In re Technology Licensing Corporation (Fed. Cir. 2005).
On petition for writ of mandamus, the Court of Appeals for the Federal Circuit considered the right of trial by jury attaches to a declaratory judgment for patent invalidity.
Relying on the case of Lockwood, TLC argued that a patentee has a right to a jury trial in any declaratory judgment action to determine patent validity — regardless of whether damages are sought in a separate cause of action. The CAFC disagreed, finding that:
[I]f TLC had filed a standard infringement action as plaintiff and had requested only an injunction, neither TLC nor Gennum would have been entitled to a jury trial, regardless of whether Gennum raised invalidity as a defense or in a counterclaim. By choosing the equity route for its infringement action, TLC would have ensured that neither claim would be triable to a jury. For that reason, the inverted lawsuit, with Gennum as plaintiff and TLC as defendant, seeking only equitable relief on its claim of infringement, confers no jury trial right on TLC.
Mandamus denied. Judge Newman dissented, arguing that patent validity is a question of law that raises the right to a trial by jury.