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The role of the jury in patent cases has been a subject ofinterest and debate for many years. Since the early 1990s, an increasing numberof patent litigants have demanded that their cases be decided by juries. SeeHerbert F. Schwartz, Pat. L. & Prac., 130 (2d ed. 1996). Many of these litigants have been motivated by the view thatjuries more often than not find patent claims infringed and valid. SeeKimberly A. Moore, “Judges, Juries, And Patent Cases — An Empirical PeekInside The Black Box,” 99 Mich. L. Rev. 365 (2000). This perceived”pro-patent” bias has brought the role of juries in patent cases intosharp focus. Some commentators and litigators believe that patent cases arejust too complex to be decided by juries. Others maintain that awell-instructed jury, educated on the underlying technology by the parties andtheir experts, is eminently qualified to decide patent related issues. Whatever the respective merits of these positions, one thingis clear — the U.S. Court of Appeals for the Federal Circuit, the court vestedwith exclusive jurisdiction over patent appeals, has significantly diminishedthe jury’s role and influence in patent trials. This diminution of the jury’srole has manifested itself in a number of ways. For example, the Federal Circuit has held that the meaningand scope of patent claims must be decided as a matter of law by judges. TheFederal Circuit also has applied certain legal standards so strictly thatunderlying fact issues often never reach the jury. Finally, the court has heldthat certain issues — such as inequitable conduct, or infringement andvalidity in cases that involve no damages at law — do not give rise to a rightto trial by jury. The bottom line is that many significant questions may beresolved by the court, even if the parties have demanded a trial by jury. One of the most important changes in the patent law tookplace in 1995 when the Federal Circuit held in Markman v. WestviewInstruments Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d, 517U.S. 370 (1996), that the scope and meaning of patent claims is a matter of lawto be determined exclusively by the court: “[I]n a case tried to a jury,the court has the power and obligation to construe as a matter of law themeaning of language used in the patent claim.” This landmark decision has had two visible and pronouncedeffects on the role of juries. First, the jury no longer has any say indetermining the meaning and scope of patent claims at trial. That question isnow answered exclusively by the court. (Before Markman, case law heldthat a disputed claim term involved underlying factual questions and claimconstruction could be determined by the jury with appropriate instruction bythe court. See Palumbo v. Don-Joy Co., 762 F.2d 969 (Fed. Cir. 1985).)Second, although infringement of properly construed patent claims remains aquestion of fact for the jury, it is often not a contested issue at trial. Inmany instances, the facts concerning the structure or operation of theallegedly infringing device are undisputed. Thus, once the claims are construedas a matter of law, the issue of infringement is often clear-cut and can bedisposed of by the court on summary judgment. Even if appealed, the trial court’s infringement holding isseldom remanded for factual findings. Often, the Federal Circuit either affirmsthe district court’s judgment ( see, e.g., Kustom Signals Inc. v.Applied Concepts Inc., 264 F.3d (Fed. Cir. 2001)) or reverses the districtcourt’s claim construction as a matter of law and reaches an alternativeholding based on its own de novo claim construction and the undisputedunderlying facts. See Lockheed Martin Corp. v. Space Systems/Loral Inc.,249 F.3d 1314 (Fed. Cir. 2001). As a result, the jury is often effectivelyremoved from the equation. VALIDITY OF PATENT CLAIMS The application of Markmanhas also diminished thejury’s role in determining questions relating to the validity of patent claims.For example, the patent statute requires that for a patent to be valid, anapplicant must provide claims “particularly pointing out and distinctlyclaiming the subject matter which the applicant regards as his invention.”35 U.S.C. 112 � 2 (2000). That is, the claims must be “definite.” Adetermination of whether a claim is definite is directly intertwined with the court’sduty to construe that claim. It is the court that is charged with determiningwhether one skilled in the art would understand what invention has been claimedonce it has properly construed the claim terms. See Atmel Corp. v.Information Storage Devices Inc., 198 F.3d 1374 (Fed. Cir. 1999). Thus, thequestion of definiteness is also determined by the court. See Union PacificResources Co. v. Chesapeake Energy Corp., 236 F.3d 684 (Fed. Cir. 2001). Markmanhas directly affected the determination ofother validity issues as well. Whether patent claims are supported by anadequate written description of the invention is a question of law based onunderlying factual determinations. See Vas-Cath Inc. v. Mahurkar, 935F.2d 1555 (Fed. Cir. 1991). The court’s construction of the patent claimsdirectly bears on this question. If the claims are construed so broadly thatthey encompass far more than the inventor described in the specification as itsinvention, the court may be able to decide as a matter of law on summary judgmentthat the claims are invalid, and the underlying fact issues may never reach thejury. See Turbocare v. General Electric Co., 264 F.3d 1111 (Fed. Cir.2001). Other validity issues, such as whether claims are”anticipated” by prior art have become increasingly susceptible todetermination by the court rather than the jury. A patent claim is anticipatedif each of its elements is present in a single prior art reference or device. Petersv. Active Manufacturing Co., 129 U.S. 530 (1889). Because there may be fewfactual disputes over the structure and operation of the prior art at issue,anticipation (like questions of infringement) can often be disposed of by thecourt without submitting any fact issues to the jury — e.g., Dow Chem. Co.v. Astro-Valcour Inc., 267 F.3d 1334 (Fed. Cir. 2001); and Brown v. 3M,265 F.3d 1349 (Fed. Cir. 2001). In sum, the determination of the meaning and scope of patentclaims as a matter of law by the court often moots or diminishes the role ofthe jury in deciding questions of validity. The Federal Circuit has also recently curtailed the jury’straditional role in deciding fact issues in patent cases by strictly applyingcertain legal standards. This trend is most pronounced in the context ofinfringement under the doctrine of equivalents. Under the framework of HiltonDavis Chemical Co. v. Warner-Jenkinson Co., 520 U.S. 17 (1997), afterconcluding that an accused product does not infringe the claim literallybecause it does not contain one or more limitations of that claim, the jury maystill find that the accused product infringes the claim under the doctrine ofequivalents if the difference between the accused product and that limitationis “insubstantial.” The question of whether a change is”insubstantial” is inherently factual in nature and, therefore, istypically decided by the jury. Recently, the Federal Circuit has strictlyapplied two established legal limitations on the doctrine of equivalents. The Federal Circuit’s en banc decision in Festo Corp. v.Shoketsu Kinzoku Kogyo Kabushiki Co., 34 F.3d 558 (Fed. Cir. 2000) (cert.granted), illustrates its restriction of the doctrine of equivalents’ scope andpower and the resulting elimination of the jury from determinations ofequivalence. In Festo, the court held that any amendment made duringprosecution of a patent application for a “substantial reason related topatentability” creates an estoppel that precludes the patentee as a matterof law from entitlement to any range of equivalents for the amended claim element. Id. at 568-69. The Federal Circuit has applied Festo‘s holdingunequivocally and uniformly as illustrated by recent cases including J&MCorp. v. Harley-Davidson Inc., 269 F.3d (Fed. Cir. 2001); Mycogen PlantScience Inc. v. Monsanto Co., 252 F.3d 1306 (Fed. Cir. 2001) (reh’gdenied); and Ecolab Inc. v. Envirochem Inc., 264 F.3d 1358 (Fed. Cir.2001). It has found non-equivalence in 11 published cases on this legal basisalone. Because the application of Festo‘s rule of law precludes inquiryinto the underlying facts relating to equivalence — i.e., insubstantialdifference and similarity of function, way and result achieved between theaccused product and the claimed structure — the jury may never be presentedwith those questions. The Federal Circuit has also limited the jury’s role indetermining fact questions under the doctrine of equivalents through strictapplication of the so-called all-elements rule. Under this rule, “[i]f atheory of equivalence would vitiate a claim limitation … there can be no infringementunder the doctrine of equivalents as a matter of law.” Tronzo v. BiometInc., 156 F.3d 1154, 1160 (Fed. Cir. 1998). Since Warner-Jenkinson,the Federal Circuit has strictly applied this “all elements rule” ina variety of cases, including Bell Atlantic Network Services Inc. v. CovadCommunications Group Inc., 262 F.3d 1250 (Fed. Cir. 2001); TelemacCellular Corp. v. Topp Telecom Inc., 247 F.3d 1316 (Fed. Cir. 2001); and MooreU.S.A. Inc. v. Standard Register Co., 229 F.3d 1225 (Fed. Cir. 2000). When the “all elements rule” is strictly appliedto preclude a finding of equivalence as a matter of law, the”insubstantial difference” test of Warner-Jenkinsonhasquestionable vitality. Certain limitations, particularly those that define thephysical relationship or specialized function of claimed structures, may onlybe entitled to cover accused products with structures having the same physicalrelationships and functions as those of the claimed invention — i.e., thoseproducts that literally infringe the claims. See, e.g., TelemacCellular Corp., 247 F.3d 1316; Augustine Med. Inc. v. Gaymar IndustriesInc., 181 F.3d 1291 (Fed. Cir. 1999); Sage Products Inc. v. DevonIndustries, 126 F.3d. 1420 (Fed. Cir. 1997). The Federal Circuit has not hesitated to remove factualquestions concerning equivalence from the province of the jury on this basis,often noting in passing that “no reasonable jury” could have foundequivalence on the underlying facts. Augustine Med., 181 F.3d at 1304.Thus, the jury’s traditional role in determining as a matter of fact whetherthere are “insubstantial differences” between the accused product andthe claimed invention has been largely mooted. That question is often neverreached. EQUITABLE ISSUES The Federal Circuit has also held that in cases in which alitigant’s remedy is purely equitable in nature, there is no right to trial byjury. This is true even when numerous questions of fact must be determined forthe court to dispense the equitable remedy. For example, the Federal Circuithas held that the defense of inequitable conduct, being entirely equitable innature, is not an issue for the jury. See Paragon Podiatry Lab. Inc. v. KLMLabs. Inc., 984 F.2d 1182, 1190 (Fed. Cir. 1993). Thus, such underlyingfact issues as intent, which are traditionally jury questions, are decided bythe court. Even if the court elects to employ the jury in an advisory capacityon the issue of inequitable conduct, it need not adopt its factual findings. Hebertv. Lisle Corp., 99 F.3d 1109, 1114 (Fed. Cir. 1996). Even in certain cases in which infringement and patentvalidity are at issue, there may be no right to trial by jury. The FederalCircuit recently held in Tegal Corp. v. Tokyo Electron America Inc., 257F.3d 1331 (Fed. Cir. 2001), that there is no such right when a patenteerequests only injunctive relief and no monetary damages. In Tegal, theFederal Circuit applied the Supreme Court’s test for determining if a right totrial by jury attaches to a particular case — whether the case is more similarto cases that would have been tried in courts of law or courts of equity. SeeTull v. U.S., 481 U.S. 412, 417 (1987). The court noted that in 18th century England, if a patenteesought an injunction, the patentee went to a court of equity. Thus, if the onlyremedy sought is injunctive, there is no right to a trial by jury. Based onthis reasoning, the court held there was no right to a trial by jury for adefendant asserting the affirmative defense of patent invalidity despite thefact that the patentee dropped its request for damages only six days beforetrial to pursue solely injunctive relief. One district court has already applied Tegal’s reasoning todeny a party’s request for trial by jury. In Glaxo Group Ltd. v. Apotex Inc.,2001 U.S. Dist. Lexis 16873 (N.D. Ill. Oct. 10, 2001), the court found that theoverall nature of the action — an infringement case under 35 U.S.C.271(e)(2)(A) based on a defendant’s filing of an abbreviated new drugapplication for an unmarketed product — was equitable. Using this finding, thecourt denied the defendant’s request to have its counterclaim of invaliditydecided by a jury. Following Tegal, the court focused on the remedysought — i.e., an injunction but no damages — and found no reason todistinguish between an affirmative defense and a counterclaim. Although the demand for trial by jury in patent casescontinues to grow, the likelihood that a jury will actually decide acase-dispositive issue is shrinking. Recent Federal Circuit decisions haveincreased the number of issues that are determined as pure questions of law.Other Federal Circuit cases have strictly applied certain doctrines so thatunderlying factual issues never reach the jury. Further, the Federal Circuithas held there is no right to a jury when only equitable relief is sought. As aresult, it is increasingly the court rather than the jury that decides theoutcome of patent litigations. Gerald J. Flattmann Jr. is a partner, and Krista M.Rycroft is an associate, at New York’s Fish & Neave.

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