Series: and The Social Science Research Network Electronic Paper Collection.
Electronic copy available at: PATENT INVALIDITY VERSUSNONINFRINGEMENTRoger Allan Ford†Most patent scholars agree that the Patent and Trademark Officegrants too many invalid patents and that these patents impose a significanttax upon industry and technological innovation. Although policymakersand scholars have proposed various ways to address this problem, includingbetter ex ante review by patent examiners and various forms of ex post ad-ministrative review, the use of district courts to invalidate patents remains acore defense against bad patents.This Article analyzes a previously unidentified impediment to the use ofdistrict courts to invalidate patents. Nearly every patent lawsuit rises or fallson one of two defenses: invalidity or noninfringement. Invalidity and non-infringement are distinct legal and factual issues that scholars usually ana-lyze separately. Yet as this Article explains, the two issues are closely related,creating a series of trade-offs and asymmetries that lead many patent defend-ants to focus on noninfringement instead of invalidity. The net effect ofthese trade-offs and asymmetries is that patent defendants often have an in-centive to argue noninfringement instead of invalidity, leading courts to in-validate fewer patents than they should. This exacerbates the problem ofinvalid patents, making it harder for individuals and companies to createnew products and services.