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High Court Cert Petition Argues Judges Should Decide Patent Validity
The American Lawyer
August 18, 2009
Fried Frank's James Dabney
Image: Fried Frank
A petition for certiorari (pdf) filed last week at the U.S. Supreme Court ought to get the IP bar buzzing. It challenges an aspect of patent litigation that's become almost automatic: trial before a lay jury. Here's how Fried, Frank, Harris, Shriver & Jacobson partner James Dabney, who represents the petitioner, puts the question to the high court: "Whether a person accused of patent infringement has a right to [an] independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the 'non-obvious subject matter' condition of patentability."
Trial by jury, the petition notes, wasn't always the near-certainty it is now in patent infringement cases. A chart on page 26 of Dabney's filing shows that in the early 1980s, when the U.S. Court of Appeals for the Federal Circuit was created, less than 20 percent of patent cases were tried to a jury. By 2000, the share of jury trials had skyrocketed to over 70 percent.
The move away from bench trials is no accident, according to Dabney. His petition blames the Federal Circuit, which, he says, has established the principle that an alleged patent infringer has no right to independent judicial review on the question of a patent's obviousness. But Dabney argues that the Federal Circuit's holdings "are difficult or impossible to reconcile with this Court's precedents on obviousness." Dabney cites, in particular, the Supreme Court's 2007 decision in KSR International v. Teleflex -- which he just happens to have won. In that case, the Supreme Court held that judges have the authority, under certain circumstances, to determine a patent's validity. But judges haven't had too many chances to use that authority because so many cases go to juries, which are called upon to vote yes or no on questions of obviousness.
Dabney urges the Supreme Court to expand judicial power to determine obviousness in the interests of economic policy. He cites economics professor Adam Jaffe of Brandeis University, who has argued that "having decisions made by people who cannot really understand the evidence increases the uncertainty of the outcome. The combination of this uncertainty with the legal presumption of validity ... is a big reason why infringers often settle rather than fight."
In the underlying case, Fried Frank represents Medela, which was accused by Kinetic and Wake Forest University Health Sciences of infringing two patents relating to wound treatment. Medela claimed the patents were invalid due to obviousness, but a jury rejected its counterclaims. The Federal Circuit affirmed the jury verdict, despite Medela's arguments that the district court judge erred not making its own "legal determination of obviousness."
We called Kinetic's counsel, Donald Dunner of Finnegan, Henderson, Farabow, Garrett & Dunner, but didn't hear back. Dabney declined our request for comment.
This article first appeared on The Am Law Litigation Daily blog on AmericanLawyer.com.
