The Right of Trial by Jury in Patent Infringement Cases
Daniel, B. D., The Review of Litigation
Two recent decisions of the United States Court of Appeals for the Federal Circuit have held that a jury trial is not required to resolve particular issues in patent infringement litigation.1 First, the Federal Circuit held in Agfa Corp. v. Creo Products, Inc. that a jury trial is not required to determine whether "inequitable conduct" defeats the enforceability of an issued patent.2 Second, the court held in Paice LLC v. Toyota Motor Corp. that a jury trial is not required to determine the royalty rate for post-verdict patent infringement.3
On the surface, each of these holdings seems highly debatable. Although the defense based on a patent applicant's conduct before the Patent Office is labeled "inequitable conduct," the factual issues raised by the defense involve deceptive conduct and the deceptive intent of a patent applicant.4 At least at first glance, the issues involving deceit would appear to be appropriate for jury resolution under the Seventh Amendment to the Constitution.5 Similarly, the assessment of monetary damages in the form of a royalty would appear to be a quintessential jury issue.6
Prompted by these two decisions, this Article reassesses the extent to which jury trials are required, if properly demanded,7 for the issues that commonly arise in patent infringement lawsuits. As the analytical premise for this assessment, the Article will briefly review fundamental principles established by the Supreme Court for determining whether a jury trial is required to resolve particular claims or issues. Then, the Article will analyze the jury trial question with respect to selected issues routinely confronted in patent infringement litigation. For each subject of this issue-by-issue analysis, this Article examines the legislative history of the pertinent provisions of the current Patent Act and Supreme Court precedent on point before reviewing the applicable Federal Circuit authority. For each issue addressed, the Article will conclude by closely analyzing all sources of authority in order to assess whether a jury trial should be required for that issue.
II. FUNDAMENTAL PRINCIPLES CONCERNING THE RIGHT TO TRIAL BY JURY
The federal courts have exclusive jurisdiction over patent infringement cases.8 In federal court, the Seventh Amendment to the Constitution provides that "[i]n Suits at common law, ... the right of trial by jury shall be preserved."9 Therefore, the use of juries in patent infringement cases is governed by the Seventh Amendment.
Of course, the Constitution itself affirmatively empowers the U.S. Congress to enact patent laws.10 It should be beyond serious dispute that Congress may independently require jury trials for issues in patent infringement cases, even if the Seventh Amendment would not.11 The settled nature of this proposition is confirmed by the text of Rule 38(a) of the Federal Rules of Civil Procedure, which requires that federal judges preserve "inviolate" any "right of trial by jury as declared by the Seventh Amendment" or "as provided by a federal statute."12
A. General Seventh Amendment Principles
As the early Supreme Court held, and as the Supreme Court has repeatedly reaffirmed in recent decisions, the phrase "Suits at common law" in the Seventh Amendment refers to "suits in which legal rights [are] to be ascertained and determined, in contradistinction to those where equitable rights alone [are] recognized, and equitable remedies [are] administered."13 The Seventh Amendment is therefore "construed to embrace all suits which are not of equity and admiralty jurisdiction, whatever may be the peculiar form which they may assume to settle legal rights."14
On the other hand, the Seventh Amendment does not preserve every detail about jury trials in common law cases predating its passage.15 "The Amendment was designed to preserve the basic institution of jury trial in only its most fundamental elements."16 The jury is required, therefore, only "as necessary to preserve the 'substance of the common-law right of trial by jury. …