IP Standing
Michael J. Burstein
Standing to sue has not traditionally been a significant issue in intellectual property litigation. In the typical case, a patent, copyright, or trademark holder files suit against another for infringement. The infringement defendant often then seeks, by way of a counterclaim, a declaratory judgment that the intellectual property is invalid. In this traditional posture, there is no question that a “case or controversy” exists between the two parties with respect to both infringement and validity of the intellectual property. But several developments are placing pressure on this model of IP litigation and raising novel questions about who has standing to sue to invalidate intellectual property. The first is the rise of interest group litigation in intellectual property, such as the challenge to patents on human genes in Association for Molecular
Pathology v. USPTO . The second is the congressional expansion of administrative mechanisms to challenge the validity of intellectual property. The new America Invents Act, like the Lanham
Act does with respect to trademarks, permits any person to challenge a patent before the PTO and then to appeal an adverse PTO decision in federal court.
These two developments significantly expand the range of persons who might challenge the validity of intellectual property in court. But the courts have struggled to articulate a coherent framework for determining who has standing to bring such suits. The courts of appeals have developed an IP-specific jurisprudence that is increasingly out of step with the general law of standing. Those courts mistakenly conflate constitutional and prudential justiciability concerns, and fail to appreciate the difference between validity and infringement actions.
This article corrects those errors. It articulates and defends a theory of standing in disputes over the validity of intellectual property. In particular, I develop a concept of the injury that arises from invalid grants of intellectual property. The presence of a patent, trademark, or copyright in a field of endeavor poses a risk to innovative, business, and investment activity.
That risk constitutes an injury in fact sufficient to confer standing when it deters industry participants from engaging in activity that might fall within the scope of the exclusive right. The risk is caused by a rights holder’s actions to acquire, hold, and maintain the intellectual property.
And the risk can be eliminated – the injury redressed – by a judicial finding that the right is invalid.
I defend this theory of standing as a matter of both doctrine and policy. I argue that it is consistent with the Supreme Court’s broader standing jurisprudence and that it does not run afoul of the policies that doctrine seeks to implement. I also demonstrate that it is sound intellectual property policy. Access to the courts must be broader than current law allows to enable more efficient screening of invalid intellectual property and, in particular, to facilitate challenges that those who would qualify under more stringent standing criteria might fail to bring, such as challenges based on patentable subject matter. To the extent that broadening standing might prove unduly vexatious to rights holders, I offer a modest solution – the limited application of prudential doctrines – and a more radical solution that would direct litigation toward the government rather than individuals. I close with several observations about what a focus on standing can tell us about the nature of intellectual property more broadly.