fringer enjoys the fruits of the patentee's inventive and developmental effort, and perhaps the higher-than-average profit that a patentee exploiting his invention alone might receive. In short, the alleged infringer is the beneficiary of a de facto compulsory license.

IV. ANALYSIS OF THE Extra Burden ON PATENTEES

A. Conflict with the Patentee's Statutory and Implied Rights

1. The presumption of validity

Section 282 of the Patent Code55 states that “[a] patent shall be presumed valid."56 This section, first enacted in 1952,57 codified the presumption of validity recognized by the courts.

The Supreme Court defined the presumption of patent validity in Radio Corp. of America v. Radio Engineering Laboratories, Inc. 58 In rejecting arguments concerning priority of invention that had been made unsuccessfully by a patent applicant in other litigation, Justice Cardozo stated:

A patent regularly issued, and even more obviously a patent issued after a hearing of all the rival claimants, is presumed to be valid until the presumption has been overcome by convincing evidence of error. The force of that presumption has found varying expression in this and other courts. . . . Through all the verbal variances, however, there runs this common core of thought and truth, that one otherwise an infringer who assails the validity of a patent fair upon its face bears a heavy burden of persuasion, and fails unless his evidence has more than a dubious preponderance. 59

Three years later, in Mumm v. Jacob E. Decker & Sons, 50 the Supreme Court held that an equity bill was sufficient even though it did not negate prior publication or use in asserting a claim for infringement because those were matters of affirmative defense.61 Chief Justice Hughes explained that the heavy burden of proving that a particular invention

55. 35 U.S.C. § 282 (1976).

56. Section 282 provides that:

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

According to the legislative history. § 282 proposed to enact the presumption of patent validity recognized by the courts but never expressed in a statute. S. REP. No. 1979, 82d Cong., 2d Sess. (1952), reprinted in 1952 U.S. CODE CONG, & AD. News 2394, 2402-03.

37. Act of July 19, 1952, ch. 950, 66 Stat. 812 (codified as amended at 35 U.S.C. § 282 (1976)).

is not novel required that every reasonable doubt be resolved against the alleged infringer.62

Prior to 1952, courts generally treated the presumption of patent validity as a procedural matter. Once a plaintiff presented a duly issued patent to the court, the alleged infringer assumed the burden of demonstrating the patent's invalidity. Following the decision in Radio Corp. of America v. Radio Engineering Laboratories, Inc., 63 courts required the alleged infringer to introduce "clear" or "convincing" evidence of invalidity to overcome the presumption.64

62. Id. (quoting Coffin v. Ogden, 85 U.S. 120, 124 (1873)). One district court read these decisions as requiring it to disregard dictum in its own circuit imposing the "beyond doubt" test on a patentee seeking a preliminary injunction, and instead to apply only a "strong probability" test. Ryan v. Ideal Toy Corp., 260 F. Supp. 828, 831-32 (C.D. Cal. 1966), overruled in Mayview Corp. v. Rodstein, 480 F.2d 714 (9th Cir. 1973). In overruling Ryan, however, the Court of Appeals for the Ninth Circuit in Mayview Corp. v. Rodstein, 480 F.2d 714, 717-18 (9th Cir. 1973), considered the presumption of validity "too slim a reed" to justify a preliminary injunction in a patent case. Id The Second Circuit, in Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 443 F.2d 867 (2d Cir. 1971), cert. denied, 412 U.S. 929 (1973), declined to follow the reasoning of Ryan on the ground that the Radio Corp. of Am. and Mumm cases did not involve preliminary injunctions. Id. at 871 n.4. The court also noted that Ryan had never been cited. Id The Second Circuit relied instead on its own rule that the presumption of validity served only to shift the burden of proof to the party asserting invalidity and to resolve reasonable doubt on the issue of validity in favor of the patentee. Id. at 867 (citing Rains v. Niaqua, Inc., 406 F.2d 275, 278, cert denied, 395 U.S. 909 (1969)). The court noted that the presumption carried no “independent evidentiary” weight and had no effect on the standard of evidence that determines the issue. Id The Rains standard is based on Lorenz v. F.W. Woolworth Co., 305 F.2d 102, 105 (2d Cir. 1962), in which the court elaborated on the test as follows:

The [statutory] presumption of validity relieves the patent holder of the burden of establishing that validity as a requisite for the successful maintenance of an infringement action, and places the burden of establishing invalidity on the alleged infringer who asserts it More than that, the most that can be said of the presumption is that it requires that reasonable doubt on the question of validity be resolved in favor of the patent holder. The statute does not require that the presumption be accorded the weight of actual evidence or that the use of the presumption should affect a decision of invalidity that would otherwise be reached with confidence. This court has recognized the unavoidable obstacles to an accurate and impartial decision that are inherent in ex parte proceedings in the patent office We cannot properly allow decisions of that office to alter the preponderance of the evidence on the question of validity. In the present case, defendant satisfied his burden of coming forward with evidence of invalidity and we have no such doubts on the question as would bring the presumption further into play. Id. at 105-06.

63. 293 U.S. 1, 7 (1934) (only clear and cogent evidence overthrows presumption of patent validity).

64 See, eg, Charles Peckat Mfg. Co. v. Jacobs, 178 F.2d 794, 801 (7th Cir. 1949) (clear and convincing evidence necessary to overcome presumption of validity), cert. denied, 339 U.S. 915 (1950), Insul-Wool Insulation Corp. v. Home Insulation, Inc., 176 F 2d 502, 505 (10th Cir. 1949) (more than dubious preponderance of evidence required to overcome presumption that patented item not anticipated by prior knowledge and use); Crosley Corp. v. Westinghouse Elec. & Mfg. Co., 152 F.2d 895, 904 (3d Cir. 1945) (clear and convincing proof required to overcome presumption of validity); F.E. Myers & Bros. Co. v. Goulds Pumps, Inc., 91 F. Supp. 475, 479 (W.D.N.Y. 1950) (clear and satisfactory proof necessary to overcome issuance of patent as prima facie evidence of validity); Cohen v. Western Auto Supply Co., 33 F. Supp. 25, 27 (N.D. Ga. 1940) (only clear and satisfactory proof overthrows presumption of validity), aff'd, 131 F.2d 109 (5th Cir. 1942).

Following the enactment of the Patent Act of 1952,65 the Supreme Court examined the presumption of validity reflected in the new statute. The Court upheld the presumption, citing its strength as a “buttress" to the licensor's case.66 Lower courts handing down decisions after 1952 continue to treat the statutory presumption of validity as requiring the alleged infringer to offer more than a mere preponderance of evidence that a patent is invalid.67 Even the Second Circuit test currently requires that reasonable doubt be resolved in favor of the patent holder, although it acknowledges that the presumption cannot affect a decision reached with confidence.68 Moreover, the Second Circuit recognizes the presumption of patent validity despite the alleged inadequacies of the ex parte process in the Patent Office.69

65. Act of July 19, 1952, ch. 590, 66 Stat. 792 (codified as amended at 35 U.S.C. §§ 1-376 (1976 & Supp. V 1981)).

66. Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969). In Blonder-Tongue Labs., Inc. v. Univer. sity of Ill. Found., 402 U.S. 313 (1972), the Court also recognized the effect of the presumption of validity. Id at 335.

Courts agree that a challenger can weaken the presumption of validity by demonstrating that the patent examiner did not review all references to the relevant prior art at the time the patent issued. See, eg, Sidewinder Marine, Inc. v. Starbuck Kustom Boats & Prods., 597 F.2d 201, 206 (10th Cir. 1979) (presumption diminished or dissipated when Patent Office failed to account for all relevant prior art): Santa Fe-Pomeroy, Inc. v. P & Z Co., 569 F.2d 1084, 1092 (9th Cir. 1978) (presumption weakened when patent examiner did not consider pertinent instances of prior art); Reynolds Metals Co. v. Acorn Bldg. Components, Inc., 548 F.2d 155, 160 (6th Cir. 1977) (same); Forbro Design Corp. v. Raytheon Co., 532 F.2d 758, 761-62 (1st Cir. 1976) (presumption weakened when Patent Office conducted incomplete examination of prior art); Parker v. Motorola, Inc., 524 F.2d 518, 521 (5th Cir. 1975) (reason for presumption dissipated by issuance of patent without review of pertinent prior art), cert. denied, 425 U.S. 975 (1976). One court has stated that proof of an incomplete examination of pertinent art requires courts to "scrutinize the patent claims in suit more closely than when the presumption is at full force." Parker v. Motorola Inc., 524 F.2d 518, 521 (5th Cir. 1975), cert. denied, 425 U.S. 975 (1976). There appears to be no reason why courts could not consider prior art on the preliminary injunction motion.

67. See, eg, Gaddis v. Calgon Corp., 506 F.2d 880, 885 (5th Cir. 1975) (clear and convincing evidence required to overcome presumption of validity); Moore v. Schultz, 491 F.2d 294, 298 (10th Cir.) (clear and convincing evidence required to defend against claim of patent infringement), cert. denied, 419 U.S. 930 (1974); Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d 866, 871 (7th Cir.) (clear and convincing proof necessary to overcome presumption of validity), cert. denied, 419 U.S. 874 (1974). National Research Dev. Corp. v. Great Lakes Carbon Corp., 410 F. Supp. 1108, 1115 (D. Del. 1975) (clear and convincing evidence required to overcome presumption of validity); Minnesota Mining & Mfg. Co. v. Berwick Indus., 393 F. Supp. 1230, 1233 (M.D. Pa. 1975) (clear and convincing evidence needed to prove patent's invalidity), aff'd, 532 F.2d 330 (3d Cir. 1976). Several other courts, however, have required only that the alleged infringer overcome the presumption of validity by a preponderance of the evidence. See, eg, Dickstein v. Seventy Corp., 522 F2d 1294, 1297 (6th Cir. 1975) (preponderance of evidence sufficient to establish invalidity), cert. denied, 423 U.S. 1055 (1976); Jack Winter, Inc. v. Koratron Co., 375 F. Supp. 1, 29-30 (N.D. Cal. 1974) (preponderance of evidence standard adequate to protect patentee from need to establish affirmative validity). This minority view appears incompatible with Radio Corp. of Am. See supra note 63 and accompanying text.

68.

Lorenz v. F.W. Woolworth Co., 305 F.2d 102, 105 (2d Cir. 1962). See Gross v. JFD Mfg. Co., 314 F.2d 196, 198 (2d Cir.) (quoting Lorenz, 305 F.2d at 105), cert. denied, 374 U.S. 832 (1963). See supra note 62.

69. The allegations of inadequacies in the ex parte process at the Patent Office derive from the view that the Patent Office is deluged with applications and, accordingly, is unable to give full consideration to the prior art references or to demand full disclosure of all relevant information in each proceeding. Judge Mansfield commented on the defects in this argument in his dissent in

Although the cases that recognize the presumption of patent validity have not involved preliminary injunctions, the Patent Code does not limit the applicability of the presumption to trials. Nevertheless, courts have ignored the presumption in the preliminary injunction context. In fact, by requiring patentees to carry the extra burden for preliminary relief, courts have invoked a negative presumption—a presumption of in validity that is inherent in the “beyond question” standard. The “beyond doubt" test, therefore, is inconsistent with the statutory presumption."1

2. Right of unabridged access to the courts

By erecting a barrier to preliminary relief for patentees, the courts are abridging the remedies available to patentees,72 thus limiting their access to the courts. A patentee's right of access to the courts, however, enjoys a high priority not reached even by the antitrust laws, except in very limited circumstances.73

Carter-Wallace, pointing out that the patent examiner has at his disposal a wealth of scientific and technical information that encompasses the prior art references in any given field. Moreover, the examiner is an expert in the field in which he issues patents. Finally, despite the fact that the proceeding is ex parte, the patent examiner acts as an adversary, not simply as an administrator, by demanding that the applicant introduce all relevant prior art and examining each reference before deciding to issue a patent. Carter-Wallace, Inc. v. Davis-Edwards Pharmacal Corp., 443 F.2d 867. 886 (2d Cir. 1971) (citation omitted) (Mansfield, J., dissenting), cert. denied, 412 U.S. 929 (1973).

70. In Carter-Wallace the Second Circuit distinguished the Radio Corp. of Am. and Mumm cases on the ground that they involved motions for preliminary relief, not full hearings on the merits. See id at 872 n.5.

71.

See supra notes 55, 65-66 and accompanying text.

72. The Patent Code authorizes actions for patent infringement, 35 U.S.C. § 281 (1976), actions for damages due to infringement, 35 U.S.C. § 284 (1976), and actions to enjoin infringement, 35 USC § 283 (1976). Section 283 provides that the courts "may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

Federal patent law has contained an injunction provision since 1819, when Congress first gave the circuit courts authority to grant injunctions in patent cases "according to the course and principles of courts of equity on such terms and conditions as the said courts may deem fit and reasonable." Act of Feb. 15, 1819, ch. 19, 3 Stat. 481 (1819), amended by Act of July 19, 1952, ch. 950, § 283, 66 Stat. 792, 812 (1952), Act of Aug. 1, 1946, ch. 726, § 1, 60 Stat. 778 (1946); Act of Feb. 18, 1922, ch. 58, § 8, 42 Stat. 389, 392 (1922); Act of March 3, 1897, ch. 391, § 6. 29 Stat. 692. 694 (1897), Act of July 8, 1870, ch. 230, § 55, 16 Stat. 198, 206 (1870); Act of July 4, 1836, ch. 357, § 17, 5 Stat. 117, 124 (1836). The Senate report concerning the 1952 revisions of the Patent Code, which established the current provision, states that § 283 merely "replace[s] present statutes on suits, with a good deal of reorganization in language to clarify the statement of the statutes. " S. REP. NO. 1979, 82d Cong., 2d Sess., reprinted in 1952 U.S. CODE CONG. & AD. News 2394, 2403. Although the statute does not address, and never has addressed, preliminary injunctions specifi cally, it is reasonable to infer that the statute covers preliminary as well as final injunctions. The principles of equity, therefore, should govern both areas. Because equitable principles have long applied a "beyond doubt" standard to the granting of injunctions in the patent area, the "bevond doubt" test arguably is consistent with the statute. On the other hand, the statutory reference to equitable principles evokes the general, typical preliminary injunction rules applicable to all kinds of cases

73 Ser Handgards, Inc. v. Ethicon, Inc., 601 F.2d 986 (9th Cir. 1979), cert. denied, 444 U S. 1025 (1980).

The Supreme Court recognized the general doctrine that underlies the right of access to the courts in Eastern Railroad Presidents Conference v. Noerr Motor Freight, Inc. 14 The Court held that the Sherman Act protected private parties' concerted efforts to injure their competitors by influencing the passage of legislation because the Act did not preclude the "mere solicitation of governmental action with respect to the passage and enforcement of laws.”75 The Court recognized that construing the antitrust laws to proscribe the challenged conduct would interfere with the right to petition guaranteed by the first amendment.76 The Court stated, however, that “a mere sham to cover what is actually nothing more than an attempt to interfere directly with the business relationships of a competitor" would justify the application of the Sherman Act." The Supreme Court later extended the protection accorded efforts to influence legislation to concerted approaches to administrative and judicial tribunals,78 reasoning that the right of access to the courts is an element of the right to petition."

In the patent litigation area, the courts have specifically recognized patentees' right of access to the courts. Patents can be asserted and litigated in good faith, free from antitrust liability, even though they are ultimately held invalid.80 The controlling principle was articulated

76. Id at 139 (such construction would deprive government of information and people of right to petition).

77. Id. at 144. See United Mine Workers v. Pennington, 381 U.S. 657, 676 (1965) (Noerr exemption extended to concerted efforts to influence government officials in executive branch). In Pennington the Supreme Court immunized joint attempts by certain larger coal mine operators and the United Mine Workers Union to destroy smaller mines by inducing the Secretary of Labor to extend minimum wage requirements to certain small companies. Id at 660-61.

78. See California Motor Transp. Co. v. Trucking Unlimited, 404 U.S. 508 (1972).

79. Id. at 510-11. The Court added, however, that the right of access to the courts does not necessarily grant immunity from antitrust regulation. Id at 513.

80. See Rex Chainbelt, Inc. v. Harco Prods., 512 F.2d 993, 1000-07 (9th Cir.) (counterclaiming infringer not entitled to damages if patentee believed patent was valid and was not misusing patent or violating antitrust laws), cert. denied, 423 U.S. 831 (1975); Bendix Corp. v. Balax, Inc., 471 F.2d 149, 159 (7th Cir. 1972) (patentee permitted to sue on assumption that patent was valid), cert. denied, 414 U.S. 819 (1973); American Potato Dryers, Inc. v. Peters, 184 F.2d 165, 173 (4th Cir. 1950) (patentee's threats of suit for patent infringement were good faith efforts to protect rights believed to be secured by patent, not unlawful attempt to extend patent monopoly), cert. denied, 340 U.S. 930 (1951); Virtue v. Creamery Package Mfg. Co., 179 F. 115, 120 (8th Cir. 1910) (patentees who had right to bring suits for infringement had right to issue warnings in good faith), aff'd, 227 U.S. 8 (1913); Koratron Co. v. Lion Uniform, Inc., 409 F. Supp. 1019, 1030 (N.D. Cal. 1976) (no damages to alleged infringer despite patentee's antitrust violation because insufficient evidence that suit initiated in bad faith and as part of plan to violate antitrust laws); Crown Mach & Tool Co. v. D & S Indus., 270 F. Supp. 271, 279 (D. Ariz. 1967) (belief that patent is valid precludes charge of bad faith or knowledge of invalidity), aff'd per curiam, 409 F.2d 1307 (9th Cir.), cert. denied, 396 U.S. 824 (1969): Morny v. Western Union Tel. Co., 40 F. Supp. 193, 201-02 (S.D.N.Y. 1940) (patentee can bring suits and give warnings based on good faith and honest belief in infringement). Cf. United States Galvanizing & Plating Equip. Corp. v. Hanson-Van Winkle-Munning Co., 104 F.2d 856, 862 (4th Cir. 1939) (unfair competition cannot be sustained if patentee believed patents were being infringed and gave notice accordingly); Alliance Sec. Co. v. De Vilbiss Mfg. Co., 41 F.2d 668,