Law and Fact in Patent Litigation: Form versus Function

Abstract

This comment, based on one published in 27 IDEA 153 (1987), addresses a topic of continuing interest. Featuring Bose Corp v. Consumers Union, 466 U.S. 485 (1984) and Dennison Mfg. v. Panduit Corp., 475 U.S. 809 (1986), it urges reconsideration of the standards of review applied in patent litigation. In particular it argues that the characterization of criteria for patent validity as posing issues of fact or law is inconsistent and flies in the face of process traditions.

Apparently to justify more intense review than otherwise appropriate, the Federal Circuit singles out nonobviousness determinations. The paper doesn't quarrel with the intensity of review, but argues that denominating what seem to be issues of fact as ones of law isn't helpful. It therefore argues for application of a doctrine that allows expanded review (function) without unduly confusing terminology (form). The paper also argues for further analysis of all factors affecting patent validity - some treated as ordinary issues of fact.

Keywords: law-fact dichotomy, standards of review, patent validity, constitutional fact