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.
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.
- Download Soverain Cert petition 10/16/2013
- Download Herlihy Mossoff 7Th Amendment amicus letter Soverain V. Newegg
- Download letter of i4i Limited Partner-hip
- Download 13-477acMDBCapitalGroup