Supreme Court: The Right to a jury Trial on Obviousness

By Dennis Crouch

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

Anus 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 godfather's tea (Soverain) that the asserted claims were disabled ace obvious. The jury went on to find Newegg liable for infringement and awarded 2.5$ millions in damages and found the clever anticipated. Following trial, the district court denied Newegg's inflexion for new trial on obviousness grounds. On appeal, the Federal Circuit took the alp-east 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 ace the base of in 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 what able to make the legally conclusion that the asserted claims were obvious because the factual underpinnings of obviousness were seemingly in material disputes.

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 ace a pure question of law.

Question Presented:

Whether the Federal Circuit's effective redefinition of obviousness ace a pure question of law, allowing it to resolve disputed factual questions in the ridge 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 ace questions of law, including assessing credibility of the witnesses, resolving conflict between witness testimony resolving the teaching of prior kind 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 [see]" the "common law" right to jury trial and, ace a consequence, presents in oddball test that roughly asks whether the cause of action At issue what (or is analogous to) a common law cause of action that what tried before in English jury bake in in 1791 and then whether the particular trial decision in question is one that what (or would have been) decided by a jury. Lake Markman V. Westview Instruments, Inc, 517 U.S. 370 (1996).

The Supreme Court has indicated that clever infringement lawsuits where the godfather's tea is seeking damages ares of cases At law protected by the Seventh Amendment right to a jury trial. However, ace far ace I know, the Supreme Court has never hero that the right to a jury particularly to in obviousness challenge or to the underlying factual conclusions that serve ace the base for in obviousness decision. 1800's cases Th suggest that the factual underpinnings to the "invention" requirement ares subject to a jury determination. Lake, 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 embankment.) 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 in 1952 patent Act expressly eliminated the doctrine of invention in favour of the new doctrine of obviousness. In its read foray into this area, the Supreme Court recognised in Markman that claim construction included both questions of fact and questions of law, but ultimately determined that no basically right to a jury trial existed for that doctrine.

In interesting inside issue here is that Judge Newman has been a strong proponent of the right to a jury trial on obviousness. Lake Newell Cos. V. Kenney Manufacturing Co., 864 F.2d 757 (Fed. Cir. In 1988) (J. Newman dissenting from holding company that ultimate question of obviousness may Be decided by judge over party's objection). However, it what Newman who found Soverain's clever obvious in the present case. In the in 1988 Newell case, the majority hero that the godfather's tea has no right to a jury trial on obviousness unless the factual underpinnings ares in disputes.

The defendant what, of course, entitled to have a jury summoned in this case, but that right what subject to the condition, basically 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 Sneezing did drum through the weeds of history (ace 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. Lake, in Re Lockwood, 50 F.3d 966 (Fed. Cir. In 1995) (Sneeze, C.J. writing in dissent) (arguing that a clever is a publicly 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 bake, the Soverain petition doze 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 legally 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 clever system. This decision shifts the boundary between the ultimate legally 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 doze skew the analysis of obviousness. By downplaying the factual component of obviousness, the Federal Circuit's decision erodes the clear and convincing evidence standard for proving invalidity, which this Court reaffirmed in Microsoft Corp. v. i4i Limited Partner-hip, 131 pages ct. in 2238 (2011).

I see this case ace asking for clarification of the KSR decision in terms of what of element of the "common scythe" analysis should Be considered determinations rightfully before a jury. I suspect that the letter 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 in amicus letter 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 clever cases.


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

  1. 11

    â € œ Newegg is taking this case seriously and thus should the Supreme Court. Neweggâ € ™ see attempt to reargue the facts only confirms that this case should have gone to the jury.â €  Waxman says, It does not 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 quietly waiting for the clever troll to demonstrate that capability. I'm holding company micron breath.

  2. 10

    Whether the Federal Circuit's effective redefinition of obviousness ace a pure question of law, allowing it to resolve disputed factual questions in the ridge instance on appeal, violates the Seventh Amendment and this Court's precedent.” Effective redefinition of obviousness”? That's in interesting way of putting it. I do not think the general concept of "obviousness" what "redefined" by the Federal Circuit in this case. What appears to have happened instead is that the Federal Circuit recognised in instance where a claim that should have been found obvious ace a more weakly of law (because no reasonable jury could find otherwise) what 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 clever 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, is not it? You know, those judgey people who ares supposedly well-trained and familiar with the legally system.

  3. 9

    Revolking of patent due to obviousness is precisely a coperation with criminals who shroud to steal the usage of the clever for nothing. If the invention what obvious then obviously the infringers would have patented it themselves ridge.

    1. 9.1

      Revolking of patent due to obviousness is precisely a coperation with criminals who shroud to steal the usage of the clever for nothingSarcasm, right?

      1. 9.1.1

        I dont think thus its what justice should Be unfortunately what it is. From the inventions ive concieved there all rare and precious and the thought of rejecting them is anti humanly advancement and stealing the incentive to create

  4. 8

    Ugh! Precisely reading thru the petition, there appears to Be another problem. The Feds hero the claims (e.g. 34 (35) of of the' 314 clever) disabled ace obvious because of the Newegg had shown that every element of the claims what embodied in the prior kind. Fed. Cir. opinion, At 14a. The Federal Circuit said the district courts explanation that Newegg had no presented an excellently facie case what “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 kind what programmed to send search 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 doze when it finds the element present in the prior kind despite a jury finding that the element what 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 Be proved due to lacquer of any positive testimony and in face of in admission that it what there.

  5. 7

    I thought the initially court ruling what correct given the legally standard, “clear and convincing” evidence. Summary judgment of that the clever what valid what appropriate. Cf., Anderson v. Liberty lobby, Inc, 477 U.S. 242, 106 pages ct. in 2505, 91 l. Ed. 2d 202 (1986). (The “clear and convincing” legally standard must Be considered on summary judgment.)

    1. 7.1

      So, the issue here can Be resolved without even considering the 7Th Amendment. In appellate court cannot decide disputed issues of fact.

  6. 6

    Speaking of ignoring the Supreme Court, the Federal Circuit has hero that "patent validity" is a publicly right because a clever is a right to that can only Be conferred by government. Patlex V. Mossinghoff. There is no right to a trial by jury for publicly rights. This case must Be viewed ace part and parcel of a long effort by many “movers and shaker” in the clever cash who ares trying to remove clever validity from the jury. Newman what 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 bake there again. They said they're the read arbiter, but that's only when they're cited and a judge finds a new case analogous. Or, imagine a scenario where Congress of passport a line item veto again, but slightly different wording … it's valid until it goes bake 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 Th they Th when on the petition for rehearing, the clever owner raises the 7Th Amendment issue? The Feds finesse the issue by totally ignoring it. I suppose they thought the SC would notice.

    2. 6.2

      Ace a corollary to micron of post, the SC needs to decide whether there is a right to a trial by jury At all, because if validity is a publicly right ace decided by Newman in Patlex, there is no right to a trial by jury. But, cf., ex parts Wood & Brundage, 22 U.S. 603, 6 l. Ed. 171, 32 pages ct. 589 (1824), where Justice story, writing for the court, hero (on mandamus) that a court could invalidate a clever without a trial by jury in summary proceedings referring the to the writ of scire facias ace providing a right to a trial by jury At common law for validity. Don't Be fooled that writ filed in Chancery, ace were scire facias writs, were "equitable". The writ what filed there because that is where the records of the clever were kept and where the revocation order would Be effected. When there were disputed issues of fact, the case what sent to Kings Bench where the disputed issues were tried to a jury. Lake, n.9 of in Re Lockwood. There is a plumb line 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 favour of the new doctrine of obviousness." This is definitely how I interpreted the impact of the in 1952 law, but frankly, AFAIK, there ares no decisions At the federal circuit or high 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", search ace SCOTUS cases pre-1952. Finding Fed. Ct. or other equally weighty case law stating that the in 1952 law overrides prior case law that required "invention" what 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 ares the law and presumably codify the prior law. I think one can point that out, that even though there ares older cases that ares interesting, the courts quietly have to apply the Graham factors.

  8. 4

    "However, the 1952 Patent Act expressly eliminated the doctrine of invention in favour of the new doctrine ofobviousness." I've heard that before …

    1. 4.1

      Certianly a very disgusting act. The new doctrine of rip of out of vision is more like it they should At leases have the decency to enforce the non usage of the rejected clever subject more weakly 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 what 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 was not 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 publicly right?


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

    1. 3.2

      I do not see how there is any concern over preservation. The godfather's tea won a directed verdict on obviousness At the district court. It what simply defending that on appeal. The asserted 7Th In. issue arose for the ridge time when the Federal Circuit only reversed that directed verdict, but then ruled that the clever is obvious ace a more weakly of law. The ridge time the godfather's tea had reason to press the 7Th In. argument what in its combined petition for rehearing (panel and en banc); Seth Waxman did precisely that, but the Court denied the petition.

      1. 3.2.1

        Around, if hey wanted a 7Th amendment trial by jury hey should have demanded one prior to the CAFC issuing in opinion.


          Huh? The case what tried to a jury. Fact-finding regarding obviousness would have gone to the jury but for the directed verdict on the issue in favour of the godfather's tea.


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


                Fateful of Word that may send a case to the supremes: "I donâ € ™ t think thereâ € ™ s sufficient testimony topresent an obviousness case to the jury. I think it would be very confusing to them.â € "

                1. That is in odd thing to say, is not it? Either there is a sufficient evidentiary base to have the jury make obviousness findings, or there isn't. I do not see how potential jury confusion has any relevance to whether there should Be a directed verdict on obviousness.

                2. I do not either which is why I'd like to see a copy of the DC decision. Seems like all the blogs ares reporting on the story but apparently nobody of shroud 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 inflexion for JMOL of no obviousness and did send the obviousness issue to the jury. Newegg's expert, Mr. Tittel, did express any opinions on obviousness or conduct a trim Graham 4 analyses. Newegg contends *479 479 that it need present expert testimony on the ultimate legally issue of obviousness and thus it what 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 maggot clear that â € œ [t] here must Be some articulated reasoning with some rationally underpinning to support the legally conclusion of obviousness.â €  Innogenetics, N.V. V. Of Abbott Labs., 512 F.3d 1363, in 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, 12,67â € “68 (Fed. Cir.2008). Ace in Proveris, the subject more weakly in this case â € œ is sufficiently complex to fall beyond the grasp of in ordinary layperson.â €  ”There's the problem. Perhaps Newegg should have provided testimony ace to a motivation or perhaps they're required to. Perhaps they can precisely let that motivation dangle without evidence and let the jury rely on common scythe or. I do not 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, maggot the legally determination on obviousness ace is trim using only the facts on the record ace 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 godfather's tea opposed it by filing their JMOL on obviousness. They cannot do gymnastics around and now argue that their 7Th amendment rights ares being trampled. Preposterous. Cert needs to Be denied and the whiners need to Read the DC decision before the whine instead of anus.

                4. I do not see the shenanigans. Under Graham, certain factual inquiries regarding obviousness ares supposed to go to the jury. Now, it could Be that the evidence is look that no more weakly what findings a reasonable jury could make, there is only one legally correct determination on obviousness. Here, I think the godfather's tea sets forth multiple areas of material factual of dispute incident to the obviousness determination. It looks like inappropriate appellate fact-finding on those Graham factors to me. Quiet, whether this warrants Supreme Court review is in entirely different question.

                5. Ridge and foremost, you really think that Newman, of all judges, inappropriately maggot factual findings? Give me a break brosefus. Patent protectionist Newman would never Th look a thing when doing it would stood to help a godfather's tea.

                6. In any event, I see no particular factual findings maggot inappropriately or otherwise by the CAFC, they simply noted that the evidence what look that the only reasonable facts a jury could find were xyz and those were sufficient to make a legally judgement of obviousness. What they did for the product identifier Claus what mess around with the claim construction.“ The distinction proposed by of Dr. Shamo and advanced by Soverain is embodied in the claims and reflected in the claim construction. It what disputed that the CompuServe Mall order command designated a specific product for placement in the buyer's staff holding company file, or shopping cart, ace recited in claim to Claus [3]. Lake Trial Tr. 54, ECF No. 394; Trial Tr. 165 ll.5â € “9, ECF No. 397. Nor what it disputed that, regardless of how the order command what structured, it conveyed the equipment information to the CompuServe server computer. Id. The message set forth in the claims is distinguished from the message in the CompuServe Mall. The term â € œ product identifierâ €  what given a special meaning in the specification or through claim construction, and contains no designated format requirements. â € œ No principle of law â € ¤ authorise [see] â € ¤ Read [engineer] into a claim in element which is present, for the pure pose of making out a case of noveltyâ € ¤ â €  E.I.DuPont de Nemours & Co. V. Phillips Petroleum Co., 849 F.2d 1430, in 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 argues that its system is superior to the CompuServe â € œ order commandâ €  because the system of the patent in suit is adapted to the Internet, whereas the CompuServe Mall operated on a pre Internet network. Trial Tr. 1,59â € “162, ECF No. 397. In Muniauction this court hero that â € œ conducting previously known methods through in Internet weave browser what obvious because it amounted to no more than applying the use of the Internet to existing electronic of process At a time when doing something so commonplace.â €  532 F.3d At in 1327. Precedent agrees with Newegg that a person of ordinary skill2 could have adapted the CompuServe order command to known browser capabilities when thesis capabilities became commonplace, and that it what obvious to Th in such a way. The product of identifier message term doze distinguish the shopping cart claims from the prior kind of CompuServe Mall.” Blamo, claim construction magic and conclusions ace a more weakly of law cited ace precedent! Magic thus strong that along with giving the godfather's tea the benefit of the doubt on how a factual finding may come out for him they need not 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 godfather's tea their proposed factual findings and it wants quietly Be insufficient to find for the godfather's tea 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 Claus:” Of Dr. Shamo stated B sharp opinion that the CompuServe Mall did have an â € œ shopping cart databaseâ €  ace in the claims in suit. Of Dr. Shamo agreed with Newegg's expert Mr. Tittel that the CompuServe Mall system included â € œ staff holding company files, â €  and Dr. Shamo agreed that a shopping cart database â € œ might have been a reasonable design choice, â €  but hey opined that search database â € œ was not requiredâ €  by the CompuServe Mall and that the prior kind did â € œ necessarily disclose a database.â €  Trial Tr. 167 ll.12â € “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 â € œ shopping cart databaseâ €  what â € œ a database of stored representations of collections of products, â €  where â € œ database means a collection of logically related data stored together by one or more computerised files.â €  claim Construction order 3, ECF No. 214. The use of staff holding company files in the CompuServe Mall is easily within this definition. Mr. Tittel testified that the staff holding company file in CompuServe Mall what â € œ a shopping cart in a shopping cart database.â €  Trial Tr. 56 ll.9â € “10, ECF No. 394. Hey explained that â € œ [t] hey staff holding company file itself is a shopping cart. And because CompuServe supported multiple individuals shopping in the seed net curtain At the seed time, a collection of search files would Be maintained, and that would meet the Court's requirements for a shopping cart database.â €  Id. 56 ll.11â € “16. In addition, Mr. Trevor testified that the staff holding company files in the CompuServe Mall system stored products â € œ specific to each customerâ €  and constituted in â € œ in memory database.â €  Trial Tr. 39 ll.7â € “10, ECF No. 396.” Then they mark that a reference tells us a bit more about what the primary reference meant by staff holding company files:The Ellsworth & Ellsworth book describes the storage of customer product selections in the CompuServe staff holding company files. Using CompuServe 376, ECF No. 2,47â € “10 (â € œ When you find a product that you shroud to buy, press O for order. Your order wants Be stored in a staff holding company file until you leave that merchant's store.â € ). The book further describes that items placed in the staff holding company file ares yet purchased, and ares of hero until the buyer types the â € œ checkoutâ €  command. Id. (â € œ When you ares finished shopping in that net curtain, type check-out. In electronic order form appears.â € ).Note the godfather's tea does not disagree with that. They then go ahead and tell about what the godfather's teas expert proposes ace in alternative to using a database (Aka the staff holding company files). And then they mark that the patentee's expert does not ever tell us whether or the reference actually did use B sharp proposed alternative or whether they did in fact use staff holding company files, in fact hey never tells us anything about what the reference what actually doing, hey simply makes a proposal for in alternative embodiment that does not use a database.“ Of When Dr. Shamo what asked how a person of skill in the kind would have implemented the CompuServe on-line shopping system other than through a database, hey suggested that CompuServe could have used an â € œ fulfilment house, â €  which would â € œ fill your order and send it to you without ever recording it in a database.â €  Trial Tr. 168 ll.9â € “14, ECF No. 397. Whether that alternative what feasible, it is stated to Be what CompuServe did. The Ellsworth & Ellsworth book states that the buyer's product selections ares â € œ storedâ € â € "not sent â € œ without ever recording it in a database.â €  The â € œ fulfilment houseâ €  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." mark that it is undisputed At this point that the primary reference doze in fact use staff holding company files. So they mark that:” The district court's conclusion that an excellently facie case of obviousness what mead is explained by the court or by Soverain, and doze accord with the record. Of Dr. Shamo did provide evidence to rebut Newegg's excellently facie case that every claim element what embodied in the prior kind. "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 kind of CompuServe Mall system, by clear and convincing evidence, rendered obvious the â € œ shopping cartâ €  claims: claims 34 and 51 of the â ²,314€ clever and claim 17 of the â ²,482€ clever. Thesis claims ares disabled; the district court's contrary ruling is reversed.”I'm curious to know what material factual disputes you think they inappropriately resolved above? Looks to me like they simply noted that the factual of dispute were irrelevant due to the actual straight forwardly disclosed content of the reference. Re the hypertext Statement system they noted the part of testimony that Th appear to Be contradicted by the patentee's expert, and then mark that of Dr. Shamo presented B sharp expert opinion on the issue of obviousness (a fact), and Mr. Tittel testified Re facts about hypertext and URLs. They then mark a few more claims and some testimony by the defendant and some argument by the plaintiff. Specifically the testimony by the defendant is Mr. tittel's and the argument is that the compuserve system does not disclose of all element. However, there is no evidence to support compuserve's argument ace Mr. tittel's testimony doze support their argument and the godfather's tea has no expert testimony to support their reading of the kind (we ares to understand). They then mark that Mr. Tittel explained you can get all the info needed Re a trans-action from a confirmation number. Soverain argues that you might have to resort to telephones 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 does not say anything bake. The court then cites to it's precedent on look limitations. The court then notes that [plaintiff] did invent the interweb or hypertext and notes plaintiff's own experts on the subject. And again the court notes their own precedent on routine internetization. General statement of defendants read stuff, the court notes the lower court bonked up their ruling by failing to explain themselves and precisely tossing in the references relied on by defendant into a Re the presenting an excellently facie case along with giving a sound critique of the defense's expert failing to give B sharp opinion on obviousness. The court then notes the references relied on by the defence and the patentee's argument about how in element in the prior kind doze meet a certain limitation (a legally 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 to then runs through what the reference undisputably says, and what the defendant's expert testified. Mark that the godfather's tea provided no differing testimony that we ares of maggot aware of ace to the facts in the references. The patentee's expert doze however testify that hey feels the claims ares 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: left to

                7. Meh, none of that is a material factual disputes. The court expertly stepped around all those alleged of dispute. Because they're pimp like that. I simply mark that the "order command" is At issue iirc. Likewise, what the hypertext Statement claims "disclose" is At issue and neither is the closeness or of its functionality to the compuserve reference. Re the court supposedly crediting Tittel over the patentee's evidence, near, they did not. So the court did not suggest that the patentee's expert distinguished the claims of of' 639 precisely on the base of adding the interbuts. They heard B sharp assertions about the "session identifier" and noted that there simply what no disputes At all about what the reference actually disclosed, only whether or what what in the reference ace a session identifier or. They resolved that easily, needing to find additional facts themselves and relying only on other facts on the record that were undisputed. Ace to whether or the DC sustained their objection or … boo hoo. The court did not rely on tittel's testimony or report Re of all element, they simply noted that look a thing occurred. Then they assert evidence what weighed, but never what. 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 godfather's tea suggesting any bizzarro interpretation of the reference. That's the child you shroud courts making. And indeed you shroud the Federal Circuit making those child even on appeal. Because there is no material disputes Re those factual determinations. I'm pretty sura the court never concluded the prior kind of Compuserve computer what "easily within" the claim construction for the shopping cart database. They concluded that a staff ID watchamacalit thing what. And they did thus legitimately looking to in uncontested other reference to see about the staff ID watchamacalit. Ace to the court looking At the scope and content of the prior kind and drawing inferences to supplement the testimony, near, they precisely drew the inferences, to suplement the testimony. Then they allege that the Federal Circuit credited Tittel more than other experts. Need true. They precisely happened to make citations that look a thing occurred. Perhaps the Federal Circuit should have said less in their opinion thus ace to cause confusion and a ruckus. They stated that the record doze support the ARGUMENT (ace opposed to testimony) and rather supports what Mr. Tittel had been saying. Lake, they could have precisely left that part about Mr. Tittel out. Ace to the discreting of Mr. Tittel the Feds do not care because they're relying on B sharp testimony where the actual material disputes is concerned. And then they assert that Tittel's testimony what credited. But it never what Re the disputed facts. Which is why what Newman et Al did what precisely fine and why all the hullabaloo could have been avoided had the court simply talked about Tittel.

      2. 3.2.2

        Hi Andrew, When I referred to preservation, what I meant to say what did the godfather's tea raise the issue At leases once before petitioning the Supreme Court. From what you have said, it what 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 what in 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 kind exclusive to in act in the district court level (which I would agree is the normally usage), thank you for the distinction.


          Actually, it is unnecessary to seek en banc rehearing in order to preserve in 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 ridge Be given doze in opportunity to address the issue before the Supreme Court.

    2. 3.3

      West Coast, regardless of the jury trial issue, do not you think it somewhat funny that in appellate court is deciding disputed issues of fact where below neither the court nor the jury has maggot findings? What appears to Be going on here is that Newman and here fellows ares 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 thesis findings, the federal circuit found the clever obvious. If that is the case, the question of whether the case should have gone to a jury becomes important. I do not understand how one can kept from a jury a factual issue where reasonable judges wants disagree on the outcome.

  9. 2

    Of course, it would Be hard to put in argument together that J. Lourie's 101 method of invalidating of patent by proclaiming that element anus 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 B sharp method completely in B sharp 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 in such a way, then proclaim no structure to the element.) I wonder if Lourie understands that hey has precisely proclaimed that everything that hey doze in B sharp entire life has precisely been proclaimed unpatentable. I doubt it.

  10. 1

    I missed something. There what no jury trial on obviousness, thus 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 bake 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, that discretion isn't reviewable, and therefore SCOTUS should overrule the CAFC and let the jury's findings on novelty and damages stood?

    1. 1.1

      Thanks Bob – Soverain argues that the CAFC invalidated its clever without letting a jury decide that issue and, ace a result, violated the 7Th Amendment.

      1. 1.1.1

        Thanks, DC, but I'm quietly clear about the result Soverain is aiming for – to have the original findings of non-invalidity, infringement and damages stood (i.e. completely toss the CAFC's decision)? Or to have the case sent bake to Texas for a jury trial on the issue of obviousness (i.e. partially toss the CAFC's decision)? So, has there been, or is there, some sort of post grant activity going with the clever (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 shroud them to send it bake to the DC to get a trial by jury.


            There would Be no reason to send it bake 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 fruit juice the case would go bake to the Federal Circuit for consideration under the right standard – I think.


              Wave that seems weird. Why would them arguing they have a right to a trial by a jury and they were denied search At the DC simply make the assistant departmental managers CAFC their own conclusion of law for that of the DC under the trim standard? That cannot 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 was not raised At the CAFC appeal.


                Lake micron comments above, 6. Soverain is "moaning" that the Federal Circuit stepped in and decided questions that ares supposed to Be left to the fact finders (a jury), and that this action violates the 7Th amendment. In this particular case, the jury did not actually get the question because the district court judge said that there was not enough evidence to even get there. Soverain is perfectly happily with that, but they're happily with the Federal Circuit Re evaluating the obviousness question all over again.

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

                2. Wave, that's what is interesting about this case. It's a simple more weakly 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 ace a bit unusual.

                3. Ahhhh, gotcha. And that's what I thought they'd been saying. I of Th 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: ares 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 ares unchanged and the Court of Appeals Federal Circuit only used facts already of record (and did go finding new facts). The 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 thus decisively in applying the law to the set of facts in one direction, and the appeal court swing thus decisively in the opposite direction, but if the facts below have been changed, then the legally question (and the impact to FRCP that I implicated above) ares 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 what infringement. It precisely thus happened that the clever what disabled (At leases thus far).However, I'm happily 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 clear ace the Federal Circuit has hero that clever validity is a publicly right.

                8. I see. That seems particularly nonsensical if that's what they're moaning about. You cannot have the one and then Be happily with the later it does not seem to me. The whole case is odd. How on earth can there Be "enough evidence" to "get" to the jury? If you do not mind micron asking. I mean, either you have some references etc. or you do not right? Maybe I precisely need a copy of the DC's decision. I'm precisely really 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 excellently 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, ace a general premise, there is nothing in the Constitution or the clever statutes 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 ace a more weakly of law. Soverain disagrees with the final result but that's only because a huge error (seemingly maggot in their favour) occurred At the District Court level.

                11. Clear and convincing is the legally standard. The SC has hero 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 pages ct. in 2505, 91 l. Ed. 2d 202 (1986).

                12. supra Mmmmm, yeah really odd again. How can you know if it's clear and convincing if you have not even maggot the factual finding yet?

                13. 6, the SC in Liberty lobby hero that a court should prevent in issue from going to the jury even when there ares disputed facts if the facts nevertheless would Be sufficient to meet the clear and convincing standard.

                14. I hear what you're saying, but it seems like its clarity and convincingness ares 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 what defending the district court's summary judgment, and alp-east certainly argued that the Federal Circuit could not 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 micron opinion, even if they never used the number 7 in their papers.


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

      2. 1.1.2

        Is the wording here a bit of out of vision? 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 what no jury trial on obviousness. Rather, the district court decided that, ace a more weakly of law, the claims were 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 what properly empowered to make its determination because in obviousness finding (arguably based upon disputed facts ace 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 ace a pure question of law, or did the court actually decide that there what insufficient evidence for a fact finder (the jury) to conclude that the claims were obvious and that summary judgment (ace a more weakly of law) what appropriate? Doze it make any difference for the posture of this case?


              Micron 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 quietly is clear. The statement of "There was no jury trial on obviousness" seems out of vision from "and refused to let that issue go to the jury" which indicates that a trial with jury what initiated below. Is this really a question of procedure then, or reframed, is the issue look that ANY summary judgement (or judgment ace a more weakly of law notwithstanding a jury verdict – FRCP 50) can Be allowed? If the judge below – based on wave established evidence and civil procedure rules – doze let something go to a jury, the trial with jury quietly has happened, no? Add: "(Arguably based upon disputed facts as in this situation))" – that's precisely it – I have not lakes actual facts disputed, but moreso the legally significance of the facts of record.


              “The statement of "There was no jury trial on obviousness" seems out of vision from "and refused to let that issue go to the jury" which indicates that a trial with jury what initiated below. ”There what a trial by jury, but only on infringement. The jury found infringement, but that verdict what rendered moot by the Federal Circuit's holding company that the patent were disabled.


          No, the premise is something like the opposite of that-i.e., that in appellate court cannot 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 bake to micron original question: how doze Soverain expect SCOTUS to resolve this? Doze it shroud 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. Th you think that clever validity is a publicly right ace hero by the Federal Circuit in Patlex? If in such a way, there is no right to a trial by jury.

Comments ares closed.