Law Review Student Note Topics for 2009

Dear Law Review Editors: Please send me a note ( to let me know about patent law focused articles that you publish in your journal so that I can highlight them on Patently-O.

Student Note Topics: Here are some suggestions for patent law focused law review topics for 2009-10 that I would like to see for my own edification. Please send me a note if you choose one of these.

  • Injunctive Relief Pending Appeal: Proposing a clear jurisprudence for allowing stays of injunctive relief pending appeal in patent cases. See Microsoft v. i4i. Examine problems associated with the proposed stay-as-a-right found in earlier proposed patent legislation.
  • Using Patents Applications (and Invention Rights) as Collateral: Following Sky Technologies v. SAP AG, does a patent application work as a security interest? (can a security interest be perfected and foreclosed upon for rights to inventions that are not yet the subject of a patent application). [See final paragraph of my Sky Tech discussion]
  • Federal Circuit Timing: A statistical analysis of the timing of CAFC decisions (Including a comparison of the various judges and a discussion of how the various circuits reign-in slow judges).
  • Patent Term Extensions: A statistical analysis of patent term extensions granted by the PTO. (
  • International Patents: Cardiac Pacemaker (en Banc): Understanding the meaning of “component;” Here, I think that there should be special consideration for whether there is a need for a treaty arrangement to accommodate protection of inventions that easily operate cross-border.
  • Inequitable Conduct: The impact of Exergen Corp. v. Wal-Mart Stores, CVS, and SAAT, ___ F.3d ___, 2009 U.S. App. LEXIS 17311 (Fed. Cir. 2009). This paper would include a discussion of how procedural changes may often have more impact than do changes in the underlying substantive law. It may also discuss the tradition of appellate courts in dictating procedure apart from substance.
  • Inequitable Conduct allegations based on examiner interviews. See
  • Tell the story of the Pod-Ners case:
  • Explaining the dying breed of Jepson claims:
  • Obviousness as a Matter of Law: A recent petition to the Supreme Court challenged the procedure of allowing a lay jury (as opposed to a judge) to judge the ultimate question of whether a patent is obvious. See Medela AG v. Kinetic Concepts, Inc. (on petition for a writ of certiorari 2009). Several important papers could stem from this issue. Notably, there is a need for a more academic analysis of the historic circuit split (rather than the advocacy seen in the brief). One paper could work to resolve the conflict with the pre-federal circuit decisions. Another paper could focus on the best procedure for resolving mixed questions of fact and law.
  • Declaratory Judgment Jurisdiction: In 2007, the Supreme Court decided the Medimmune case in a way that makes it easier for potential patent infringers to file declaratory judgment lawsuits of non-infringement or invalidity. It would be interesting to see whether this has had an impact on patent filings.

5 thoughts on “Law Review Student Note Topics for 2009

  1. 5

    Cass, I have not previously briefed or written an article specifically addressing whether a patentee enjoys a constitutional right to a jury trial (although I agree it could make for a good law review note, and suspect that other articles addressing the issue are out there). But in preparing my treatise the Annotated Patent Digest, I did collect material analyzing a patentee’s right to a jury trial and the general Supreme Court jurisprudence addressing the right to jury trials. In creating the comment, I simply pulled the pertinent cases from the various sections of the APD that addressed the issue. E.g., § 18:7 [Obviousness] May be Decided by a Jury; § 39:135 Supreme Court Cases Addressing Right to Jury Trial; § 39:142 Right to Jury Trial Exists when Patentee Seeks Money Damages for Infringement; § 39:144 Patentee Does Not or Cannot Seek Money Damages; and § 39:148 Right to Jury Trial on Issue of Willfulness of Infringement.

    Seems to me that the analysis hinges on the historical question of whether patent infringement actions could only be brought in equity, as you suggest, or could be tried at law. I don’t know the answer to this question. If you are right in the historical premise that patent infringement actions could only be brought in a court of equity, your conclusion seems very sound to me. But in the vacated opinion of In re Lockwood, 50 F.3d 966 (Fed. Cir.), vacated on other grounds, 515 U.S. 1182 (1995), the Federal Circuit stated its view that in 18th Century England a patentee had the option of bringing a suit at law to recover money damages for patent infringement OR it could bring a suit in equity to seek only injunctive relief. The Lockwood court stated:

    [T]he Seventh Amendment preserves to Lockwood [the patentee] the same right to a jury trial on the factual questions relating to validity in a declaratory judgment action that he would have enjoyed had the validity of his patents been adjudicated in a suit for patent infringement according to eighteenth-century English practice.

    In eighteenth century England . . . [I]f the patentee sought only damages, the patentee brought an action at law; in such a case, the defense of invalidity was tried to the jury, assuming that a jury had been demanded.

    However, if the patentee facing past acts of infringement nevertheless sought only to enjoin future acts of infringement, the patentee could only bring a suit in equity, and the defense of invalidity ordinarily would be tried to the bench. Under both English and American practice, then, it was the patentee who decided in the first instance whether a jury trial on the factual questions relating to validity would be compelled.

    We cannot, consistent with the seventh Amendment, deny Lockwood [the patentee] that same choice merely because the validity of his patents comes before the court in a declaratory judgment action for invalidity rather than as a defense in an infringement suit.

    50 F.3d at 976 (emphasis and citations omitted). [While the Supreme Court vacated the Lockwood decision without an opinion on grounds of mootness, the Federal Circuit subsequently expressed its approval of the Lockwood analysis of the right to a jury trial and has followed it in Tegal Corp. v. Tokyo Electron America, Inc., 257 F.3d 1331, 1340-41 (Fed. Cir. 2001) (“We see no reason to depart from the framework provided in Lockwood[.]” – affirming judgment that accused infringer was not entitled to a jury trial on its invalidity affirmative defenses after the patentee waived its right to a jury trial, dropped its claim for damages, and only sought injunctive relief).] See also, APD § 39:145 Patent-Related Declaratory Judgment Claims (discussing case law addressing right to a jury trial for patent-related declaratory judgment claims).

    Hopefully, one of Dennis’ students will take up this issue and answer the question about historical practice in a student note.

  2. 4

    Bob, your balanced analysis is greatly appreciated. I hope you had most of it on hand from a brief or article rather than turning that much research around so quickly. (Wouldn’t make a bad topic for an article, though, would it?)

    Thanks for acknowledging the distinction I made between the permissive (and revocable) statutory grant of a jury trial in patent cases and a constitutionally mandated right to the same. Thanks also for acknowledging that many of the cases you cite can be read to rely upon the patent statute, rather than being constitutional cases at all.

    I’d note in passing that a plausible argument can be made that patent cases were not merely *analogous to* cases heard in equity but in fact *were* heard in equity, so under Granfinanciera the Seventh Amendment would not apply at all to patent cases.

    I’d also note the dramatic shift in Supreme Court philosophy regarding original intent and the plain language of the Constitution (e.g., the limited applicability of the ex post facto clause), as well as the Court’s apparent rediscovery of constitutional limitations on obviousness (and presumably other patent matters). It is always awkward to rely on centuries-old cases when you have a Court so ready to discard precedent as the current one (one need only ask when Congress repealed the anti-trust laws to recognize the hypocrisy of complaints against so-called “liberal judicial activism” — but I digress).

    Thanks again for some sound commentary.

  3. 3

    Interesting analysis on the constitutional right to a jury trial for patent infringement. The analysis has logical appeal, but, as noted below, there are several contrary statements and opinions from the Supreme Court that may cast some doubt on the conclusion.

    Markman v. Westview Instruments, Inc., 517 U.S. 370, 377 (1996) (“there is no dispute that [patent] infringement cases today must be tried to a jury, as their predecessors were more than two centuries ago”)

    Battin v. Taggert, 58 U.S. 74, 85, (1854) (district court erred in taking question on infringement and validity away from jury and stating: “It was the right of the jury to determine from the facts in the case, whether the specifications, including the claim, were so precise as to enable any person skilled in the structure of machines, to make the one described. This the statute requires, and of this the jury are to judge. The jury are also to judge of the novelty of the invention, and whether the renewed patent is for the same invention as the original patent; and they are to determine whether the invention has been abandoned to the public. There are other questions of fact which come within the province of a jury; such as the identity of the machine used by the defendant with that of the plaintiff’s, or whether they have been constructed and act on the same principle.”)

    Eleaser Carver v. Hyde, 41 U.S. 513, 520 (1842) (question of whether an element in an accused device was the same as the element in the patent “was a question of fact for the jury” – affirming jury verdict of noninfringement)

    Seymour v. McCormick, 57 U.S. 480, 488-89 (1853) (discussing the Patent Act of 1836 and how it permitted juries to find the amount of actual damages, but not enhanced damages for willful infringement; also noting that the first Patent Act, the Patent Act of 1790, had juries determining the amount of damages for infringement since it “made the infringer of a patent liable to ‘forfeit and pay to the patentee such damages as should be assessed by a jury, and, moreover, to forfeit to the person aggrieved the infringing machine.’”)

    Adams v. Bellaire Stamping Co., 141 U.S. 539, 542 (1891) (ruling that all the “important questions” as to whether the claimed invention showed patentable invention or merely required mechanical skill, i.e., was the invention obvious, were properly submitted to the jury)

    Tucker v. Spalding, 80 U.S. 453, 455 (1871) (ruling district court erred in not giving to the jury a prior art reference the accused infringer asserted invalidated the patent for obviousness – “And though the principles by which the question must be decided may be very largely propositions of law, it still remains the essential nature of the jury trial that while the court may on this mixed question of law and fact, lay down to the jury the law which should govern them, so as to guide them to the truth, and guard them against error, and may, if they disregard instructions, set aside their verdict, the ultimate response to the question must come from the jury.”)

    Its possible that the foregoing cases all base their conclusion that the law provides a right to a jury trial on statutory law, rather than an analysis under the Seventh Amendment. But even if so, the Seventh Amendment analysis looks to the causes of action that existed as of 1791 both at common law and by statute. Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 41-42 (1989)(“Although ‘the thrust of the Amendment was to preserve the right to jury trial as it existed in 1791,’ the Seventh Amendment also applies to actions brought to enforce statutory rights that are analogous to common-law causes of action ordinarily decided in English law courts in the late 18th century, as opposed to those customarily heard by courts of equity or admiralty.”). Given that the Patent Act of 1790 provided a right to a jury trial when money damages were sought, it seems that under Granfinanciera, that statutory right would make the right to a jury trial for patent infringement fall under the Seventh Amendment. Hence, its not surprising that in today’s jurisprudence it seems will accepted that a right to a jury trial exists when the patentee seeks money damages for infringement. See generally, Robert A. Matthews, Jr., Annotated Patent Digest § 39:142 Right to Jury Trial Exists when Patentee Seeks Money Damages for Infringement. See also APD § 39:144 Patentee Does Not or Cannot Seek Money Damages (collecting cases holding that when patentee does not or cannot seek money damages a right to a jury trial normally does not exist).

    Nonetheless, there are some old musings from the Supreme Court showing that some Justices over the years have harbored the notion that juries should not determine questions of patent validity. For example, Justice Douglas expressed his view that the ultimate determination of patent validity has constitutional underpinnings which demand “reasoned elaboration” requiring the issue to be treated as a question of law for a court and not a question of fact for the jury.
    He stated:

    The Court of Appeals reversed [the trial judge’s setting aside of the verdict finding the patent valid], holding that the patent carries a presumption of validity overcome only by clear and convincing evidence, and that obviousness is a factual question on which the trial judge should not override the jury. With all respect, that holding permits the standard of patentability to be diluted and haphazardly applied.
    . . . . [T]he standard of patentability is at root a constitutional standard. In determining patent validity under the statute, a court simultaneously holds the statute true to its constitutional source. . . .
    In every patent infringement suit a court is called upon to oversee obedience to the constitutional standard. It cannot be delegated to the jury on the supposition that only a question of fact is involved. Factual assessments are, of course, part of the process of judging validity. The prior art must be ascertained and the unique features of the patentee’s contribution identified. But the determination whether the patentee’s distinctive contribution is of such a character as to justify the 17-year monopoly is one that demands reasoned elaboration and, therefore, treatment as a question of law. Findings that identify the unique features of the patented device and explain why they advance the art are essential, to permit appellate review to insure that constitutional limitations have not been exceeded. The responsibility belongs to the courts. It will not do to leave such matters to unarticulated resolution by the jury.
    Nor can the courts rely upon the Patent Office always to apply the standard faithfully. The proceedings on an application are not adversary. No representative of the public appears to contest unwarranted claims; the examiner alone must face the persistent applicant. A disappointed applicant may appeal an adverse administrative decision, but no corresponding check is available to overturn an erroneous finding of patentability. It does not impugn the good faith of examiners to observe that errors on the side of patentability slip through such a process. Litigation of patent validity in infringement suits presents the only opportunity for judicial correction of the errors of generosity.

    Shultz v. Moore, 419 U.S. 930, 931-32 (1974) (dissenting from denial of petition of certiorari where appellate court reversed a JNOV finding invalidity on the basis that the obviousness was a factual question).

    Justice Douglas’s view may find some support in other Supreme Court cases suggesting that courts characterize certain issues as “questions of law” to permit greater judicial review of substantive issues having importance considered “too great to entrust them finally to the judgment of the trier of fact.” Bose Corp. v. Consumers Union of United States, Inc., 466 U.S. 485, 501 n.17 (1984).
    Should the current members of the court hold to Justice Douglas’s view the cert. petition in Medela could have an interesting outcome.

  4. 2

    As much as I, too, strongly favor the role of juries in patent cases, I must respectfully point out a few facts “patent drafter” may have overlooked.

    Without regard as to how the current view of so-called mixed questions of law and fact has evolved, and without regard to “tradition,” the Seventh Amendment is irrelevant to the appropriate role (if any) of juries in patent cases. The Seventh Amendment preserves the (then existing) right to a jury in suits only at common law. At the time of adoption of the Seventh Amendment, however, patent suits sounded in equity, not the common law.

    Plainly, there is no basis for asserting a constitutional right to a trial by jury of any fact in a patent case. It never was part our democratic tradition, and fact-finding in patent cases could be handed at any time to our district court judges through either an Act of Congress or the rule-promulgating authority of the Supreme Court.

    IM-NS-HO, the problems regarding the role of juries arise from the simple fact that Congress has failed to provide guidance on what that role should be (guidance it has failed to to provide in patent law as well as so many other areas of law), such that the courts are left to create an increasingly complex web of (often conflicting) arcane rules of procedure.

    I’m not in favor of handing everything in patent cases over to judges, far from it. But I readily agree with “patent drafter” that attorneys need to do a better job in educating both judges and juries in patent cases. Unfortunately, that requires clients who are willing to spend the extra money needed for us to do a better job.

    I suppose we could go back to general verdicts, rather than special verdicts, in juried patent cases — “tradition,” and all that. Might even make appellate review easier and faster, too. But I don’t favor that. So I have no solutions to offer.

  5. 1

    Patent validity, like tort liability or patent infringement, is a question of fact founded in principles of law. Such questions traditionally have been determined by juries (see, e.g., the Seventh Amendment to the U.S. Constitution). Because jurors usually lack deep understanding of the legal principles underlying their factual findings, counsel propose jury instructions to better frame the factual question.

    The whole idea of removing obviousness from a jury inquiry seems like a mere procedural question, but it really, probably inadvertently, cuts at the knees of the jury system that is an essential element of our democratic tradition.

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