Aia America, Inc. v. Avid Radiopharmaceuticals, 866 F.3d 1369

Background

AIA America sued Avid and University of Pennsylvania trustees for infringement of two patents related to the "Swedish mutation"; Dr. Michael Mullan is named inventor.
Avid defended that AIA lacked standing, alleging a scheme by AIA founder Ronald Sexton and Dr. Mullan (with Dr. John Hardy and others) to conceal Imperial College and USF ownership and misattribute inventorship.
The district court held a jury trial limited to standing; the jury found Dr. Hardy was a co-inventor and USF did not knowingly waive rights, leading to judgment for Avid. This court summarily affirmed.
Avid moved for attorney’s fees under 35 U.S.C. § 285; the district court held briefing, took evidence, heard argument, and awarded $3.94M in fees. AIA appealed the award (not the amount).
AIA’s challenges: (1) Seventh Amendment requires jury for factual issues underlying a § 285 fee award (state of mind/culpability); (2) district court made findings inconsistent with the jury; (3) denial of due process for alleged inability to present intent evidence to a jury.

Issues

Issue	Plaintiff's Argument (AIA)	Defendant's Argument (Avid)	Held
Whether Seventh Amendment entitles AIA to jury trial on factual issues underlying § 285 fee award	Jury required when fees turn on state of mind, intent, or culpability	Fees under § 285 are equitable; no Seventh Amendment right to jury	No jury right; § 285 fees are equitable and jury demand not required
Whether district court erred by making factual findings not decided by jury	Court improperly made findings on intent/culpability that jury never decided	Court may make equitable findings not inconsistent with jury verdict	No error: court can make additional equitable findings so long as not inconsistent with jury
Whether prior Federal Circuit authority precludes judge from resolving intent in fee proceedings	Door-Master/Jurgens prohibit findings inconsistent with jury	Those cases only bar findings contrary to issues necessarily decided by the jury; do not bar nondispositive equitable findings	Door-Master/Jurgens do not bar judge from making additional equitable findings on intent
Whether AIA was denied due process by lack of jury presentation or opportunity to present intent evidence	Deprivation of process because intent evidence should have been presented to a jury	AIA had full briefing, evidence submissions, and a hearing; no entitlement to jury	No due process violation: AIA had opportunity to present to court and had no jury right

Key Cases Cited

Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998) (cases may raise statutory or Seventh Amendment jury questions)
Granfinanciera, S.A. v. Nordberg, 492 U.S. 33 (1989) (distinguishing legal v. equitable claims for jury right)
Tull v. United States, 481 U.S. 412 (1987) (two-step test: historical analogue and nature of remedy)
Chauffeurs, Teamsters & Helpers, Local No. 391 v. Terry, 494 U.S. 558 (1990) (second step of Tull is controlling)
Budinich v. Becton Dickinson & Co., 486 U.S. 196 (1988) (statutory prevailing-party fees are equitable, collateral to merits)
Simler v. Conner, 372 U.S. 221 (1963) (attorney-fee claim by lawyer against client is for a jury)
Great Am. Fed. Sav. & Loan Ass’n v. Novotny, 442 U.S. 366 (1979) (Title VII fee-shifting viewed as equitable; no jury right)
Swofford v. B & W, Inc., 336 F.2d 406 (5th Cir. 1964) (no jury trial right for § 285 fees)
Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001) (trial court may not make findings inconsistent with jury’s necessarily decided issues)
Jurgens v. CBK, Ltd., 80 F.3d 1566 (Fed. Cir. 1996) (court cannot make findings conflicting with jury verdict)
Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182 (Fed. Cir. 1993) (intent to deceive in inequitable conduct is for judge in equitable context)
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) (courts may not make findings in conflict with jury)
Therma-Tru Corp. v. Peachtree Doors Inc., 44 F.3d 988 (Fed. Cir. 1995) (same)