Deference Overcome: Courts’ Invalidation of Patent Claims as Anticipated by Art Considered by the PTO

¶1 Courts accord varying degrees of deference to administrative decisions. In the context of patent law, an issued patent is entitled to a statutory presumption of validity that places the burden on the challenger to prove by clear and convincing evidence that the patent’s claims are invalid. The presumption of validity is based, at least in part, on the patent examiner’s consideration of references, including earlier patents and publications, in determining whether the claimed invention is new. ¶2 To what extent should a court’s degree of deference depend on whether the challenger relies on references that were not considered by the Patent Office before it granted the patent? Should the fact that a challenger relies only on references already considered by the patent examiner be held against him? This article is a partial exploration of those questions through analysis of cases in which courts invalidated patent claims based solely on prior art that had already been considered by the examiner. ¶3 To be patented, an invention should be new, useful, and nonobvious.1 Accordingly, when applying for a patent, the applicant has a duty to disclose to the United States Patent and Trademark Office (“PTO”) any information pertinent to these issues.2 Such information, often referred to as “prior art,” may be in many forms, including United States patents and published patent applications, patents and publications from other countries, technical publications, and product brochures.3 The prior art disclosed by the applicant is considered by the patent examiner, who also conducts her own searches to discover additional prior art pertinent to patentability.4 The examiner then determines the patentability of the invention, as specifically defined by the patent application’s claims,5 relative to the prior art submitted by the applicant and found in the examiner’s own searches. If the patent application is allowed by the examiner and issued as a patent, it is entitled to a presumption of validity6 that is based, at least in part, on the presumed expertise of the PTO in issuing the patent.7