by Dennis Crouch
Olaf Sööt Design’s pending petition for certiorari centers on the age-old division between issues-of-fact and issues-of-law. The U.S. Constitution generally requires due process, and particularly protects litigants’ rights to a jury trial in common law cases. One quirk–the right to a trial by jury does not cover issues-of-law, and only extends to some issues-of-fact.
This bifurcated system results in an odd dynamic in patent law — regularly seen with regard to infringement and claim construction:
- Patent infringement is an issue-of-fact tried by a jury under the Seventh Amendment. Typically, a jury is asked to decide whether the evidence shows that the defendant is performing the claimed invention.
- Claim construction is treated as a question of law (or mixed question of fact and law), decided by a judge. In contemporary patent litigation, a judge will typically be asked to decide whether the legal scope of the claims extend to cover the defendant’s actions.
With this setup, the whole case can be decided at either stage, but claim construction typically comes first and so often steals-the-show. One problem though, is the potential of unduly undermining the Constitutionally protected jury system.
One case pending before the Supreme Court focuses-in on these issues: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (Petition). Sööt asks the following question:
In Markman v. Westview Instruments, Inc., 517 US 370 (1996), this Court held that the meaning of terms in a patent “claim” stands as a question of law and must be construed by the court. Under the Seventh Amendment, if requested by the patent owner, the jury must make the factual determination as to whether the defendant infringed the patent in light of the court’s claim construction. Consistent with the Seventh Amendment, the Markman decision leaves to the jury all factual determinations beyond the court’s construction of the claim. The question presented by this petition for writ of
Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question, previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.
The Supreme Court will consider the petition next week.