Supreme Court: The Right to a Jury Trial on Obviousness

By Dennis Crouch

Soverain v. Newegg (on petition for writ of certiorari)

After a trial on the merits, Judge Davis (E.D.Tex.) found that the accused infringer (Newegg) had presented insufficient evidence of obviousness and refused to let that issue go to the jury. Instead, the judge awarded a directed verdict for the patentee (Soverain) that the asserted claims were not invalid as obvious. The jury went on to find Newegg liable for infringement and awarded $2.5 million in damages and also found the patent not anticipated. Following trial, the district court denied Newegg's motion for new trial on obviousness grounds. On appeal, the Federal Circuit took the almost unprecedented stance of reversing the non-obviousness decision. One reason for the rarity of a full-reversal (rather than vacatur) is largely explained by the substantial factual foundation that serves as the basis of an obviousness decision. In its opinion, the Federal Circuit couched its discussion in terms of questions of law – following the Supreme Court's lead from KSR International Co., v. Teleflex, Inc., 550 U.S. 398 (2007). In that case, the Supreme Court was able to make the legal conclusion that the asserted claims were obvious because the factual underpinnings of obviousness were seemingly not in material dispute.

In its petition for writ of certiorari, Soverain focuses on the Seventh Amendment right to a jury trial and argues that the Federal Circuit's approach effectively and improperly redefines obviousness as a pure question of law.

Question Presented:

Whether the Federal Circuit's effective redefinition of obviousness as a pure question of law, allowing it to resolve disputed factual questions in the first instance on appeal, violates the Seventh Amendment and this Court's precedent.

Here, Sovarain points to a number of factual issues that the Federal Circuit identified as questions of law, including assessing credibility of the witnesses, resolving conflict between witness testimony resolving the teaching of prior art references.

The Seventh Amendment provides that:

In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved…

The Seventh Amendment "preserve[s]" the "common law" right to jury trial and, as a consequence, presents an oddball test that roughly asks whether the cause of action at issue was (or is analogous to) a common law cause of action that was tried before an English jury back in in 1791 and then whether the particular trial decision in question is one that was (or would have been) decided by a jury. See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).

The Supreme Court has indicated that patent infringement lawsuits where the patentee is seeking damages are cases at law protected by the Seventh Amendment right to a jury trial. However, as far as I know, the Supreme Court has never held that the right to a jury particularly to an obviousness challenge or to the underlying factual conclusions that serve as the basis for an obviousness decision. 1800's cases do suggest that the factual underpinnings to the "invention" requirement are subject to a jury determination. See, for example, Battin v. Taggert, 58 U.S. (17 How.) 74 (1854); and Turrill v. Michigan S. & N. Ind. R.R. Co., 68 U.S. (1 Wall.) 491 (1864) ("[T]here was an important question of fact which should have been left to the jury, whether … any of the prior movable pressblocks … were substantially the same as the machine of the patentee."). However, the 1952 Patent Act expressly eliminated the doctrine of invention in favor of the new doctrine of obviousness. In its last foray into this area, the Supreme Court recognized in Markman that claim construction included both questions of fact and questions of law, but ultimately determined that no fundamental right to a jury trial existed for that doctrine.

An interesting inside issue here is that Judge Newman has been a strong proponent of the right to a jury trial on obviousness. See Newell Cos. v. Kenney Manufacturing Co., 864 F.2d 757 (Fed.Cir. 1988) (J. Newman dissenting from holding that ultimate question of obviousness may be decided by judge over party's objection). However, it was Newman who found Soverain's patent obvious in the present case. In the 1988 Newell case, the majority held that the patentee has no right to a jury trial on obviousness unless the factual underpinnings are in dispute.

The defendant was, of course, entitled to have a jury summoned in this case, but that right was subject to the condition, fundamental in the conduct of civil actions, that the court may withdraw a case from the jury and direct a verdict, according to the law if the evidence is uncontradicted and raises only a question of law.

Of course, Judge Nies did not walk through the weeds of history (as required by the Supreme Court) to arrive at this answer but instead only looked to the "fundamental notion" that there is no right to a jury decision regarding a question of law. See also, In re Lockwood, 50 F.3d 966 (Fed. Cir. 1995) (Nies, C.J. writing in dissent) (arguing that a patent is a public right created by Congress and "[a] constitutional jury right to determine validity of a patent does not attach to this public grant") (mandamus vacated without opinion by the Supreme Court).

Focusing back, the Soverain petition does not ask the Supreme Court to overrule Newell, but rather to merely limit courts ability to unilaterally expand take would-be factual question and then make those factual conclusions under the guise of legal determinations. Soverain writes:

The Federal Circuit's decision to take for itself questions this Court has reserved for the trier of fact has significant consequences that threaten the stability and predictability of the patent system. This decision shifts the boundary between the ultimate legal question of obviousness and the underlying factual questions. It thus paves the way for district courts and other panels to decide factual questions and undermines the role that the jury and procedural safeguards play in ensuring that hindsight bias does not skew the analysis of obviousness. By downplaying the factual component of obviousness, the Federal Circuit's decision also erodes the clear and convincing evidence standard for proving invalidity, which this Court reaffirmed in Microsoft Corp. v. i4i Limited Partnership, 131 S. Ct. 2238 (2011).

I also see this case as asking for clarification of the KSR decision in terms of what elements of the "common sense" analysis should be considered determinations rightfully before a jury. I suspect that the brief strategically avoided that issue because the Federal Circuit is a much riper target for review than a recent unanimous and popular Supreme Court opinions.

In an amicus brief supporting the petition, Professor Eileen Herlihy argues that the Federal Circuit systematically gets Seventh Amendment questions wrong and needs to be set straight by the Supreme Court. Herlihy has written two articles on how the Seventh Amendment should be applied to patent cases.


82 thoughts on “Supreme Court: The Right to a Jury Trial on Obviousness

  1. 11

    “Newegg is taking this case seriously and so should the Supreme Court. Newegg’s attempt to reargue the facts only confirms that this case should have gone to the jury.” Waxman says,It doesn’t confirm that at all. All that’s confirmed by Newegg’s statement that it believes the Federal Circuit got it right is that Newegg is capable of learning. We’re still waiting for the patent trolls to demonstrate that capability. I’m not holding my breath.

  2. 10

    Whether the Federal Circuit’s effective redefinition of obviousness as a pure question of law, allowing it to resolve disputed factual questions in the first instance on appeal, violates the Seventh Amendment and this Court’s precedent.”Effective redefinition of obviousness”? That’s an interesting way of putting it. I don’t think the general concept of “obviousness” was “redefined” by the Federal Circuit in this case. What appears to have happened instead is that the Federal Circuit recognized an instance where a claim that should have been found obvious as a matter of law (because no reasonable jury could find otherwise) was treated differently by a District Court judge who, in the Federal Circuit’s opinion, completely muffed the case.The Federal Circuit’s decision to take for itself questions this Court has reserved for the trier of fact has significant consequences that threaten the stability and predictability of the patent system.Judges take questions away from “triers of fact” all the time for those very reasons: to preserve the stability and predictability of the system. That’s one of the reasons we have judges, isn’t it? You know, those judgey people who are supposedly well-trained and familiar with the legal system.

  3. 9

    Revolking patents due to obviousness is just a coperation with criminals who want to steal the usage of the patent for nothing. If the invention was obvious then obviously the infringers would have patented it themselves first.

    1. 9.1

      Revolking patents due to obviousness is just a coperation with criminals who want to steal the usage of the patent for nothingSarcasm, right?

      1. 9.1.1

        I dont think so its what justice should be unfortunately not what it is. From the inventions ive concieved there all rare and precious and the thought of rejecting them is anti human advancement and stealing the incentive to create

  4. 8

    Ugh! Just reading thru the petition, there appears to be another problem. The Feds held the claims (e.g. 34 (35) of the ‘314 patent) invalid as obvious because of the Newegg had shown that every element of the claims was embodied in the prior art. Fed. Cir. opinion, at 14a. The Federal Circuit said the district courts explanation that Newegg had no presented a prima facie case was “unexplained.” However, anticipation was presented to the jury, and the jury found no anticipation. In refusing to overturn this verdict, the district court stated there was no Newegg testimony on “messages … product identifier;” and in fact the district court further noted that Mr. Trevor, the CompuServe CTO, testified that the prior art was not programmed to send such messages. District Court opinion at 54a.The jury verdict cannot be overturned or reexamined under the 7th Amendment. But that is exactly what the Federal Circuit does when it finds the element present in the prior art despite a jury finding that the element was not there. Another way to put this, the Federal Circuit simply erased a claim limitation from the claims, a claim limitation the lower court has found to not be proved due to lack of any positive testimony and in face of an admission that it was not there.

  5. 7

    I thought the initial court ruling was correct given the legal standard, “clear and convincing” evidence. Summary judgment of that the patent was valid was appropriate. Cf., Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986). (The “clear and convincing” legal standard must be considered on summary judgment.)

    1. 7.1

      Also, the issue here can be resolved without even considering the 7th Amendment. An appellate court cannot decide disputed issues of fact.

  6. 6

    Speaking of ignoring the Supreme Court, the Federal Circuit has also held that “patent validity” is a public right because a patent is a right to that can only be conferred by government. Patlex v. Mossinghoff. There is no right to a trial by jury for public rights. This case must be viewed as part and parcel of a long effort by many “movers and shakers” in the patent bar who are trying to remove patent validity from the jury. Newman was the author of Patlex. Ignoring the Supreme Court …? I wonder why they think they can get away with it?

    1. 6.1

      The Supreme Court is ignored all the time… the remedy is to take a case back there again. They said they’re the last arbiter, but that’s only when they’re cited and a judge finds a new case analogous. Or, imagine a scenario where Congress passes a line item veto again, but slightly different wording … it’s valid until it goes back to the Supreme Court to be struck down again.Michael Feigin,

      1. 6.1.1

        OK. So the Feds have a feel for when the SC is going to take a case. A constitutional issue gets their attention. So what do they do when on the petition for rehearing, the patent owner raises the 7th Amendment issue? The Feds finesse the issue by totally ignoring it. I suppose they thought the SC would not notice.

    2. 6.2

      As a corollary to my post, the SC needs to decide whether there is a right to a trial by jury at all, because if validity is a public right as decided by Newman in Patlex, there is no right to a trial by jury.But, cf., ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824), where Justice Story, writing for the court, held (on mandamus) that a court could not invalidate a patent without a trial by jury in summary proceedings referring the to the writ of scire facias as providing a right to a trial by jury at common law for validity. Don’t be fooled that writ filed in Chancery, as were scire facias writs, were “equitable.” The writ was filed there because that is where the records of the patent were kept and where the revocation order would be effected. When there were disputed issues of fact, the case was sent to Kings Bench where the disputed issues were tried to a jury. See, n.9 of In re Lockwood. There is a lot of other historical precedent supporting this point about the procedure in Chancery.

  7. 5

    “However, the 1952 Patent Act expressly eliminated the doctrine of invention in favor of the new doctrine of obviousness.”This is definitely how I interpreted the impact of the 1952 law, but frankly, AFAIK, there are no decisions at the federal circuit or higher that explicitly make this clear.

      1. 5.1.2

        Please take your time and read what I posted. I have been involved in litigation where defendants have cited case law that required “invention”, such as SCOTUS cases pre-1952. Finding Fed. Ct. or other equally weighty case law stating that the 1952 law overrides prior case law that required “invention” was damned near impossible.


          Bluto, Graham said that 103 codified its prior law but for the “flash of genius” which is addressed by the second sentence. Other than that, the Graham factors are the law and presumably codify the prior law. I think one can point that out, that even though there are older cases that are interesting, the courts still have to apply the Graham factors.

  8. 4

    “However, the 1952 Patent Act expressly eliminated the doctrine of invention in favor of the new doctrine ofobviousness.”I’ve heard that before…

    1. 4.1

      Certianly a very disgusting act. The new doctrine of rip offs is more like it they should at least have the decency to enforce the non usage of the rejected patent subject matter permadently if its new and useful otherwise its pure theft and breach of trust with the inventor who shared it with the world.

      1. 3.1.1

        Actually, at the Federal Circuit it was Newegg that raised the 7th amendment issue. They argued that the district court should have let the obviousness question go to the jury. Now it is Soverain arguing that the Federal Circuit’s treatment of obviousness usurps the role of the jury (even if there wasn’t one in this case).


          LB, since both parties agree that there is a right to a jury trial for validity, who is there to advocate that validity is a public right?


              Leo, seriously, is the SC going to decide there was a violation of the 7th Amendment right to a jury trial on validity when it has never decided in the first place that validity had a 7th Amd. right to jury trial? That issue went up in In re Lockwood, but was mooted when the jury trial demand was withdrawn — now why was it withdrawn? That was highly suspicious in itself.

    1. 3.2

      I don’t see how there is any concern over preservation. The patentee won a directed verdict on obviousness at the district court. It was simply defending that on appeal. The asserted 7th Am. issue arose for the first time when the Federal Circuit not only reversed that directed verdict, but then ruled that the patent is obvious as a matter of law. The first time the patentee had reason to press the 7th Am. argument was in its combined petition for rehearing (panel and en banc); Seth Waxman did just that, but the Court denied the petition.

      1. 3.2.1

        Um, if he wanted a 7th amendment trial by jury he should have demanded one prior to the CAFC issuing an opinion.


          Huh? The case was tried to a jury. Fact-finding regarding obviousness would have gone to the jury but for the directed verdict on the issue in favor of the patentee.


            “The case was tried to a jury”It was? See this is why I need a copy of the DC decision.


                From that though it sounds like the only thing that went to a jury was the question of infringement. Super odd stuff happening in that DC room.


                Fateful words that may send a case to the supremes:”I don’t think there’s sufficient testimony topresent an obviousness case to the jury. I think it would be very confusing to them.””

                1. That is an odd thing to say, isn’t it? Either there is a sufficient evidentiary basis to have the jury make obviousness findings, or there isn’t. I don’t see how potential jury confusion has any relevance to whether there should be a directed verdict on obviousness.

                2. I don’t either which is why I’d like to see a copy of the DC decision. Seems like all the blogs are reporting on the story but apparently nobody wants to tell us about the actual case itself.

                3. Many thanks, now I see what shinanigans caused all this nonsense. “With regard to obviousness, the Court granted Soverain’s motion for JMOL of no obviousness and did not send the obviousness issue to the jury. Newegg’s expert, Mr. Tittel, did not express any opinions on obviousness or conduct a proper Graham 4 analysis. Newegg contends *479 479 that it need not present expert testimony on the ultimate legal issue of obviousness and thus it was error for the Court to deny Newegg the opportunity to argue obviousness to the jury and submit the issue for a jury finding. The Federal Circuit has made clear that “[t]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373 (Fed.Cir.2008). In Proveris Scientific Corp. v. Innovasystems, Inc., the Federal Circuit upheld the district court’s decision to require defendants to present expert testimony in order to establish anticipation and obviousness. 536 F.3d 1256, 1267–68 (Fed.Cir.2008). As in Proveris, the subject matter in this case “is sufficiently complex to fall beyond the grasp of an ordinary layperson.””There’s the problem. Perhaps Newegg should have provided testimony as to a motivation or perhaps they’re not required to. Perhaps they can just let that motivation dangle without evidence and let the jury rely on common sense or not. I don’t know but it seems to me like they should have been able to go to the jury. Then, the federal circuit simply picked the case up, made the legal determination on obviousness as is proper using only the facts on the record as is completely legit. There is no problem in this case other than the DC judge failing to send this question to a jury when the patentee opposed it by filing their JMOL on obviousness. They can’t turn around and now argue that their 7th amendment rights are being trampled. Preposterous. Cert needs to be denied and the whiners need to read the DC decision before the whine instead of after.

                4. I don’t see the shenanigans. Under Graham, certain factual inquiries regarding obviousness are supposed to go to the jury. Now, it could be that the evidence is such that no matter what findings a reasonable jury could make, there is only one legally correct determination on obviousness. Here, I think the patentee sets forth multiple areas of material factual disputes incident to the obviousness determination. It looks like inappropriate appellate fact-finding on those Graham factors to me. Still, whether this warrants Supreme Court review is an entirely different question.

                5. First and foremost, you really think that Newman, of all judges, inappropriately made factual findings? Give me a break brosefus. Patent protectionist Newman would never do such a thing when not doing it would stand to help a patentee.

                6. In any event, I see no particular factual findings made inappropriately or otherwise by the CAFC, they simply noted that the evidence was such that the only reasonable facts a jury could find were xyz and those were sufficient to make a legal judgement of obviousness. What they did for the product identifier clause was mess around with the claim construction. “The distinction proposed by Dr. Shamos and advanced by Soverain is not embodied in the claims and not reflected in the claim construction. It was not disputed that the CompuServe Mall order command designated a specific product for placement in the buyer’s personal holding file, or shopping cart, as recited in claim clause [3]. See Trial Tr. 54, ECF No. 394; Trial Tr. 165 ll.5–9, ECF No. 397. Nor was it disputed that, regardless of how the order command was structured, it conveyed the requisite information to the CompuServe server computer. Id. The message set forth in the claims is not distinguished from the message in the CompuServe Mall. The term “product identifier” was not given a special meaning in the specification or through claim construction, and contains no designated format requirements. “No principle of law ․ authorize [s] ․ read[ing] into a claim an element which is not present, for the purpose of making out a case of novelty․” E.I. DuPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed.Cir.1988) (quoting McCarty v. Lehigh Valley R. Co., 160 U.S. 110, 116, 16 S.Ct. 240, 40 L.Ed. 358 (1895)).”And then mess around with a precedent as a matter of law regarding internet implementtaion:”Soverain also argues that its system is superior to the CompuServe “order command” because the system of the patents in suit is adapted to the Internet, whereas the CompuServe Mall operated on a pre-Internet network. Trial Tr. 159–162, ECF No. 397. In Muniauction this court held that “conducting previously known methods through an Internet web browser was obvious because it amounted to no more than applying the use of the Internet to existing electronic processes at a time when doing so was commonplace.” 532 F.3d at 1327. Precedent agrees with Newegg that a person of ordinary skill2 could have adapted the CompuServe order command to known browser capabilities when these capabilities became commonplace, and that it was obvious to do so. The product identifier message term does not distinguish the shopping cart claims from the prior art CompuServe Mall.”Blamo, claim construction magic and conclusions as a matter of law cited as precedent! Magic so strong that along with giving the patentee the benefit of the doubt on how a factual finding may come out for him they needn’t question what the outcome would ultimately be legally. That is to say, the record is clear enough how the factual findings must be resolved for a JMOL for the defendant. They can literally give the patentee their proposed factual findings and it will still be insufficient to find for the patentee due to the claim construction magic and the precedent re internet implementation. Then they proceeded to rely on unrebutted evidence re the shopping cart database clause:”Dr. Shamos also stated his opinion that the CompuServe Mall did not have a “shopping cart database” as in the claims in suit. Dr. Shamos agreed with Newegg’s expert Mr. Tittel that the CompuServe Mall system included “personal holding files,” and Dr. Shamos agreed that a shopping cart database “might have been a reasonable design choice,” but he opined that such database “wasn’t required” by the CompuServe Mall and that the prior art did not “necessarily disclose a database.” Trial Tr. 167 ll.12–16, ECF No. 397.”^in that part you can see that the patentee’s expert never said anything re personal holding files. The CAFC then used the claim construction to find that personal holding files are sufficient to meet the limitation. “The agreed claim construction for “shopping cart database” was “a database of stored representations of collections of products,” where “database means a collection of logically related data stored together by one or more computerized files.” Claim Construction Order 3, ECF No. 214. The use of personal holding files in the CompuServe Mall is easily within this definition. Mr. Tittel testified that the personal holding file in CompuServe Mall was “a shopping cart in a shopping cart database.” Trial Tr. 56 ll.9–10, ECF No. 394. He explained that “[t]he personal holding file itself is a shopping cart. And because CompuServe supported multiple individuals shopping in the same store at the same time, a collection of such files would be maintained, and that would meet the Court’s requirements for a shopping cart database.” Id. 56 ll.11–16. In addition, Mr. Trevor testified that the personal holding files in the CompuServe Mall system stored products “specific to each customer” and constituted an “in-memory database.” Trial Tr. 39 ll.7–10, ECF No. 396.”Then they note that a reference tells us a bit more about what the primary reference meant by personal holding files:The Ellsworth & Ellsworth book describes the storage of customer product selections in the CompuServe personal holding files. Using CompuServe 376, ECF No. 247–10 (“When you find a product that you want to buy, press O for order. Your order will be stored in a personal holding file until you leave that merchant’s store.”). The book further describes that items placed in the personal holding file are not yet purchased, and are held until the buyer types the “checkout” command. Id. (“When you are finished shopping in that store, type checkout. An electronic order form appears.”).Note the patentee doesn’t disagree with that. They then go ahead and tell about what the patentees expert proposes as an alternative to using a database (aka the personal holding files). And then they note that the patentee’s expert doesn’t ever tell us whether or not the reference actually did use his proposed alternative or whether they did in fact use personal holding files, in fact he never tells us anything about what the reference was actually doing, he simply makes a proposal for an alternative embodiment that doesn’t use a database. “When Dr. Shamos was asked how a person of skill in the art would have implemented the CompuServe online shopping system other than through a database, he suggested that CompuServe could have used a “fulfillment house,” which would “fill your order and send it to you without ever recording it in a database.” Trial Tr. 168 ll.9–14, ECF No. 397. Whether that alternative was feasible, it is not stated to be what CompuServe did. The Ellsworth & Ellsworth book states that the buyer’s product selections are “stored”—not sent “without ever recording it in a database.” The “fulfillment house” alternative proposed by Dr. Shamos does not relate to a personal holding file, and appears to have no relation to either the prior art or the patents.”Note that it is undisputed at this point that the primary reference does in fact use personal holding files. So they note that:”The district court’s conclusion that a prima facie case of obviousness was not met is not explained by the court or by Soverain, and does not accord with the record. Dr. Shamos did not provide evidence to rebut Newegg’s prima facie case that every claim element was embodied in the prior art.”Then they simply note that they feel, regardless of the expert testimony (since it doesn’t really add anything that isn’t already in the primary as elucidated by another reference) that they conclude as follows:”We conclude that the prior art CompuServe Mall system, by clear and convincing evidence, rendered obvious the “shopping cart” claims: claims 34 and 51 of the ′314 patent and claim 17 of the ′482 patent. These claims are invalid; the district court’s contrary ruling is reversed.”I’m curious to know what material factual dispute you think they inappropriately resolved above? Looks to me like they simply noted that the factual disputes were irrelevant due to the actual straight forwardly disclosed content of the reference. Re the hypertext statement system they noted the parts of testimony that do not appear to be contradicted by the patentee’s expert, and then note that Dr. Shamos presented his expert opinion on the issue of obviousness (not a fact), and Mr. Tittel testified re facts about hypertext and URLs. They then note a few more claims and some testimony by the defendant and some arguments by the plaintiff. Specifically the testimony by the defendant is Mr. tittel’s and the argument is that the compuserve system doesn’t disclose all elements. However, there is no evidence to support compuserve’s argument as Mr. tittel’s testimony does not support their argument and the patentee has no expert testimony to support their reading of the art (we are to understand). They then note that Mr. Tittel explained you can get all the info needed re a transaction from a confirmation number. Soverain argues that you might have to resort to telephone or email to get the transation info but regarding this Newegg points out that whatever distinction soverain is trying to point out is no more of a limitation on the claim than a common internet capability. Plaintiff doesn’t say anything back. The court then cites to it’s precedent on such limitations. The court then notes that [plaintiff] did not invent the interwebs or hypertext and notes plaintiff’s own experts on the subject. And again the court notes their own precedent on routine internetization. Re the last stuff, the court notes the lower court bonked up their ruling by failing to explain themselves and just tossing in the references relied on by defendant into a general statement of defendants not presenting a prima facie case along with giving a sound critique of the defense’s expert failing to give his opinion on obviousness. The court then notes the references relied on by the defense and the patentee’s argument about how an element in the prior art does not meet a certain limitation (a legal conclusion regarding what the claim actually requires in its construction btw since they acquiesce that the creditial identifier in the reference is in fact in the reference). The court then runs through what the reference undisputably says, and what the defendant’s expert testified. Note that the patentee provided no differing testimony that we are made aware of as to the facts in the references. The patentee’s expert does however testify that he feels the claims are distinguishable because the primary ref predates the interbuts. The defendant’s expert testified that the 2ndary ref meets those limitations. The court then notes that on the agreed claim construction and the teachings of Johnson and Gifford that they can find no distinction at all between the primary alone or the primary in combo with Gifford. They then cite to KSR for giggles. I’d be very interested to know what material factual findings you think they inappropriately resolved in the above because I see none. CAFC decision: link to

                7. Meh, none of that is a material factual dispute. The court expertly stepped around all those alleged disputes. Because they’re pimp like that. I simply note that the “order command” is not at issue iirc. Likewise, what the hypertext statement claims “disclose” is not at issue and neither is the closeness or not of its functionality to the compuserve reference. Re the court supposedly crediting Tittel over the patentee’s evidence, nah, they didn’t. Also the court didn’t suggest that the patentee’s expert distinguished the claims of ‘639 just on the basis of adding the interbuts. They heard his assertions about the “session identifier” and noted that there simply was no dispute at all about what the reference actually disclosed, only whether or not what was in the reference as a session identifier or not. They resolved that easily, not needing to find additional facts themselves and relying only on other facts on the record that were undisputed. As to whether or not the DC sustained their objection or not… boo hoo. The court didn’t rely on tittel’s testimony or report re all elements, they simply noted that such a thing occurred. Then they assert evidence was weighed, but never was. You can check the record. No weighing took place. They did make factual determinations, but only about things that were undisputed and/or were verbatim straight from references where the patentee suggesting any bizzarro interpretation of the reference. That’s the kind you want courts making. And indeed you want the Federal Circuit making those kinds even on appeal. Because there is no material dispute re those factual determinations. I’m pretty sure the court never concluded the prior art Compuserve computer was “easily within” the claim construction for the shopping cart database. They concluded that a personal ID watchamacalit thing was. And they did so legitimately looking to an uncontested other reference to see about the personal ID watchamacalit. As to the court looking at the scope and content of the prior art and drawing inferences to supplement the testimony, nah, they just drew the inferences, not to suplement the testimony. Then they allege that the Federal Circuit credited Tittel more than other experts. Not true. They just happened to make citations that such a thing occurred. Perhaps the Federal Circuit should have said less in their opinion so as not to cause confusion and a ruckus. They stated that the record does not support the ARGUMENTS (as opposed to testimony) and rather supports what Mr. Tittel had been saying. See, they could have just left that part about Mr. Tittel out. As to the discreting of Mr. Tittel the Feds don’t care because they’re not relying on his testimony where the actual material dispute is concerned. And then they assert that Tittel’s testimony was credited. But it never was re the disputed facts. Which is why what Newman et al did was just fine and why all the hullabaloo could have been avoided had the court simply not talked about Tittel.

      2. 3.2.2

        Hi Andrew,When I referred to preservation, what I meant to say was did the patentee raise the issue at least once before petitioning the Supreme Court. From what you have said, it was raised on a combined petition for rehearing (panel and en banc) because the 7th Amendment issue arose from the panel opinion. To me, raising it on the combined petition was an act of preservation, bringing the issue to the attention of the Federal Circuit and affording it the opportunity to address the issue before seeking redress at the next level. If the term “preservation” is a term of art exclusive to an act in the district court level (which I would agree is the normal usage), thank you for the distinction.


          Actually, it is unnecessary to seek en banc rehearing in order to preserve an issue for Supreme Court review. It is usually wise, though, because the respondent might oppose your cert petition partly on the ground that the en banc court should first be given an opportunity to address the issue before the Supreme Court does.

    2. 3.3

      West Coast, regardless of the jury trial issue, don’t you think it somewhat funny that an appellate court is deciding disputed issues of fact where below neither the court nor the jury has made findings? What appears to be going on here is that Newman and her fellows are looking at the record and making the findings themselves.However, there is another view: and that the court below in its order did find the facts, and that based on these findings, the federal circuit found the patent obvious.If that is the case, the question of whether the case should have gone to a jury becomes important. I don’t understand how one can kept from a jury a factual issue where reasonable judges will disagree on the outcome.

  9. 2

    Of course, it would not be hard to put an argument together that J. Lourie’s 101 method of invalidating patents by proclaiming that element after element has no structure is nothing but a form of 103.I think it is pretty clear that Lourie’s 101 method is a form of 103,and Lourie performs his method completely in his head with no evidence. (Fabricate a concept that seems old and well-known that captures the functionality of the claim and proclaim it abstract. Then, recite each element, imagine if a science fiction story could have a computer performing the function, if so, then proclaim no structure to the element.)I wonder if Lourie understands that he has just proclaimed that everything that he does in his entire life has just been proclaimed unpatentable. I doubt it.

  10. 1

    I missed something. There was no jury trial on obviousness, so why is Soverain arguing for the right to a jury trial on obviousness? Is Soverain asking for SCOTUS to overrule the CAFC and send the case back to the district court for a jury trial? Or is it arguing that the trial judge has discretion to send the case to the jury or not, that discretion isn’t reviewable, and therefore SCOTUS should overrule the CAFC and let the jury’s findings on novelty and damages stand?

    1. 1.1

      Thanks Bob – Soverain argues that the CAFC invalidated its patent without letting a jury decide that issue and, as a result, violated the 7th Amendment.

      1. 1.1.1

        Thanks, DC, but I’m still not clear about the result Soverain is aiming for – to have the original findings of non-invalidity, infringement and damages stand (i.e. completely toss the CAFC’s decision)? Or to have the case sent back to Texas for a jury trial on the issue of obviousness (i.e. partially toss the CAFC’s decision)?Also, has there been, or is there, some sort of post-grant activity going with the patent(s) at the PTO?


          “Thanks, DC, but I’m still not clear about the result Soverain is aiming for”I’m a little unclear on that too. But I’m guessing that they want them to send it back to the DC to get a trial by jury.


            There would be no reason to send it back to the district court. If the Supreme Court took the case and agreed with the petitioners then it would be saying that the Federal Circuit should have analyzed the district court’s summary judgment using a different standard (i.e., with much more deference). At most the case would go back to the Federal Circuit for consideration under the right standard – I think.


              Well that seems weird. Why would them arguing they have a right to a trial by a jury and they were denied such at the DC simply make the CAFC substitute their own conclusion of law for that of the DC under the proper standard? That can’t be right LB. At no point would the trial by jury have happened which is what they’re moaning about. I’d frankly be more concerned that the USSC would simply find the issue wasn’t raised at the CAFC appeal.


                See my comments above, 6. Soverain is “moaning” that the Federal Circuit stepped in and decided questions that are supposed to be left to the fact-finder (a jury), and that this action violates the 7th amendment. In this particular case, the jury didn’t actually get the question because the district court judge said that there wasn’t enough evidence to even get there. Soverain is perfectly happy with that, but they’re not happy with the Federal Circuit re-evaluating the obviousness question all over again.

                1. Are the facts below contested, or is it a question of the sufficiency of the facts below?Does that make a difference?

                2. Well, that’s what is interesting about this case. It’s not a simple matter of the district court saying “there isn’t enough evidence, therefore the challenger failed to establish a prima facie case of obviousness” and the Federal Circuit saying “yes there is, so now go let a jury decide.” Instead, the Federal Circuit said, “not only is there enough evidence, but we’ll go ahead and decide that the defendant proved non-obviousness.” That strikes me as a bit unusual.

                3. Ahhhh, gotcha. And that’s what I thought they’d been saying. I do agree that it is odd. But it seems to me like the result sought on appeal should be the letting a jury decide.

                4. Thanks Leopold,But the question remains: are the facts below contested, or is it a question of the sufficiency of the facts below.The way that I (currently) understand the situation, the facts themselves are unchanged and the Court of Appeals Federal Circuit only used facts already of record (and did not go finding new facts). The end result of applying any law to the given facts then easily becomes a question of law. Yes, it seems very odd here that the lower court swung so decisively in applying the law to the set of facts in one direction, and the appeal court swing so decisively in the opposite direction, but if the facts below have not been changed, then the legal question (and the impact to FRCP that I implicated above) are very much what is being challenged – regardless of any particular party’s posturing.

                5. “The way that I (currently) understand the situation, the facts themselves are unchanged and the Court of Appeals Federal Circuit only used facts already of record (and did not go finding new facts).”I think that’s exactly what Newegg (the nefarious infringer) would say.You and Newegg could be right.

                6. Hah – perhaps. But the jury found that there was infringement. It just so happened that the patent was invalid (at least so far).However, I’m happy to see that you’re making good use of your copy of the “Infringer’s Handbook.”

                7. anon, everyone assumes there is a right to a trial by jury for validity. That is not clear as the Federal Circuit has held that patent validity is a public right.

                8. I see. That seems particularly nonsensical if that’s what they’re moaning about. You can’t have the one and then not be happy with the later it doesn’t seem to me. The whole case is odd. How on earth can there not be “enough evidence” to “get” to the jury? If you don’t mind my asking. I mean, either you have some references etc. or you don’t right? Maybe I just need a copy of the DC’s decision. I’m just super confused on the procedure that led to this.

                9. “The whole case is odd. How on earth can there not be “enough evidence” to “get” to the jury?”It’s certainly possible, but you are right that it shouldn’t happen. I think your question is where the Federal Circuit got hung up, as well. They basically said: “Gee whiz, it looks to us like the defendant had evidence to support every element of the prima facie case. In fact, we think the defendant PROVED obviousness, with clear and convincing evidence.”

                10. They basically said: “Gee whiz, it looks to us like the defendant had evidence to support every element of the prima facie case. In fact, we think the defendant PROVED obviousness, with clear and convincing evidence.”And, as a general proposition, there is nothing in the Constitution or the patent statute that prevents them from doing that. In fact, where the record warrants that result, the CAFC is required to overturn the District Court and declare the claims obvious as a matter of law. Soverain disagrees with the final result but that’s only because a huge error (seemingly made in their favor) occurred at the District Court level.

                11. Clear and convincing is the legal standard. The SC has held in cases involving defamation that the courts should assess whether the evidence is clear and convincing before it goes to the jury.Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).

                12. o. Mmmmm, yeah super odd again. How can you know if it’s clear and convincing if you haven’t even made the factual finding yet?

                13. 6, the SC in Liberty Lobby held that a court should prevent an issue from going to the jury even when there are disputed facts if the facts nevertheless would not be sufficient to meet the clear and convincing standard.

                14. I hear what you’re saying, but it seems like its clarity and convincingness are exactly what the jury should be handling. But if that’s what the supremes say fine.


                I have little doubt that the issue is preserved. At the Federal Circuit, Soverain was defending the district court’s summary judgment, and almost certainly argued that the Federal Circuit couldn’t reach the factual questions underlying the obviousness analysis and that the Federal Circuit should treat the district court’s summary judgment with a high degree of deference. That would be enough to preserve the 7th Amendment question, in my opinion, even if they never used the number 7 in their papers.


          “Also, has there been, or is there, some sort of post-grant activity going with the patent(s) at the PTO?”Yes. The three patents have each been reexamined (two of them twice), over essentially the same references, with all asserted claims confirmed. See FN3 in the cert petition for the cites.

      2. 1.1.2

        Is the wording here a bit off?Soverain had a jury trial below.Is the premise here that a jury trial is guaranteed throughout all levels of the judicial process? I’ve never heard of a jury trial at the Supreme Court…


          There was no jury trial on obviousness. Rather, the district court decided that, as a matter of law, the claims were not proven obvious. On appeal, Soverain supported the lower court decision while Newegg argued that a new trial should be ordered on obviousness grounds. On appeal, the Federal Circuit went even further by rejecting the lower court decision and providing its own conclusion that the claims had been proven obvious. The petition for writ of certiorari argues that the Federal Circuit was not properly empowered to make its determination because an obviousness finding (arguably based upon disputed facts as in this situation) requires a jury determination.


            “the district court decided that, as a matter of law, the claims were not proven obvious. “Did the court treat that as a pure question of law, or did the court actually decide that there was insufficient evidence for a fact-finder (the jury) to conclude that the claims were obvious and that summary judgment (as a matter of law) was appropriate?Does it make any difference for the posture of this case?


              My understanding is that the district court found that defendants had failed to present sufficient evidence to support a finding of obviousness.


            Thanks,But the issue statement still is not clear.The statement of “There was no jury trial on obviousness” seems off from “and refused to let that issue go to the jury” which indicates that a trial with jury was initiated below.Is this really a question of procedure then, or reframed, is the issue such that ANY summary judgement (or judgment as a matter of law notwithstanding a jury verdict – FRCP 50) can be allowed? If the judge below – based on well established evidence and civil procedure rules – does not let something go to a jury, the trial with jury still has happened, no?Add: “(arguably based upon disputed facts as in this situation) ” – that’s just it – I haven’t seen actual facts disputed, but moreso the legal significance of the facts of record.


              “The statement of “There was no jury trial on obviousness” seems off from “and refused to let that issue go to the jury” which indicates that a trial with jury was initiated below.”There was a trial by jury, but only on infringement. The jury found infringement, but that verdict was rendered moot by the Federal Circuit’s holding that the patents were invalid.


          No, the premise is something like the opposite of that- i.e., that an appellate court can’t step in for the jury and decide factual questions. Soverain argues that this is what happened when the Federal Circuit reversed the district court’s summary judgment on the obviousness question.


            Which brings me back to my original question: how does Soverain expect SCOTUS to resolve this? Does it want SCOTUS to say, “The CAFC was constitutionally barred from substituting its judgment on obviousness for that of a jury, and therefore we remand to the CAFC with an order for the CAFC to reconsider and if necessary to remand to the district court with instructions to send the obviousness question to a jury”‘; or can SCOTUS even go so far as to say, “The CAFC was constitutionally barred from substituting its judgment on obviousness for that of a jury, and therefore we vacate the CAFC’s ruling and let the district court’s ruling on obviousness stand”?


              Bob, the Supreme Court needs to decide whether there is a right to trial by jury at all.Do you think that patent validity is a public right as held by the Federal Circuit in Patlex? If so, there is no right to a trial by jury.

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