Robert P. Merges
Volume 76, Issue 1, 161-242
Private law governs interactions among private parties. A large body of private law theory holds that private law is aimed at corrective justice: doing justice as between the two parties to a private interaction (the private law dyad). This in contrast to public law, the law of state-citizen interactions, whose purpose is usually said to be the pursuit of society-wide fairness, often understood as distributive justice. Torts, contracts and property are the three classic areas of private law in common law jurisdictions. A sizeable literature now concerns itself with classic private law topics as they apply to intellectual property (IP). Articles, and now a fine monograph, argue that patent law’s strict liability standard is out of touch with modern tort theory, which emphasizes that private law liability must be grounded in fault.
In this Article I enter that discussion with a defense of the current liability regime in patent law, which is a distinct form of “strict liability.” But before wading into those waters, it is first necessary to understand which aspects of patent law belong in the domain of private law in the first place. It is not as simple as saying patents are property and therefore private law applies. This is so because patents, when brought to bear against another private party in an infringement suit, are subject to intensive and rigorous validity review. The business of patent validity— quintessentially in place to protect society, and thus within the public law domain— precedes the true private law part of patent enforcement. The “shallow vesting” of the initial patent grant must be solidified and brought to fruition with the deep, but strictly in personam, vesting of a patent that survives validity review. Between the parties to the private law dyad, plaintiff and defendant, all cloud on the patent owner’s title is removed and the patent enforcement action enters its “private law moment.” The patent at this point forms a solid entitlement capable of serving as a baseline for applying corrective justice as between the parties.
After delineating the private law moment in patent law, I turn to the question of strict liability. After explaining some details about the adequacy of patent notice—in response to a well-known critique of “notice failure” in patent law—I defend strict liability on private law grounds, using two (or two and a half) variants of private law theory, Strict Corrective Justice (“SCJ”) and “Relational Justice,” with points drawn from a third approach to private law called Civil Recourse Theory. The first defense emphasizes parallels between patent infringement and cases on “per se negligence.” It highlights the expansiveness of “fault” in cases where weak warnings are given to highly trained experts held to a very high duty of care (e.g., technology-intensive product sellers who adopt possibly patented technologies). The second defense of strict liability applies the more expansive Relational Justice theory of private law. I explain how the strong norm against misappropriation evident in communities of technological innovators, coupled with an understanding of how difficult it can be to prove direct copying of new technical ideas, points to strict liability in this setting. In keeping with the more holistic emphasis of Relational Justice, I also argue that a negligence rule in patent law would harm the vitality of technical communities. It would cut down on the volume of community-wide technical communication and interaction, as a strategy to avoid infringement liability.