In Re Lawrence B. Lockwood

necessary in ease. To A is this hold- remand approach, has followed the same Circuit court found that only if it that the district discharge unlawful the extent “the is ing that participation pro- Smiley’s and Fellows’s but the retaliato- not have occurred would Martin, 4. not a reason Davis ter- F.2d at 1408 n. activities was ry tected intent.” Martin, them, clearly finding affirmed a rul- errone- Circuit minated that the Tenth retaliatory, unemployment compensa- discharge was not the state ing that ous. On “peo- form, that in rela- employer’s statement listed their activities despite the tion Davis depart- loyal don’t call the labor Hour claim—which ple Wage who are and tion to ment,” reasons would they other valid were because valid—as a reason proved to be 1408-09. remand, result. Id. at led to the same court is have On the district terminated. interpretation still serves proceed The “but for” that fact as established to take employees statutory encouraging purpose of of whether Fellows a factual determination Only the FLSA. those report violations of anyway Smiley have been fired would exactly have suffered employees who would and, so, If district court finds if when. they even if had not adverse action the same not or of them would have that either both unprotect- will be engaged in FLSA activities fired, not have been fired as been or would for” test. We therefore ed under the “but were, participation they but for their soon as “motivating factor” test that hold activities, grant the court is to protected for” standard. equivalent to a “but to them and such addi- commensurate relief injunctive appropriate relief as the tional “motivating Applying Goldberg Secretary is entitled to receive. case means or “but for” test to this factor” Smiley and Fellows are entitled to relief that filing they that the establish III. CONCLUSION Division, Wage complaint with the and Hour opinion is VACATED The district court’s ensuing investiga cooperation their or the case is REMANDED for further

tion, to suffer adverse action caused them opinion. proceedings consistent with they not suffered. that otherwise would have they to which are entitled is com The relief with the extent of the adverse

mensurate they they If suffered as a result. they would not have been fired

establish activities, protected

at all for their then but full

they are entitled to reinstatement and pay. back LOCKWOOD, In re B. Lawrence Petitioner. contrast, By if the evidence establishes eventually Smiley and Fellows would Misc. No. 394. anyway, fired but not as soon as have been Appeals, United States Court of were, they they then entitled Federal Circuit. reinstatement; they are entitled to back period they of time that would pay for the 11, 1995. Jan. protected employed have but for their been Declining Suggestion Rehearing Order activity.1 Fitting the relief to the conse- In Banc Jan. 1995. quences employees’ participation in protected activity important balances the in- Opinion Dissenting from Denial of protecting employee participation terest Rehearing In Banc filed Circuit activity against employer’s in- protected Judge Nies Feb. being terest in not saddled with unsatisfacto- ry employees, have who would been fired just

anyway, engage protect- because activities.

ed activities, Smiley Secretary Fellows suf- would be entitled to the 1. If it is established that any protected injunctive fered adverse action because of relief he seeks. B. granting Lawrence 1994 order March mandamus, petition for writ Lockwood’s the district court we directed wherein in Ameri- Lockwood’s demand reinstate action for a declaration pending can’s patents are invalid. Lock- two Lockwood’s rehearing. opposes wood for leave to file American also moves attached, for a reply and reply, with the precedential order.

I. BACKGROUND Declaratory A. American’s Judgment Action began when Lockwood filed This ease against alleging that complaint American system computerized reservation American’s relating patents infringed Lockwood’s two terminals and automatic ticket self-service systems. sought both dispensing Lockwood relief, injunctive and his damages and timely American raised made. demand Martens, Joseph R. Re and Paul Don W. defenses, including alleged a number Martens, Bear, Stewart, Knobbe, Olson & A. issue; patents at of the two Beach, CA, for were on the Petition Newport addition, counterclaimed for a dec- American Rehearing Suggestion In Rehearing and for noninfringing laration that its activities were Banc. and, alternatively, patents that Lockwood’s Jr., Lyon Lyon, or unenforceable. Taylor, M. & Casta are invalid Robert Mesa, CA, respon- response to was on the discovery, American After the close of Rehearing Suggestion for dents Petition summary judgment that its com- moved for Rehearing In Banc. system infringe puterized reservation did at issue in either of Lockwood’s the claims FOR REHEARING OF ON PETITION granted court Ameri- patents. The district GRANT OF PETITION FOR WRIT summary judgment of non- can’s motion

OF MANDAMUS infringement, it dismissed the after which infringement complaint1 and denied Lock- MICHEL, Judge, Circuit Before certify summary judg- wood’s motion to its BENNETT, Judge, Circuit Senior appeal pursuant ment decision for immediate LOURIE, Judge. Circuit 54(b). The district court to Fed.R.Civ.P. that, permitting an held rather than interloc- ORDER infringe- utory appeal as to its MICHEL, Judge. Circuit ment, proceed it would to consideration of (American) Airlines, prayer peti- American’s for declaration American Inc. invalidity,2 citing recent rehearing nonprecedential Court’s tions for of our petition, parties’ mandamus as we demonstrate in initial submissions on the manda- wood's 1. The II, petition altogether were not clear as to Section mus infra. or, had also been a dismissal in- whether there stead, infringement entry partial summary suit and a de- 2. At least where an coexist, was, claratory judgment infringement action our cases en- judgment. howev- er, courage adjudicate questions of any district courts to the manner in which dismissed. validity implemented infringement both are decision on both when the district court its raised, reference to the order in which does not affect the merits of Lock- without play part v. Morton claim can in our in Cardinal Chem. Co. determination decision —Inc., U.S. -, Int’l, enjoys whether he a Seventh Amendment (1993) (infringement and declara trial as to L.Ed.2d Ameri- See, joined). tory judgment judgment. actions can’s action for a (1st e.g., Evangelist, In re motion, district Finally, on American’s Cir.1985) (appellate court refused to consider struck Lockwood’s demand that court determining dismissed claim in whether a jury. be tried to a The court issue met, though demand should be even remaining eq- “the claims are concluded that might ultimately reinstated); claim Hilde- plaintiff [and] [Lock- uitable nature Trustees, brand v. Board by jury a trial is not entitled to wood] (6th Cir.1979) (court suggested that claim for right.” matter of damages summary that was dismissed on judgment should not be considered when de- B. Lockwood’s Mandamus Petition termining party’s asserted Seventh Amend- Following the district court’s decision to right by jury).3 longer ment to trial noWe strike, petitioned Lockwood this court for a rely on previous the misstatements of our directing mandamus the district court writ of order. jury to reinstate his demand. We issued the writ, argues American further reasoning that “Lockwood’s un- that its ac because entirely tion for a derlying infringement damages claim for and nature, equitable in and that Lockwood is the basis of the action at the district court” enjoys therefore trial un infringement damages and claim for “[t]he in der Seventh Amendment this case any in and asserted defenses still exist patent validity. even as But American case,” entitled to a Lockwood remained argument as much errs with this second as it relating questions trial on the factual to va- Accordingly, hits the mark with its first. our lidity. disposition petition of Lockwood’s remains presents arguments two American same, though our rationale differs. Be petition rehearing. its American first analysis original upon cause our based that, argues because the district court dis misunderstanding procedural posture of the infringe missed Lockwood’s claim for of the we vacate our March damages, remaining claim ment replace analysis pre and order with American’s claim for a declaration of sented below. asserts, invalidity. rightly As American con trary previ in our to erroneous statements II. DISCUSSION order, adjudi ous the district court will not Right A. Protection validity cate the issue of as a defense to an Jury By Mandamus infringement existing infringe claim. The that, Consequently, argues as a threshold ment claim exists no more. American matter, particulars has failed to make the of Lockwood’s dismissed Lockwood 327, 330, Compare Corp., are raised. Lindemann Maschi Interchemical 1143, 1145, (1945) ("There GmbH v. American Hoist & Derrick 89 L.Ed. 1644 has nenfabrik 1452, 1463, (Fed. USPQ tendency among courts been the lower federal Cir.1984) ("[a] district should decide valid court infringement dispose of where suits to them ity infringement judg and should enter possible ground non-infringement with- on the ment on both issues when both are raised in the validity going question out into proceeding”) (infringement alleged same in ini however, patent. recognized, It has come to complaint, tial with counterclaim declaration validity greater questions, that of the two has the invalidity) Stratoflex, Aeroquip with Inc. public importance, and the District Court in this 1530, 1540, Corp., USPQ F.2d usually be the better case followed what will (Fed.Cir.1983) ("[w]hen presented with practice by inquiring fully into the this issues, trial courts omitted). (citations patent.”) both”) (prayer should ... decide for declaration complaint, in initial counter with accept argument 3. Because we American's infringement). claim for many point, cases we need not dwell Supreme expressed has the same Court support of it. American cites in general preference. Sinclair & Carroll Co. v. jealousy.”). great watched with required for manda- it has been extraordinary showing Accordingly, grant mandamus need not “the maintains that we mus. American im jury trial where it has been require Amendment Lockwood’s Seventh address time, Beacon The asserting properly that the error denied is settled.” claim at this Westover, 500, 511, atres, complains, it occurred Inc. v. which Lockwood (1959) (revers 948, 957, all, appeal after simply can be reviewed on 3 L.Ed.2d 988 case. entry final to issue writ of ing circuit court’s refusal begin, suggests, reinstating petitioner’s must as American de While we mandamus remedy mand). principle Dairy familiar that “the with the observed As the Court one, Wood, to be invoked Queen, responsibility of mandamus is a drastic Inc. v. it is “the situations,” extraordinary Allied grant Appeals of the Federal Courts Inc., 33, 34, Daiflon, Corp. v. necessary protect Chem. mandamus where 188, 190, we by jury.” to trial constitutional Court’s pay can no less heed to the jurisprudence. As the Sutherland,

Court, per once stressed: Justice con- that American cites to the The cases fact-finding as a Maintenance Warren, trary, National Bank v. First occupies body importance and so is of such (7th Cir.1986), and In re Don Ham- F.2d 999 history jurispru- place firm a in our (8th Cir.1986), F.2d 151 ilton Oil any seeming curtailment of the dence that Hamilton, Eighth unavailing. In Circuit right jury a trial should be scrutinized to mandamus order- declined to issue a writ of utmost care. with the jury wages of back ing a trial on the issue Act, Schiedt, 474, 486, 29 the Fair Labor Standards under Dimick v. (1988). court, § in a 296, 301, 217 The brief also Jacob U.S.C. 79 L.Ed. 603 See York, 752-53, cir- per opinion, curiam noted that the three City 62 v. New (1942) (Mur- question cuit courts to consider this on the 86 L.Ed. 1166 (“The J.) that an action based on jury merits had held phy, right of trial in civil cases Amendment section 217 entails Seventh at common law is a basic and fundamental In right jury a trial. 783 F.2d at 151-52. system jurispru- feature of our of federal light of the other circuits protected by the of the decisions dence which is Seventh position, adverse to Hamilton’s as well as right A fundamental and Amendment. so citizen, questionable nature of guaranteed by what it termed “the sacred to the whether statute, legal presented,” id. at provided by issue the Constitution or courts.”); petition Hamilton’s without jealously guarded by the court denied should be (3 Pet.) Hamilton, 433, 446, prejudice. the court in we Bedford, Unlike Parsons (1830) J.) (“The petitioner’s right (Story, by are asked to evaluate the 7 L.Ed. 732 trial jury questions relating trial factual justly people. dear to the American validity,4 protected always object deep right that is It has been an interest solicitude, every upon and and encroachment the Seventh Amendment when those standard,” question patent validity 'clearly viewed under the erroneous' 4. "While the ultimate law, [i.e., legal is one of 103 condition obvious while “the ultimate conclusion of obvious- Id.., ... basic Co., ness] lends itself to several law.” 6 ness is scrutinized as matter of factual inquiries.” Graham v. John Deere USPQ2d at 1606-07. 1, 17, 684, 694, (1966) 15 Indeed, inquiry into obviousness is but one is, (citation omitted) added). (emphasis It component legal of the ultimate conclusion of course, beyond peradventure that the trier of fact non, validity vel which itself turns on additional inquiries relating to must answer the Graham underlying questions of fact. These include an “(1) art; (2) scope prior and content of the ticipation, Co. v. E.I. du Pont De Atlas Powder prior the differences between the art and the 1569, 1573, USPQ Nemours & 750 F.2d issue; (3) ordinary the level of skill in claims sale, (Fed.Cir.1984), prior public use or made; the art at the time when the invention was Westall, 911 F.2d U.S. Envtl. Prods. objective evidence of nonobviousness.” (Fed.Cir.1990), USPQ2d and the Specialty Composites Corp., v. Cabot 845 F.2d disclosure, 981, 989, sufficiency (Fed.Cir.1988). specification's Utter v. USPQ2d USPQ2d Hiraga, Consequently, findings underly 845 F.2d "[t]hese factual (Fed.Cir.1988). ing legal re- conclusion of obviousness are (3d Cir.1990) (same); patent in paradigmatic in a F.2d Mon questions arise Court, Corp. Patlex v. Moss fringement dor v. Dist. suit. F.2d 585-86 USPQ (9th Cir.1990) inghoff, (same); 758 F.2d Flynn, Maldonado v. (Fed.Cir.1985). support (2d scant Ham Cir.1982) The (citing Bea position cannot for American’s ilton offers Theatres); Corp. con Filmon Process v. Si Dairy against Beacon Theatres and stand rica, 449, 450-51, USPQ Queen. (D.C.Cir.1967) Queen (citing Dairy both Theatres). Accordingly, and Beacon rather holding in First Na Circuit’s The Seventh than defer resolution Lockwood’s Seventh support than American no more tional offers appeal Amendment claim until he Hamilton; fact, takes an supports Lock does National, court, from a final in the district the court declined wood. First jury we ordering improp determine now whether the court to issue a writ of mandamus disgorgement erly in an ac struck his trial on the issue of demand. unjust court alleging enrichment. The tion Right Jury B. Lockwood’s to a analysis The a detailed of Beacon

undertook atres, Queen, Dairy and the cases cited Framework, Assessing Seventh therein, ap concluding that mandamus is an Amendment Claims wrongful propriate remedy for the denial of to the Unit (a) legal trial where ed that “[i]n States Constitution declares equitable rest on a claims be tried suits at common law ... of trial (b) foundation, prior common factual ” preserved.... shall be The thrust of elaim(s) equitable might judgment on the preserve Amendment was claim issue or claim foreclose the 1791; indeed, jury trial as it existed for a preclusion. F.2d at 1002-04. Because appropriate time the rules the common possibility “no of issue or claim there was law as existed in 1791 were the sole ease, preclusion” in the court denied scope meaning measure of “the and (em petition. Id. at 1006 First National’s Dimick, Seventh Amendment.” at U.S. added). phasis petitioner in First Unlike the Utah, 297; Thompson 55 S.Ct. at National, may issue-pre- Lockwood confront cf. 343, 350, 622-23, U.S. S.Ct. clusive effects from a bench trial on Ameri (1898) (using scope L.Ed. 1061 same test for effects, unenforceability; claim of such can’s jury rights). of Sixth Amendment It is now occur, injuries easily repaired are “not settled, however, well that the constitutional National, appeal.” First 796 F.2d at right jury beyond trial Thus, extends approach the Seventh Circuit’s National, by bounds set the common law forms of supporting in First far from Amer issuing existing at the time of the Amend position, ican’s militates favor of Loether, adoption. the writ in this case. ment’s Curtis v. 415 U.S. 189, 193-94, 1005, 1007-08, 94 S.Ct. acknowledge that to We review the district Court, through The Mr. jury court’s decision strike Lockwood’s Story, principle Justice established the basic pre-judgment demand means of a manda in 1830: petition “presents all of an mus the vices law,” phrase “common found in [the interlocutory appeal.” Id. at 1001. We Amendment], is used contradis- conclude, along nonetheless with a number of equity, admiralty tinction to and mari- circuits, teachings our sister law, By jurisprudence.... time common Queen Dairy regarding and Beacon Theatres meant framers] Seventh Amendment’s [the wrong propriety of mandamus to cure a in the what the constitution denominated ful denial of the to trial are “law;” suits, which third article beyond Corp. cavil. Nissan Motor v. Burci (10th Cir.1992) recognized among law its old the common aga, 982 F.2d (“[M]andamus proceedings, but suits in which appropriate and settled relief when it is legal necessary rights were to be ascertained protect tri al.”) Int'l, determined, Queen); in contradistinction to those (citing Dairy Allegheny rights recog- Allegheny Corp., equitable where alone were Inc. v. Ludlum Steel statutory First, action to compare the we nized, were admin- equitable remedies brought in the courts istered; where, admiralty, 18th-century a mix- actions as in or law, law and merger and of maritime public England prior ture Second, in the same often found equity, equity. we ex- law and courts of sense, just the amendment In a suit.... remedy sought and determine amine the all may construed to embrace then well be legal equitable in nature. it is or whether suits, equity and admiral- which are not of 565,110 at at 1345 Chauffeurs, 494 U.S. S.Ct. may pecu- jurisdiction, be the ty whatever Tull, 417-18, at 107 S.Ct. (quoting they may to settle assume liar form which Bernhard, 1835-36); Ross v. at see legal rights. n. n. (3 Pet.) Parsons, 445-46. Accord at (1970).5 Thus, particular if a L.Ed.2d Terry, 494 No. 391 v. Local Chauffeurs adjudication legal action entails either 1339, 1344, Tull, rights, Parsons). short, any (quoting 1839, or, alternatively, implementation to an adjudication legal, opposed Curtis, remedies, 415 U.S. at legal scope within the equitable, falls must hon- the district court States, 481 Tull v. United Amendment. disputed to the extent that or a demand 412, 417, 107 concerning rights and those issues of fact (1987) (Seventh “require[s] a require a trial.6 remedies in those actions that jury trial on the merits ”). law.’ analogous to ‘Suits at common analyze proceed to Lockwood’s Sev- We example, Amendment em For the Seventh claim within this frame- enth Amendment legal right adjudication of a creat braces the work, concluding that he is entitled to a statute, right has no even where that ed right in a matter of this case. Our trial as among suits and actions known precursor must, patentee’s preserves, as it decision is, course, a law. Id. It to the common jury trial factual ability compel the Amendment’s simpler matter to state validity. questions relating than to mark out its scope in the abstract precision given in a case. with boundaries Declaratory Judgment 2. The Nature of particular To determine whether Actions equitable rights, we action resolves Act, Declaratory Judgment in of the issues examine both the nature (codified passed in eh. 48 Stat. 955 remedy sought. the nature of the volved and (1988)), §§ 2201-02 as amended at 28 U.S.C. statutory actions Specifically, the test an action unknown at common law.7 steps: created involves two Court, Tull, important component play 6. to note that the comes into in the Sev It is 5.A third expressly repudiated inquiry the contention "that both when a claim that is enth Amendment legal remedy public right. and the must be legal The Court the cause of action in nature asserts a right to in nature before the Seventh Amendment Amendment does has cautioned that the Seventh 6, jury trial attaches.” 481 U.S. at 421 n. automatically parly entitle a to a trial if added). (emphasis inquiry n. assigned adjudication S.Ct. at 1837 Congress can and has one, steps in our is not a mechanical and the public right legal concerning ex claim such necessary analysis are not in the nature of agency. clusively to an administrative Granfi search,” the Court nanciera, sufficient conditions. held, "Our Nordberg, 42 n. S.A. v. analog, taking single "is for a historical into n. 109 S.Ct. nature of the cause of action However, consideration the court). (assignment bankruptcy as remedy important Id. at and the as two factors.” disputes that an declara "[n]o [a one at 1838 n. 6. 422 n. invalidity] may properly tion of court,” brought an Article III this limitation remedy actually protection stretch back to “does not af 7. The roots of on Seventh Amendment pre-classical period. analysis.” Chauffeurs, Edwin 494 U.S. at 565 Roman law of fect our Borchard, (2d Declaratory Judgments (distinguishing Gran M. n. 110 S.Ct. at 1345 n. words, ed.1941). Maturing financiera). assuming arguendo Law of the Mid- Civil In other 90-101, English rights, litigation Ages, de- patents purely public dle id. at the modern confer action, claratory judgment developed concerning patent rights in Chan- in Article III those provided by cery century, protection in the late nineteenth was modeled courts comes within the Id. at 125-31. See also on that of Scotland. the Seventh Amendment. Wright, Arthur R. Miller & antitrust suit based on those A. contracts. Id. 10A Charles Mary Kay Kane, 502-03, Federal Practice and Pro 79 S.Ct. at 952-53. The Court Ed.1983). (2d Designed par required cedure trial on the antitrust issues ticularly potential litigants unable to grounds, reasoning to assist on Seventh Amendment through rights and liabilities settle their as follows: then-existing procedures, an action for “de [I]f Beacon would have been entitled to a claratory generis as much relief is sui and is damages against trial a treble suit Borchard, equitable.” supra note legal as deprived Fox cannot be of that Indeed, pas from the Act’s advantage because Fox took of the merger until of law and sage in 1934 availability relief to sue Bea- system in equity in the federal declara by jury con first. Since trial tory judgment actions were heard on both applies damages to treble suits under the law and the sides of the federal Clay- ... antitrust laws the Sherman and See, e.g., ex rel. Guest courts. United States sought ton Act issues which Fox (D.D.C.1936) (law Perkins, F.Supp. v. essentially jury questions. declaration were Wilkinson, side); F.Supp. Texas Co. v. Id. at 79 S.Ct. at 953. See also Ameri- side). (E.D.La.1937) (equity This has led (to Safety Equip., can 391 F.2d at 824 assess a number of courts to remark that declarato claim, Seventh Amendment “courts have ry judgments legal equitable, nor are neither looked to the basic nature of the suit which See, e.g., than both. Aero rather Gulfstream the issues involved would have arisen Con- space Corp. Mayacamas Corp., 485 U.S. gress Declaratory Judg- had not created 1133, 1140-41, Act.”). declaratory judg- ment Because the Sys., Fin. Inc. v. Flori Hartford legal equita- ment action is itself neither nor (1st Servs., da Software ble, inquiry required the historical Cir.1983); Safety Equip. Corp. American object Amendment takes as its (2d Maguire

J.P. & controversy. underlying nature of the To Cir.1968). variety formulations assess Lockwood’s trial in the not, however, distract from the should one prayer context of American’s for a declara- declaratory judgment point: basic actions invalid, patents tion that Lockwood’s are we are, purposes, for Seventh Amendment patent validity must therefore determine how legal equitable as or in nature as the contro adjudicated merger prior and absent on which Fed. versies founded. See declaratory judgment procedure. (“Declaratory Judgments”); R.Civ.P. 57 Adjudication Validity Patent 3. The Conner, Simler v. (1963) (“The 609, 611, 9 L.Ed.2d 691 fact that Declaratory passage Before the the action is in form a party Judgment Act in concerned essentially legal case should not obscure the present might its or future activities action.”). nature of the liability give patent infringement had rise Importantly, equitable procedure to test the Court has fol where, here, principle even at issue. Zenie Bros. v. lowed Miskend, 779, 781, 153, USPQ prayer joined F.Supp. a is with a 10 25 for declaration (S.D.N.Y.1935) (“It injunctive request for relief. Beacon The 155 is said a suit atres, 511, private party patent himself to 359 U.S. at 79 S.Ct. at 957. a who has Theatres, declaratory competitor’s patent declare a void is without Beacon true.”); plaintiff prayed precedent. charge The is Borchard for both a declaration that its Note, 802-06; Federal Jurisdiction Over contracts with movie distributors did not vio laws, Proceedings injunction Declaratory Judgment and an in Pat- late the antitrust (1936). Cases, 1287, preventing bringing from an ent 45 Yale L.J. the defendant narrowly declaratory re- George Pugh, Declaratory to relief in W. The Federal Reme- amounted dy: Justiciability, (such title), Jurisdiction and Related Prob- quiet the action to stricted areas as lems, 79, (1952) ("Although 6 Vand.L.Rev. 79-80 equity, general concept, there was no even in quite Anglo- it is true that from time immemorial action.”). American courts of had afforded what namely, patentee’s faith at bad party could wait for the worried The tices — tempts destroy party’s business with to bring infringement suit and patentee to infringement suits. groundless threats invalidity affirmative patent’s as an raise the See, Paper Dittgen, v. e.g., Racine Goods Co. validity simply was not liti- Patent defense.8 (7th Cir.1909); Farquhar A.B. F. 631 Co. infringement claim. gated in from an isolation (3d Harrow 102 F. 714 v. National Water, in Arrowhead Indus. As we noted Cir.1900). successful, action, But this even Inc., Ecolochem, could owners Inc. v. ques produced no ultimate decision on the suits without ever threaten validity, of what a tion of and thus fell short them, bringing engaging “in a danse maca- invalidity for bre, brandishing a Damoclean threat with a Bros., eventually offer. Zenie would 731, 735, sheathed sword.” 156; USPQ Emack v. F.Supp. at (Fed.Cir.1988). USPQ2d Where (C.C.N.D.Ill.1888). Kane, F. 46 infringe- patentee a for had initiated suit subsequently decided to withdraw American maintains its declarato ment and trial, against in or alleged infringer ry judgment action Lockwood prior the claim pat way patentee to test of Lockwood’s had no to force the to revive der patents is infringement claim so as to allow for a ents. Insofar as the adjudicated, validity. Leach v. Ross American’s action resembles determination 88, 91, patent infringe USPQ nothing so much as a suit for Mfg., Heater & (2d Cir.1939). defense of The suit an ment which affirmative 560-61 invalidity pled, of an has been and Lockwood’s infringer accused faced with the threat bring a trial must be determined infringement action could was an action competitive prac- accordingly.9 primary The difference be- in state court for unfair specifically, Invalidity currently statutorily specified a Id. at 9 S.Ct. at 94. More 8. Wood, 282(2) (3) Supreme parte affirmative defense. (1988). 35 U.S.C. Court noted in Ex a — long repeal It has been a defense in the case scire issued at common law "to facias Chambers, See, e.g., patents surreptitious 8 F.Cas. law. Evans which have been obtained (No. 4,555). (C.C.D.Pa.1807) (9 Wheat.) suggestion.” 837-38 ly, upon false (1824). Mowry 6 L.Ed. 171 Accord (14 Wall.) 434, Whitney, words, single ... "[o]ur In other search (1871). contemporary analog L.Ed. 858 analog, taking historical into consideration the writ is an action for a declaration of remedy thus nature of the cause and the as two im- Tull, conduct, factors," unenforceability inequitable portant 481 U.S. at 422 n. due to produced satisfactory invalidity. Kingsdown one S.Ct. at 1837 n. analog namely, has due to See Medical Con Inc., patent infringement a suit for sultants v. Hollister F.2d — (Fed.Cir.1988) (in banc) USPQ2d which the affirmative defense of has pled. been (finding inequitable justified only conduct conduct, light where "the involved viewed in facias, may The British writ of scire while it culpa indicated] all the evidence ... sufficient appear analog case at first to be closer deceive”), bility require finding intent to bar, brought by king or in his name and denied, cert. fraudulently patents. was used to attack obtained (1989). Court, Miller, per Justice reviewed Assuming, arguendo, that a writ of scire facias repeal patents the use of this writ in United repeal century is the closest 18th Telephone States v. American Bell analog to American’s action for a declaration of 32 L.Ed. 450 That patent invalidity, the result in this case remains history follows: was as noted, remedy the same. As Blackstone "the patents authenticating grants Charters and repeal [a] a writ of scire personal days privileges facias were in the earlier *261; chancery.” 3 Commentaries accord 5 English government made the crown. Comyns, Digest England John A of the Laws of They directly supposed were to emanate from (Samuel ed., London, them, 274-75 Rose A. Strahan power king, revoking and ... 1800) ("A repealing all, ed. 4th scire so far as could be revoked at was in facias patent may Chancery, Chancery."). be sued in king, by per- the and was exercised him as a however, equitable pow- exercised both privilege. revoking pat- mode of sonal ents, however, This disuse; chancery ordinary, ers: "The court of is either as to have seems fallen into law, extraordinary, a court of common as a and the same end was attained the issue of facias, equity.” Systematic Arrangement king, A writs of scire the name of the to court of of why Eng- patents First show cause should not be Lord Coke’s Institute of the Laws of ed., London, (J.H. repealed or revoked. land 328 n.D Thomas S. Pennsylvania James General Ins. infringe- jury.”); and the American’s action tween formerly have been Co., (D.C.Cir.1965) (“The that would ment suit 349 F.2d adjudication of is that required for an declaratory judgment to trial in a invert- parties’ positions here have been depends action ... on whether the action is ed,10 operate an inversion cannot to and such simply counterpart equity— a of suit Lockwood’s Seventh frustrate is, an action in that whether could be Theatres, rights. Beacon at declaratory judgment maintained were un Owens-Illinois, Inc. v. Lake 953; at action is an available —or whether the (3d Co., Shore Land 610 F.2d lawsuit.”); Fidelity Johnson v. & inverted Cir.1979) (“If declaratory judgment ac- (8th Casualty 238 F.2d 324-25 Cir. existing tion does not fit into one of Hargrove v. American Cent. Ins. 1956); essentially in- equitable patterns but an (10th Cir.1942); Pacific brought action one verted law suit —an McDonald, Indemnity Co. v. at common who would have been a defendant (9th Cir.1939).11 to a parties have a law —then Holdsworth, 1818); History declaratory judgment A for of Brooke 1 William "is sub- 1938) ("We (6 English infringement parties have of Law 449-50 ed. stance suit with ini- Chancery always possessed reversed”); al., some tially seen that had James W. Moore et 6A jurisdiction; jurisdic- ("A ¶ and that that common law Federal Moore’s Practice 57.20 57-213 to exist after the common law tion continued declaratory brought by the accused in- ... because courts had become distinct tribunals fringer purpose securing judicial is for the of a Chancery had the close connexion which the of plaintiff's immunity of from determination writs, original with the with the issue of operation rights of the laws—not to assert subsequent proceedings of these on some sought provided by those laws.... The issues to Moreover, writs."). ordinary, or it was in this adjudicated precisely the same as in an law, chancery part of common of writ suit[.]”). infringement originated. repeal a was scire facias n.D; Court's recent decision in Cardi First Institute at 328 Holdsworth Coke’s Cardinal, contrary. the Court ordinary part chancery severely nal is not of was 452. The rejected practice "routinely particular: our of noteworthy “it reviewed [had] limited in one jury.” vacating declaratory judgments regarding patent power Coke’s First Insti- to summon a Thus, raising noninfringe validity following tute at 328 n.D. genuine in a scire a determination of facias - fact, -, proceeding of material issues S.Ct. at ment.” chancery suspended pending a determina- Court held that the affirmance of a district King's by jury not, tion a summoned in the Court of finding noninfringement court’s does Bench, itself, at -, the main law court. As Lord Coke wrote validity. question moot the Id. Institute, Thus, in his Fourth purposes of 113 S.Ct. at 1978. for moot issue, (the parties "If the descend to this court ness, party seeking a "[a] try by jury, Chancery) but the Lord cannot independent invalidity presents a claim by his Chancellor ... delivereth the record at -, infringement." patentee’s charge Id. King’s proper into the Bench to be tried hands however, Viewed, from the 113 S.Ct. at 1975. had, after trial to be remanded there ... and jurisdictional require perspective of Article Ill's Chancery, judgment to be into the and there controversy, claims are of a case or the two ment intimately given.” party actually has related: "If ... a Coke, (quoting at 452 Fourth Instit. Holdsworth patent, charged infringement with been 80). proceeding repeal patent by A the writ is, controversy necessarily, a case or ade there was, respect with to the factual of scire complaint, facias quate counterclaim, support jurisdiction or a therein, legal, rather than an issues raised [Declaratory Judgments] under the affair, thereby entitling parties equitable, to a Id. Act.” States, right. Hollister v. United as Cf. (8th Cir.1906) (judgment 145 F. 780-83 commentators have recommended 11. Numerous recognizance reversed scire for forfeited facias particu approach lawsuit” this “inverted trial, having for a one been and remanded quandaries the Seventh Amendment histor lar denied defendants in violation of the Seventh applied analysis ical Plucknett, Amendment); A Theodore F. Concise 400; Fraser, George Borchard at B. actions. (5th History of the Common Law 392 n. 2 ed. Actions, Judgment Jury Declaratory Trials in 1956) ("There grounds sugges- seem no James, (1967); Fleming L.Rev. Iowa anything 'equitable' ... there is about tion Actions, Right Jury 72 Yale L.J. Trial in Civil facias."). scire McCoid, (1963); C. Procedural 685-86 John Study Right Jury A and the Trial: analogy 10. Our to an inverted action Reform Beacon Westover, Theatres, U.Pa. support among variety Inc. finds Shimer, Comment, Chisum, See, Zachary e.g., L.Rev. Donald S. commentators. (suit Declaratory Jury Actions: The Trials in Patents at 20-428 n. 109 20.03[4][c][vi] Relief (5 How.) Underhill, 1, 5-6, 12 Right Jury Trial at L.Ed. 4. The Patentee’s (1847). However, facing patentee if the Law Common infringement sought past acts of nevertheless demonstrated, As we have the Sev enjoin infringement, future acts of preserves to Lockwood the enth Amendment patentee only bring equity, a in could suit right a trial on factual same invalidity ordinarily and would the defense questions relating validity in a Railway to the bench. Root v. be tried enjoyed that he have would (1881).12 189, 205-06, 26 L.Ed. 975 adjudi validity patents of his been had the English practice, both and American Under patent infringement in ac cated a suit then, patentee who decided in the was cording eighteenth-century English prac jury trial on the first instance whether a tice. questions relating factual would be compelled. eighteenth-century England, allegations In infringement in patent could be raised cannot, consistent with the Seventh We equity. and in both actions at law suits Amendment, deny that same Lockwood Story, Equity Joseph Commentaries on Ju validity of his choice because the risprudence (photo, §§ re 236-39 in patents comes before the court a declara- 1988) (13th 1886); print ed. 5 Moore tory judgment invalidity action for rather ¶ an Because action at law for 38.11[5]-[6]. in than as a defense suit. damages per could not obviate the need for to have factual Lockwood is entitled petual litigation infringe over future acts of questions relating validity in this case ment nor ascertain the full extent of the right. tried to a as matter of

injury by past done to one’s interests acts of infringement, equity gave paten courts of Counterarguments C. American’s option pursuing injunctions tee the accountings against alleged infringers. American maintains that its action for a Story §§ invalidity entirely 933. The choice of forum trial, nature, remedy, equitable provides and thus of the method of in and thus Lock- patentee. grounds was left with the Nineteenth-cen wood no to assert that he has been tury practice wrongfully deprived American followed the same of a trial. Ameri- not, however, pattern. Seymour, single basic Marsh v. can eigh- does cite a (“Owners where, teenth-century English 24 L.Ed. 963 of a suit in patent may alleged infringer plaintiff, ... seek redress for the unlawful with the as secures, improvement adjudicated use of the which it in patent. court Court, Instead, a suit at in Circuit law or American cites a number of cases equity, option_”); proposition at their v.Wise Grand for the courts are “[t]he (C.C.W.D.Mo. Ry. F. holding Ave. ... in unanimous there is no 1888) (“It may patentee by jury is now settled that a in seeking to trial an action equity, according invalidity sue either at law or declaration of equitable addition, unenforeeability.” the relief demanded is of American nature.”). patentee sought only broadly If the dam asserts that “an action for declarato- law; ages, patentee brought ry nature,” ordinarily equitable an action at relief is such the defense of and that Lockwood’s Seventh Amendment jury, assuming may tried to the that a disposed accordingly. had claim We turn, Taggart, arguments been demanded. Battin v. consider each of these (17 How.) 74, 85, 15 (1854); concluding deeply L.Ed. 37 Wood v. that both are flawed. Circumstances?, Exists, Right country provided only damages but Under What for the award of UCLA L.Rev. law, John M. in an action at with the ato trial Townsend, Comment, Right by Jury to Trial Root, 191-92; jury. See 105 U.S. at 5 Chisum Actions, Declaratory Judgment 3 Conn.L.Rev. patentee's § injunc- 20.02. The to seek an 597-98 non-diversity tion in federal suits was added Root, statute until 1819. See adoption 12. In before the of the Seventh 192; 20.02[1], Chisum Amendment in statute in this

977 (9th Cir.1979), USPQ a trade- Decisions Declaratory Judgment 1. case, mark the court focused on the fact that the absence of that maintains American injunctive declaratory only and claims and for a jury trial in an action right to a adjudicated, to be counterclaims remained invalidity has al- declaratory judgment of concluding equitable. action was In that the a number of cases. We ready been settled Anti-Monopoly, howev- neither Shubin nor briefly.13 these cases discuss er, did the Ninth Circuit address whether on two cases primarily relies American declaratory for a of invalidi- In v. United Shubin the Ninth Circuit. from pat- ty standing entitles the defendant alone Court, USPQ Dist. States questions a trial on the factual entee to denied, (9th Cir.), cert. right. relating to as a matter of the Ninth for the broad Neither of the cases stands that, the defen because concluded Circuit would have us draw proposition America only injunctive relief sought patentee dant them. from alleged infringement, the counterclaim of its two from the American also relies on cases a infringer’s action for Mills, In Beaunit Inc. v. Circuit. Second bench. be tried to the could Eday Corp., F.2d Fabric Sales to the fact parties stipulated had Because (2d Cir.1942), USPQ the Second occurred, yet infringement had that no question whether the dis- faced the Circuit “peculiar holding to the court limited its striking the trict court’s order defendant’s by its as modified pleadings of ap- purposes final for demand was at stipulations.” Id. admissions and dismissing appeal peal. After as inter- short, for dam no claim USPQ at 406. locutory, ponder on in dicta to the court went brought. Applying ages could have been patentee’s claim the merits of the defendant Theatres, as fol the court reasoned Beacon wrongfully it had been denied lows: expressing trial. While some doubt permanent seek The defendants that, suggested given the question, the court infringement. injunction against threatened claims, patentee’s nature of the “incidental” legal issue. Defendants’ This is not question could best the Seventh equity. remedy would be principle that according to the be resolved (emphasis in USPQ 405-06 jurisdiction Id. “equity having should assumed focused, have, court as we original). The complete relief.” Id. at go on to afford patentee Court, of action the defendant USPQ the sort at 199.14 brought may at common law to raise equity have referring could to the doctrine paten in the ease. The presented legal rights order the issues determine incidental injunction relief, it clear permanent complete for a has since made tee’s counterclaim afford applied in the infringement, paired may with its be against future “that no such rule Queen, any Dairy claim for stipulation to the absence federal courts.” Kennedy v. also damages, the court at 896.15 See convinced Cir.1969) (3d purely equi in the case were Lakso that the issues case) (“As Likewise, a result of Anti-Monopoly, (patent infringement ones. table Dairy Theatres and [in the decisions Beacon Group, 611 F.2d Mills Fun Inc. v. General American, jurisdic- questions to the exercise of its incidental Filmon Process case cited 13. One tion, questions Corp., notwithstanding they may involved a claim for af- 379 F.2d at infringement, injunctive titles.”); not an relief for rights fecting legal Cochrane and invalidity. declaratory judgment of 780, 782-83, action for Deener, 24 L.Ed. 139 question nothing we con- It has to teach on the compelled (patentee to sue at law to is not sider here. in that forum of his establish obtaining equitable precedent to as a condition relief). Root, (Patent at 205 Act of 1870 Cf. upon "proceeds the idea that the court purpose having acquired jurisdiction 15.Dairy Cochrane Queen thus overrules alleged equitable [against administering relief silentio, Root, extent that bill, albeit sub may sought by infringement] determine itself, equity. rely principle proceeding, on this directly all and for in the same (S.D.N.Y. Queen], Brody Kafka, USPQ that an action which the doctrine 1947), damages equitable seeks both relief is involved an action predominantly equitable may invalidity and therefore judgment noninfringement; reversed.”); jury, not be tried to a has been patentee in neither case did the defendant McCoid, 11, Reform, supra Procedural note damages, counterclaim for (same). Beaunit, offering at 5-6 more little though timely jury both defendants made suggestion Supreme than a that the Court cases, demands. In both court the district repudiated, has since American noth- offers that, given plaintiffs request concluded ing at all. injunctive plaintiffs for relief and the failure damages, to counterclaim for the issues in Mfg. Corp. Packaging In Diematic In equitable volved were and should thus be dus., (2d 975, Cir.), USPQ 241 First, tried to the bench. because denied, cert. U.S. courts, the decisions of district Hall and Bro- (1975), Beaunit, as in the court dy persuade can at most rather than bind us. whether a court considered district order was Second, while we concede that these cases case, purposes appeal final for an —in nearly indistinguishable involve actions from staying making order arbitration. its de Lockwood, against American’s action we con termination, the Second Circuit stated that holdings clearly clude their have been equitable an action “is to be considered Theatres, vitiated both Beacon at U.S. purposes equitable [these] unless the relief Queen, Dairy 79 S.Ct. at sought ‘merely can be characterized as inci ” 472-73, 896-97, Diematic, 978-79, 82 S.Ct. and thus dental.’ 516 F.2d at Chlorine, decline to follow them. in USPQ We also note that (quoting at 244 Standard Leonard, (2d the more recent case of Inc. v. Minnesota Automo Cir. 1967)). tive, Stromberg Hydraulic Inc. v. general policy against While the Brake & al Co., Coupling court, lowing interlocutory appeals justified citing the district both presumption contrary in equitable Brody that the action was in decision and the Su Diematic,16 preme in policies underly subsequent this case the Court’s decision Beacon Theatres, ing right by jury require just to a trial came to the same conclusion re opposite Queen, approach. Dairy garding See patentee’s defendant (“It 369 U.S. at 473 n. 82 S.Ct. at 897 n. ato trial as we come equitable would make no 165, 166 (D.Minn.1970). difference today. USPQ clearly outweighed cause cause.... long any legal As cause is involved the 2. Declaratory Nature of Relief control.”)

jury rights (quoting it creates major argument American’s against second Thermo-Stitch, Inc. v. Chemi-Cord Process Lockwood’s trial this case (5th Cir.1961)). ing Corp., 294 F.2d focuses on what it invariably maintains is the holding Because the of Diematic was animat equitable declaratory nature of judgment ac- by policy quite contrary ed concerns to those tions. Supreme Court’s Seventh Amendment jurisprudence, pattern we decline to our deci asserts, example, American that its de- sion in this case after it. claratory judgment analogous action is most

Finally, argues timet, early American two equitable quia to an bill and that concerning district court decisions declaratory judgment inherently actions are trial in equitable. ac- primarily American relies tions support posi- Supreme under the laws its Court’s decision Great Lakes Kish, tion this court. Dredge Both Hall v. Huffman, & Dock Co. v. (N.D.Ohio USPQ 1951), 293, 300, F.R.D. 63 S.Ct. 87 L.Ed. 1407 equitable, If the order would not have been Court overruled the Enelow Ettelson immediately appealable according to the doc doctrine after Diematic was decided. Gulfstream trine of Enelow v. New York Ins. Aerospace Corp. Mayacamas Corp., Life (1935), 79 L.Ed. 440 Metropolitan Ettelson v. Ins. (1988). Life 87 L.Ed. 176 Story §§ generally debt. See propositions. these support both clear, however, that Lakes, a chal- It is the bill reviewed 156-71. the Court In Great constitutionality Louisiana nothing to teach us about lenge quia timet has program, compensation unemployment jury trial in this right to a Lockwood’s as a the district court challenge initiated in infringement damages inversion of an specific judgment action. declaratory suit. Lakes the Court Great question before all for a American also stresses that suits have led which “considerations was whether that were enjoin equity to refuse courts of federal Declaratory passage of the brought after the taxes, excep- in save of state the collection merg in but before the Judgments Act 1934 cases, in the require a like restraint tional system in equity in the federal er of law and declaratory judgment procedure.” use equity. in Ameri brought as bills 1938 were Analogizing to 299, 1073. 63 Id. at S.Ct. following examples of cites the cases as quia in suits can the courts the discretion of that, declaratory timet, having request for re including been held suits the Court adjudicate lief, four-year peri what is essential- in that upon brought equity, to in “Mailed action, Co., the district ly equitable cause of an Process Bliss Co. v. Cold Metal od: E.W. any suit in (6th as in other Cir.1939); was as free 105, court USPQ 342 41 upon estab- grant withhold relief equity to or Gersten, F.Supp. 22 877 Derman v. 300, 63 Id. at equitable principles.” lished (E.D.N.Y.1938); Corp. Duro Test v. Wels not, as Lakes does at 1074. Great Am., F.Supp. 21 Lighting Co. bach Street proposition for the suggests, stand American (D.Del.1937); Incubator Co. v. 260 Petersime al- judgment actions are declaratory USPQ Bundy 34 251 Incubator usually, equitable for Seventh ways, or even (S.D.Ohio 1937); Novelty Corp. v. Cromwell No Seventh Amend- purposes. Amendment (S.D.N.Y.1937); USPQ Lionel Carp, 36 case.17 arose ment issue whatever (E.D.N.Y. Filippis, F.Supp. Corp. v. De Weber, 1936); Inc. v. Williams- Mitchell & Contrary American’s asser to Inc., 954, Mills, USPQ F.Supp. bridge alleged tions, appear that an it does not (S.D.N.Y.1936); v. and Ladenson Co. quia timet to 506 have used a bill infringer could (7th equity. Overspred in a court of Cir. challenge patent Stoker 1937). any cases rely informed of such cases have not been American can on these We quia timet were used by declaratory Bills American. fact that only to show the mere relating to such as controversies actions sought in courts judgments were Challen, title, 110 U.S. Holland v. property a fact merger equity, law and before 495, 497-98, 20, 15, 28 L.Ed. 3 S.Ct. cases American dispute. None of the attempts private cancel instru or to equity was the whether cites discuss ments, Fire Ins. Di v. Camden Giovanni Amend or whether Seventh proper forum 68, Ass’n, L.Ed. 56 S.Ct. rights were at issue. ment (1935). generally were quia Bills timet sum, either American cites the cases danger that a if there was a appropriate injunc- request for presence of a focus on the or lost if might prejudiced at law defense request of a and the absence tive relief Giovanni, 296 immediately. Di not tried other damages involve issues monetary also Equity could 56 S.Ct. litigants’ Seventh than the appoint a re quia timet to entertain a bill is a discuss none of the cases interest, rights. What require protect some ceiver whereby al- an of action discharge common law cause security, compel a debtor or to 766-67, 66, 70-71, 27 L.Ed.2d Supreme Court the other same is true of 17. Gardner, (1971); proposition that for the v. cases American cites Abbott Lab. (1967); ordinarily equitable in na- "declaratory relief is 18 L.Ed.2d cites concern the cases American Rickover, ture.” All the v. Assocs. Public Affairs grant discretionary de- of the decision nature particular equitable cause of claratory relief in Bank, Peoples Eccles Seventh Amendment rather than the 92 L.Ed. Mackell, See Samuels trial. (6)American’s leged infringer patentee could call the into request alternative for reis- adjudication court patent’s for an of a prece- validi- sue of the March 1994 order in ty. And evidence of such a common law dential form is dismissed as moot. support position

cause of action would ORDER

American takes this case.

Jan. III. CONCLUSION suggestion rehearing A having in banc respondent been filed in this We conclude that a suit for a response having thereto been invited comparable is more petitioner, the court and filed any lawsuit for than to equitable historical action. Prior to the De- THEREOF, UPON CONSIDERATION Act, claratory Judgments alleged infring- an equity specifically er had no action in suggestion ORDERED that for re- challenge and obtain be, hearing is, hereby banc and the same adjudication thereon. Because a lawsuit DECLINED. patent infringement for could be maintained law,

in patent validity a court of was an issue Dissenting opinion denying from order that, raised, could be in decided a court of rehearing by Judge in banc filed Circuit law, in contradistinction to an issue that in Judge NIES which Chief ARCHER and equity, could be decided in a court of Judge joined. Circuit PLAGER such as in obtaining patent. fraud Be- NIES, Judge. Circuit patent validity purely cause equita- is not an issue, pending ble and because patent litigation declarato- It is rare for to an present ry judgment comparable appellate action is most to an court with constitutional is- patent lawsuit, inversion of a rarity. sues. This By petition case is that a mandamus, Lockwood is entitled for patentee sought under the Seventh a an order by jury Amendment trial jury to in this for a declarato- trial on a ry judgment being action pursued which is counterclaim which patent seeks to have a American to determine of his declared invalid. patent The merits of the patents. panel are not before us. A of this court that guaran- holds the Seventh Amendment

Accordingly, jury tees a trial on that issue. The extent to IT IS ORDERED THAT: rights which Seventh apply Amendment in a patent infringement suit has not been ad- (1) 11, The court’s March 1994 order dressed Court this centu- granting petition Lockwood’s mandamus is ry. Bench patent trials in cases became the vacated. 1870, norm after the Patent Act of the stat- (2) petition rehearing American’s for is gave equity ute which power courts the to granted. damages. 8, award common July law Act of 1870, 230, 55, ch. (3) Stat. 198. In Blon- American’s motion for leave to file a der-Tongue University Lab. v. Illinois reply granted. is Found., 336 n. (4) petition Lockwood’s for writ of manda- (1971), 1447 n. granted. mus is The district court is direct- Supreme year Court noted that in the three ed to reinstate Lockwood’s demand. period 1968-1970, spanning only 13 of 382 request prece- American’s letter for a patent going cases trial were trials. deciding petition dential order suits, for however, writ of More than half such are now granted. mandamus is juries.1 tried to No important more nor years 1. In the pat- fiscal 163 of 274 of Administrative Office of the United States Courts, (available ent jury. year trials were tried to a In fiscal Table C-4 from the Adminis- juries. Division); trials were 70% tried to trative Office's Statistics Annual Re- Preliminary Report port Annual of the Director of the Director of the Administrative Office ques- a 3.Policy: The issue law arises an issue contentious Further, issue ne- it is an law. tion of role of appropriate than jurisprudence underlying fact cessitating resolution litigation.2 juries jury, judge, not the by the issues jury trial right to a question I do legal determination a correct ensure infringe- damages for suit adheres uniformity of decisions. statute.3 current patent under the of a ment right exists However, an overall saying such Rights Involve Public I. Patents be must issues nothing about which us tells Nordberg, 492 v. Granfinanciera, S.A. litigant jury upon demand decided 106 L.Ed.2d judge to decide. which issues stated: “The Sev Supreme Court Bernhard, Ross litigant’s right to protects a Amendment enth (1970), holds, “The legal in action is only if a cause trial depends question ‘private matter of involves a nature and rather tried ” issue the nature of 4, 109 2790 n. 4. at 42 n. right.’ Id. action.” overall than the character rights,” in “public concept of Originally, the rights,” was limited “private contrast inval- pronounces panel order party. government was a litigation where customary in a issue idity defense Pipe v. Marathon Pipeline Constr. Northern “right” re- and that infringement suit 50, 69, 102 Line, declaratory in a mains available concept ex was invalidity. seeking a declaration government litigation where panded to with, it begin However, “right” exists if no Union Carbide party not a Thomas judg- carry over cannot 568, Prod., 473 U.S. Agric. ment action. in 3325, 87 L.Ed.2d order re- Lockwood disagree with the I 54, at at Granfinanciera, the jury decide to have a right specting the 2796-97. underlying facts —for of issue —or validi the issue of held that court has This following reasons: the rights, not public patent involves ty of a patent in Patlex As stated rights: rights. The 1. Public private (Fed. 594, rights. rights private F.2d Mossinghoff, not public Corp. involves is jury rights patent ad- Cir.1985), of a valid grant Amendment “[T]he No Seventh Joy rights. public of See also public to a determination a concern.” primarily here 226, Manbeck, F.2d Inc. v. Technologies, test: 2. Historical — —, denied, (Fed.Cir.), cert. in sued plaintiff a A. In (1992). England. patent in invalid cancel an infringe brought an Patlex, patentee had the trial. he asked in which ment suit declaratory judgment action B. A invalidity. week A pleaded The defendant flipside the of is not invalidate trial, con with the scheduled before the for dam- infringement suit law common defendant success- judge, the trial sent of the ages. Circuit, 1993), 153 F.R.D. Appeals for the Federal (temp. ed. States Courts of the United (Panel Ex- "To What Discussion: C-4; the 236-52 Report Director Annual Table Cases?”); The Courts, in Patent be Used Juries tent Must States Office United Administrative Reform, A Law Patent Advisory on Commission C-4 Table Commerce,pp. 107-110 Secretary Report 1992). (August Conference e.g. Annual Judicial 2. See Second the Feder- Appeals for Court of the United States (1984) (Panel Circuit, F.R.D. 370-88 al part: § in 281 states U.S.C. 3. 35 on Be Limitations “Should There Discussion: remedy by civil shall have Cases?”); patentee A also See First Patent Use of Juries patent. his the United States Conference of Annual Judicial part: Circuit, § 284 states 35 U.S.C. Appeals for Federal Court of jury, by a damages found are not (1983); Ju- When Annual Eleventh 653-62 F.R.D. them. shall assess court States Court of the United dicial Conference fully petitioned the Patent and Trademark common law.... At the same time there (PTO) matters, Office to undertake reexamination of involving public rights, which patent. stayed The district court the suit may presented be in such form that awaiting patentee reexamination. judicial them, power capable acting sought enjoin pro the Commissioner from susceptible judicial and which are deter- reexamination, ceeding challenging with mination, congress may may but which or constitutionality proce of the reexamination bring cognizance within the dure, which was added to the statute States, may courts of the it United paten §§ in 1980. 35 U.S.C. 301-307. The proper. deem asserted, alia, tee inter that the reexamina Murray’s Lessee v. Hoboken Land and Im procedure deprived tion him of a Seventh (18 How.) 272, 284, 15 provement have determine (1856); Granfinanciera, L.Ed. 372 patent. of his issued As correct 2795-96; Pipe 109 S.Ct. at Northern noted, ly the administrative reexamination line, 458 U.S. at 69 n. would allow the PTO to hold the 23; 2870 n. Roofing Atlas Co. v. Occu affording invalid and cancel it without him a Comm’n, pational Safety and Health Review 307(a). § trial. 35 U.S.C. While review 451 n. 1267 n. may of such administrative action be ob Thomas, see also directly tained this court or via a district S.Ct. at 3336. As stated appeal, court before such trial is Pipeline: Northern any part afforded in proceedings. of these Congress statutory right, [W]hen creates 35 U.S.C. discretion, clearly it defining has the panel although Patlex noted that va- right, presumptions, to create or as- lidity normally litigation raised in between sign proof, prescribe burdens of reme- parties, two question usually “the threshold dies; may provide persons also PTO, is whether authority under the seeking to vindicate that must do so assigned byit Congress, properly granted particularized before tribunals created to patent. At issue is a that can perform specialized adjudicative tasks Patlex, government.” conferred do, right. provisions related to that Such 758 F.2d at panel 604. The further rea- sense, in a judicial affect the exercise of soned: power, but are also incidental to Con- The purpose reexamination statute’s is to gress’ power right to define the that it has correct government, errors made the created. (not remedy governmental pri- defective Pipeline, Northern 458 U.S. at vate) action, and if need be to remove (footnote omitted). at 2878 patents that grant- should never have been

ed - A defectively examined and patent grant there- A is of this nature. The erroneously granted patent fore yield must patent grant and accompanying rights are Congressional purpose reasonable of purely statutory, I, albeit based on Article facilitating governmental the correction of section 8 of the Constitution which is “both a Congressional mistakes. This purpose grant is power of and a limitation.” Graham v. correct, presumptively and we that it John Deere find carries no (1966). insult to the Seventh Amend- ment and Article III. Moreover, Congress placed patent has va- added). (emphasis Id. lidity cognizance determinations within the of Underlying concept “public rights” both III Article I Article trial tribunals. power is the Congress public to define a Reexamination the PTO with review grant which jury need not include a the Board of Appeals Patent and Interfer- efficacy. determination of its ences of the PTO is the most recent

[Cjongress can judi- [not] withdraw from empowerment By specif- outside III. Article cognizance any which, cial matter from its ic amendment of the Tariff Act of nature, subject is of a suit at the International Trade Commission also must Supreme precedent holds that Court in connection Since patents pass apply to Amendment does not the Seventh importation in the practices trade with unfair determinations, public rights and the tit. P.L. Trade Act of goods. (codified public right, panel’s or- involves a grant III, § 88 Stat. ch. 1337(c) (1988)). with both the is conflict der § at 19 U.S.C. precedent. our Court in accord provisions are legislative These rights.4 They are public concept of with Historical Test II. right to a a constitutional in accord with not declaratory judgment action this The validity. litigant A issue of jury trial on the present a situation which appeal fails to right and constitutional have a cannot historically party trial. had the same issue. right on constitutional have a involved, a public rights Sev- issue If James, Jr., Geoffrey C. Fleming See right to a trial on enth Ed.1985) (3rd Hazard, 8.11 Procedure Civil following statutory test: claim must meet holding panel 450. The misreads Although of the Amendment “the thrust Helpers Local No. & Chauffeurs, Teamsters preserve right to trial as was to 558, 110 S.Ct. Terry, 494 U.S. 391 v. 1791,” the Seventh Amendment existed (1990) (“Teamsters”) applies brought to enforce also to actions rights limitation has public stating that the analogous com- statutory rights that analysis this jury trial because no effect on ordinarily action decid- mon-law causes of panel III court. in an Article case is in the late English law courts 18th ed only apply when public rights states customarily century, opposed to those adjudication of the “assigned Congress has admiralty. by courts of heard public right ex- concerning such legal claim Loether, 189, 193 [94 Curtis agency.” Ma- clusively an administrative 1005, 1007-08, L.Ed.2d 260] added).5 (emphasis n. 5 jority op. p. any reasoning eliminate panel’s would analysis is familiar. The form of our rights issue public problem respecting “First, statutory compare we brought in an Article III once a claim can be 18th-century brought in the courts actions explain the cannot That rationale court. merger prior to the England patentee liti- case which denied Patlex Second, equity. we ex- of law and courts validity. jury to determine gant right to a sought and determine remedy amine the panel’s overruled under Patlex must be equitable in nature.” legal or whether it is reasoning. States, 417-18 Tull v. United 365] L.Ed.2d [107 correct and that Patlex is I believe omitted). (citations The second A constitutional controls. Granfinanciera important more stage analysis to determine Id., at at 421 S.Ct. [107 first. than the public grant. Con- attach to this does not balance, If, these two factors on validity entirely 1837]. gress place the issue of could jury to a party a is entitled indicate that I trial court with an Article hands of the Amendment, we The trial under if it to do so. particular expertise chose may assign Congress must decide whether option by constitutional- panel wipes out of the relevant assigned validity. and has resolution of jury rights on the issue izing Claims, routinely issues of decide courts also State Federal States Court of 4. The United royal- by patentee/licensor court, in suits a patent long invalidi- I has ruled Article Atkins, Lear, Inc. v. against See ties a licensee. compensation patentee from ty in suits a 1902, 1913-14, 675-76, 653, 89 S.Ct. patented invention use of the United States for a (1960); Light & v. Paris Gas Pratt L.Ed.2d supplier. cannot be ex- government This Coke, 42 L.Ed. 168 U.S. ground involves solely plained (1897). Congress immunity. sovereign has waiver supplier away patentee’s to sue the taken pub- Supreme limited Court has never jury The trial 5. entails a otherwise which assign- rights "exclusive" doctrine such lic panel analysis. U.S.C. under (1988). ment. Tull, adjudicative position. repudiated claim to a non-Article III In the Court body government’s attempt does not use a as factfinder. to divide a “Clean Wa penalties ter Act action for civil into a cause Granfinanciera, at 492 U.S. remedy, analyz[ing] of action and a [ ] each stage analysis at 2790. “The second of this component if the other were irrelevant.” [i.e., remedy] important is more than the 6, 107 Tull 481 U.S. at 421 n. at n. S.Ct. Additionally, steps first.” Id. both must be By completely disregarding any analysis 6. Teamsters, satisfied. 494 U.S. at remedy sought panel in this (“we S.Ct. at 1345 both examine the nature accomplishing is specifically what the Court remedy sought”); the issues involved and the rejected in Tull.6 Tull, (“the 481 U.S. at at 1835 S.Ct. Court must examine both the nature of the Century English A. 18th Practice. Curtis, remedy sought”); and of the panel prior The asserts that to the Declar (“a 415 U.S. at trial atory Judgment “[v]alidity Act in sim rights must be available the action involves ply litigated was not in isolation from an typically and remedies of the sort enforced In Eng claim.” fact it was in law”). an action at land at the time the Seventh Amendment panel recognizes part The the two test adopted. action, separate was A nullification (18th Century analog remedy) AND an- present day similar to declaratory judg repeatedly changes nounced but the “and” to action, brought ment could be before the panel “or.” The states: English equity England, prior court. particular [I]f action entails either the 1791, anyone challenge patent’s could valid Tull, adjudication legal rights, 481 U.S. ity by a scire equity. writ See facias 1839], or, at 425 alternatively, [107 S.Ct. at (14 Wall) Mowry Whitney, 81 U.S. remedies, implementation Cur- 439-40, 20 L.Ed. 858 United States v. tis, 1009], [94 S.Ct. at (2 Stone, Wall) 525, 535, 17 L.Ed. 765 district court must honor a demand to repeal “The scire facias disputed the extent that issues of fact con- brought in chancery where the cerning rights those require and remedies though was of record. country And in this a trial. writ scire is not use as a facias Majority op. p. panel’s holding 972. chancery proceeding, the nature of the chan unprecedented. panel’s cery jurisdiction reliance on a and its proceeding mode of support footnote Tull to its truncated have established appropriate it as the tribu right analysis wrong. maj. op. See at 972 nal annulling for the grant n. A reading 6. (14 the entire Tull government.” footnote from the Mowry, 81 U.S. Wall) rejected shows that the Court panel’s at 440.7 Queen, Wood, Dairy not, Neither Inc. v. the issue of is or is in whole or in (1962) part, nor Bea- juiy. for the Theatres, Westover, con Inc. v. Additionally, panel's indiscriminate use of is instructive on these two Court cases leaves a wide what constitutes a common law claim or on what path carnage strewn with the of cases declared jury. issues in such claim are for the Those Dairy overruled or obsolete. Queen Neither nor cases hold: supports panel. Beacon Theatres 1. A common law claim cannot be treated as Deener, In Cochrane v. 24 L.Ed. equi- subservient to or incidental to an the Court stated that courts claim; and, table independent jurisdiction had adjudicate all equitable 2. prior An claim cannot be tried statute, by issues not that some of the a common law claim where there are com- equitable issues were incidental to issues. In re overlapping mon issues of fact. Co., (8th Don Hamilton Oil 783 F.2d 151 Cir. If the facts were tried first to the court on 1986), nothing had to do with the order of trial issue, equitable the court's resolution would involving legal equitable both claims. preempt overlapping decision on the issues, contrary jury right factual 7. Under the American statute in effect in (Act 10, 1790, 7, 5, Supreme April Amendment. These two Court 1791 109, ch. 1 Stat. trial, merely 111), cases Congress provided direct the order of private parties do not with change equitable legal right repeal claims to claims. patent by proceed- Neither to sue for Supreme helps deciding See, Court ings case in whether similar to a writ of scire Ex facias.

985 Actions, 655, Jury 72 Yale L.J. Trial in Civil acknowledges one of the panel The (1963).8 scire 655 a writ of which three situations faci Majority op. at 974-75 n. grantable. as was part the first of the test to determine Since view, panel’s a scire Contrary to the 9. requires a the Seventh Amendment whether following reasons: issue for the could facias English equity negated trial is action, inquiry.9 that should end the issued on the previous patent had 1. A administrative was no [There invention Damages B. No Remain the Case. issuance]; before examination patentee’s infringement10 has The claim conduct]; [Inequitable 2. Fraud adjudicated in this case. The trial been patent], grant [Invalid Unlawful 3. that the accused method did not court held Wall.) Stone, (14 439; at Mowry, 81 U.S. granted claim and meet the limitations of the (2 Wall.) Robinson, 535; C. at William Thus, U.S. summary judgment. all that remains (1890). Patents, § 726 Law The stage at this are the counterclaim for and unenforceabil- that, even if a writ panel also declares The remaining any ity. Neither claim carries Century 18th is the closest of scire facias right damages. panel decision relies The could demand analog, party to such suit solely challenge to as the basis on the equity as a matter of jury trial in a court of jury right.11 for the Majority op. n. 9. The “matter right. at 975 remedy sought in this case is not patent cases is an overstatement. right” in alone, therefore, ground the facts on this equity courts decided Frequently ju- required. has trial is Court validity themselves or treated respecting conclusively repeatedly stated that inform the con- advisory, ries as Deener, remedy part of the two test enumerated part of the court. Cochrane science (1876); important inquiry, Team also above is the more 24 L.Ed. 139 see U.S. 371, 372, sters, Harmon, n. at 1345 494 U.S. at 565 S.Ct. 94 U.S. Johnson v. 4; (1876); Granfinanciera, 492 at n. U.S. Iderstine v. National L.Ed. 271 Van Tull, 421, 107 2790; 575, 580, at S.Ct. at 481 U.S. S.Ct. Discount 1837; Curtis, at 94 S.Ct. at Joseph Story, 415 U.S. 57 L.Ed. 652 (5th Constitution, yet panel order finds a Commentaries Jr., Ed.1891); James, Fleming Right nonetheless. cancellando) (a letters-pat- Wood, (9 Wheat.) king's cancelling ent,

parte 6 L.Ed. 171 law, granted contrary to which is the (1824) provision when (discussing comparable in Pat Joseph Story, point jurisdiction." 1793); highest v. Bell See also United States ent Act of Equity Jurisprudence, § Commentaries Telephone 32 L.Ed. 128 U.S. (12th Ed.1877). (extended (1888) discussion of scire facias (14 Mowry, proceedings); 81 U.S. and similar Ltd., 440; Wall) Group, is, analog any States v. Glaxo United historical 9. The search for an 861, 869, event, statutory complicated nature of J., (1973) dissenting). Although (Rehnquist, patent. grants. is no common law There Moreover, Monopo- out of law courts in writs of scire issued under the Statute facias courts, (1623) English question early litigated courts issued a fact American was lies looking equity. test at the in courts of The historical our search entail such writs 1791. Should English practice question an issue of law was requires to look to of how courts broader Granfinanciera, practice. litigated? American 2790; 109 S.Ct. at Baltimore Redman, Line, Carolina Inc. v. & 657, "Infringement" understood to mean must be L.Ed. 1636 product falls or method that an accused ("The preserved by jury is the of trial thus Infringement scope of the claim. within the English common existed under the finding which liability. A not a determination adopted.”); Dim law when the Amendment may overcome an affirmative Schiedt, 474, 476, 55 S.Ct. ick v. 296, defense. 79 L.Ed. 603 equitable. unenforceability claim is 11. The Mfg. Lighting 820 F.2d 1209 supposes v. Herst 8.Story reports that Gardco that "Lord Coke (Fed.Cir.1987). arose from his [Chancellor] Cancellarius the title (D.C.Cir.1967), Sirica, First, is dis panel analyzes a 379 F.2d 449 the panel missed in a footnote because the infringe- judgment claim here as a reverse declaratory judgment. ease does not involve a patentee’s origi- ment suit and attributes the In panel’s rationale is difficult to follow. invalidity damages to the coun- nal claim to denying petition, a mandamus the court terclaim, authority. citing Beacon Theatres as trial [the Filmon stated: “The record before However, reality panel ignores the any judge] petitioner not show that has does patentee’s claim has been dismissed. Al- damages pending, prerequisite a action for ternatively, panel presence holds that the being deprived right to a claim that it is of a “legal right” issue is sufficient to invoke Similarly in a trial.” Id. at 451. other damages. a without a claim for panel, circuit courts cases cited to the First, declaratory judgment a action for a demand, thereof, focused on the or lack for flip declaration of is not the side of Union, money damages. Transp. United infringement necessarily an claim nor Corp., Local Rail Consolidated same as an affirmative defense.12 The latter (6th Cir.1989), F.2d vacated on other particular claims of the is limited grounds, 494 U.S. patent complaint; asserted in the a counter (1990), reaffirmed, F.2d 36 L.Ed.2d may challenge claim all claims. The issue (6th Cir.1990) (“We hold that the nature of infringement non-infringement is irrele remedy requested by Local insofar as declaratory judgment vant to such claim. prays compensatory damages, it is for le controversy” underlying The “case or a de Dietrich, gal.”); Francis v. 682 F.2d claratory judgment patentee’s action is the Cir.1982) (4th (‘Withdrawal claim of the for against declaratory plaintiff threat suit issues.”); damages only equitable left Hilde patent. Infringement simply vel non Michigan brand v. Board Trustees Supreme is not an issue. As the Court re (6th Cir.1979) Univ., State cently party seeking declaratory stated: “A a (“A key dividing line between law and judgment invalidity presents a claim inde historically has been that the former deals pendent patentee’s charge infringe money damages with and the latter with Int’l., ment.” Cardinal Chem. Co. v. Morton Int’l, relief.”); injunctive Skippy, Inc. v. CPC —Inc., —, —, Inc., (4th Cir.), cert. de 1975, 124 L.Ed.2d nied, patentee A possibility suing has no for (1982) (“Since [plaintiff] altogether failed validity, flip declaration of side to the pursue damages its claim al for for the declaratory judgment presented claim here. inducement, leged prej fraudulent it was not counterpart patentee The closest for a is give udiced the district court’s failure to reexamination in the Patent and Trademark contemplated trial on a claim not (PTO). request Office If a reexamination trial.”). granted, prior the PTO will review the cited Shubin v. United Dist. States Court S. and, appropriate, art issue a certificate (9th Cal., Cir.), 313 F.2d 250 cert. denied 373 upholding patent over that art. In ordi- receives, nary patent litigation patentee directly point a case and relied best, patent that the was not upon judge the trial in this accords proved invalid.13 Shubin, precedent. with Court

Second, panel creates a conflict all with prayer the court stated: “There is no upholding other circuits in damages any Seventh Amend- amount.... Hence there damage ment without a possibility damages claim remain- exists no could be ing Corp. to be tried. Filmon ‘equitable Process awarded.... There is left Occasionally judgment 12. A for a declaration of will declare a noninfringement would mirror an A "valid”. is bom valid and remains so Therefore, presumed suit. Patents are valid. proven ruling until otherwise. The correct proof part patentee’s forms no alleged infringer prove that the did not case, unless the defendant raises the issue of invalid. invalidity. Corp., Supermarket [Equipment] [340 lack of the court below.” The U.S. cause’ before at 127 at 95 L.Ed. 147] [71 the denial of a S.Ct. damages in controlled Shubin (1950)].”) interpretation This cur by the adopted test jury. Again, the truncated sharp interpre rent statute is contrast to irrele- opinion makes that consideration the patent prior tations of statutes under which vant.14 validity was treated an of fact for as issue the Supreme Finally, I have found Court jury. Mfg. Tank v. Graver & Linde Air upholding the Seventh Amendment case Prods., 535, 539, 336 U.S. 69 S.Ct. damages right litigation in civil where were (1949); Goodyear L.Ed. 672 Tire & Rubber Teamsters, at requested. 494 U.S. Co., Ray-O-Vac Co. v. 321 U.S. 64 S.Ct. alia, (“they sought, at 1343 inter 110 S.Ct. (1944); Spalding, L.Ed. 721 Tucker v. damages wages and compensatory for lost (13 Wall.) 453, (1871); 20 L.Ed. 515 U.S. benefits”); Granfinanciera, 492 health (9 Wall.) Wethered, v. 76 U.S. Bischoff sought (“Respondent at 109 S.Ct. at 2787 (1869); Wells, L.Ed. 829 Gill alleged constructively to avoid what he were (22 Wall) 1, (1874); 22 L.Ed. 699 Battin v. actually to re- fraudulent transfers and (17 How.) 74, Taggert, 58 U.S. 15 L.Ed. 37 costs, damages, expenses, and inter- cover Robinson, The Law 3 William C. Tull, est.”); at at 481 U.S. S.Ct. Patents, What is the effect (“A remedy penalty type was a civil Supreme declaring particular Court that could be enforced in at common law issue to be an ultimate issue of law? Is it law.”); Curtis, 1,n. 415 U.S. at 190 courts of part of the Seventh Amendment that (“petitioner sought at n. 1 ... 94 S.Ct. underlying disputes factual relevant well”); Ross, damages actual to recover by jury? of law must the issue be decided (“In at 740 entirety including Or is the of an issue of law corpo- that the instant case we have no doubt disputes, taken from the factual is, legal part, claim at least in one. ration’s equitable same as with an issue? Or does money damages.”); sought is The relief depend particular the answer issue? Queen, at 899 Dairy 369 U.S. at Supreme No clear answer can be found (“insofar complaint requests money as the precedent, and circuit court deci Court un- presents a claim which is respecting in conflict the role of a sions are Beacon, legal”); questionably determining validity. patent (“the by to trial held in Sarkisian v. The Ninth Circuit damage jury applies to treble suits under (9th Corp., 688 F.2d 647 Cir. Winn-Proof laws”). pendency of a anti-trust Without the 1982) (in denied, banc), cert. remedy request, petitioner in this case legal by to trial is not denied constitutional validity of a is determined the issue jury. court, by but facts as a matter of law order in this case This court’s mandamus jury. If found must be type of conflict with other circuits creates the jury, ver issue is submitted that warrants Court review. specific advisory. The court called for dict is judge. findings factual Jury Rights an Law III. Issue of a district court Id. 688 F.2d at 650. Where independent The issue of issue circuit find judge of that made after ings v. John Deere fact and conclusions of law of law. Graham 684, 694, 15 verdict, advisory this court re receipt of an (“[T]he jected treatment of the ver question ultimate the trial court’s law, Derrick advisory. American Hoist & A. P. Tea Co. v. dict as [Great] one of & USPQ Coupling panel order dismisses two dis lie Brake & 14. likewise (D.Minn.1970), panel opinions by respondents. Major which the embraces. Criti cited trict court ity op. cases, cizing opinion, stated paten another district court two neither at 978. those aspect exactly sought damages. “unclear what Both courts held that the that it was tee gave jury] right." & proceed jury. [a rise to General Tire A subse case trial would without Assocs., 74 F.R.D. quent opinion follow Rubber v. Watson-Bowman district court declined to Automotive, (D.Del.1977). Stromberg Hydrau- Minnesota Inc. 988 recognized the ultimate Sons, Inc., The Tenth Circuit 725 F.2d

v. Sowa & validity but held the denied, to be one law (Fed.Cir.), issue cert. novelty, e.g., utili patentability, conditions of (1984); see also 88 L.Ed.2d nonobviousness, for the ty, are issues of fact F.2d Computervision, Perkin-Elmer See, jury. e.g., Inc. v. International denied, (Fed.Cir.), n. cert. Norfin (10th Corp., F.2d 357 Machine Business Cir.1980), Celebrity, v. A & B In and Inc. Co., 868 F.2d Richardson v. Suzuki Motor (10th Cir.), Co., cert. 573 F.2d strument denied, (Fed.Cir.), cert. denied, 94, L.Ed.2d (1989).15 analysis, there is Under Sears, in Roberts v. The Seventh Circuit judge for the to separate judgmental decision Cir.1983) (7th Co., 723 F.2d 1324 Roebuck & jury If holds that an invention make. the (in banc) obvious, judge the issue of nonobvious is not addressed have been the would ness, except patenta- conditions of that verdict permitted one of the three to review substantiality utility of the evidence. bility (novelty being the other the and two) to one of law. and declared issue be Sears, Co., 722 Roebuck & Connell However, factual it further held that the (Fed.Cir.1983), this court F.2d underlying go jury, to the issues obviousness give not error to the declared that it was mandatory but that alternative instructions validity jury litigant’s to the over a issue given delineating particular the fac must be objection judge con and that the maintained dispute in ease that controls the tual of law the court’s trol over the issue Thus, law, outcome. under Seventh Circuit applicable law and instructions trial court announces the ultimate result (now verdict, ruling JNOV on directed instructions, jury dependent upon its JMOL) at 1547- and new trial motions. Id. finding particular fact.16 While this case entirely It clear from Connell approval in was cited with one Federal Cir (even damages) our in a suit for whether cuit Structural Rubber Prods. v. Park actually required validity precedent issue (Fed.Cir.1984), un Rubber 749 F.2d 707 go held that was Circuit this court has not like per not reversible error se to ask the mandatory imposed the use of alternate in However, validity/invalidity verdict. be structions, procedure and the has not been Connell, strong language and cause used, my knowledge, any appeal endorsing jury rights, precedent later come to this court. One of the difficulties validity simply has issues mandatory with alternative instructions is ingrained analysis.17 In become without likely require that a decision is clarify have been banc efforts to the issue underlying findings fact number of which unsuccessful, as this case itself illustrates.18 would have to be covered cumbersome tacitly approved instructions This court has setting possible instructions out various com special interrogatories (purportedly un and subsidiary binations of facts. While the 49(a)) directing juries der Fed.R.Civ.P. mandatory procedure alternative instructions decide the ultimate issue obviousness). (most separates judge roles of subsidiary frequently law law/fact issues of jury, question remains: Is the fact find Corp., 732 F.2d at n-Elmer Perki ing 894-95; DMI, role of a a constitutional with Inc. v. Deere & 802 F.2d (Fed.Cir.1986). respect patentability? Only to the conditions of the verdict single Supreme 15. The creation of this court shifted all 17. Connell fails to cite even a appeals regional from circuits this court. concerning jury case trials. Court inquiries 16. Resolution of the factual outlined in Studs, Equip. Inc. v. ATA Leas 18. See also Sun ques- Graham does not dictate the answer to the tion of obviousness. It face Inc., ing, reh’g granted merely brings one face to banc, 1583; original opinion reinstated judgmental awith decision. Does the in- declined, (Fed. vention, facts, satisfy rehearing light require- in banc 892 F.2d 73 of those meaning 1989). ment of nonobviousness within Cir. 35 U.S.C. 103? 1988). stringent ruling standard of The trial court’s on a does not withstand JMOL may may Sjo the verdict be overt motion no more than Fed.R.Civ.P. “Denied.” Thus, lund, require this court invokes the stan 847 F.2d at 1576. urned.19 We do not applicable analysis to an ultimate issue reasoned judge. dard of review from the trial panel opinions speak an ultimate issue of fact mixed with Some of fact or de novo review applies legal accepting law and it to an ultimate issue law. of the conclusion after the Further, required presumed findings Jurgens, a JMOL motion is to re of fact. 927 plain judgment, reject absent error. Bio F.2d at 1557. view Others the de novo Biomedical, Inc., Corp. v. 946 standard. dex Loredan Bio-Rad Lab. v. Nicolet Instru 850, (Fed.Cir.1991), 604, (Fed.Cir.), Corp., cert. de ment F.2d 854 739 F.2d 607 - nied, 2957, denied, -, 1038, 516, 112 119 U.S. cert. 469 U.S. 105 S.Ct. (1992). However, (1984). if

L.Ed.2d 579 a verdict L.Ed.2d 405 Still others conflate the sufficiency challenge does not standard to jury loser whether a “reasonable” evidence, i.e., facts, presumed simply but could reach the verdict rendered. Sun law, Studs, 982; Shearing, the ultimate conclusion of is a JMOL 872 F.2d at 975 F.2d Richardson, judgment? 1545; required for review of the Is it 868 F.2d at 1235. enough object giving legal not to to issue validity/invahdity is a mat- jury, contrary holding in to the Con public, ter which affects the not nell? Yet, litigants. confusing jury ju- under panel holding petitioner order is court, risprudence of this the matter can be jury trial on factual entitled issues rights litigants treated as

underlying validity the issue of must be read jury were involved. That a reasonable could asked, light precedent. of our Petitioner contrary have reached the verdict on the jury given that the the issue to record before us and that verdict would have precedent supports request. decide. Our accepted been under the reasonableness Dynamics, Railroad Inc. v. A. Stucki consequence. standard is of no I do not (Fed.Cir.1984); Richardson, 727 F.2d 1506 agree with this of an treatment issue of law. 868 F.2d at 1235. Once the verdict is ren view, my an issue of law has one issue, legal the court dered ultimate possible given answer on record. At a jury presume will resolved all facts in minimum, the decision on the issue must be Perkin-Elmer, the verdict favor of winner. “right” to if it reviewed determine 893; Jurgens McKasy, 732 F.2d at v. “wrong,” not “reasonable.” See Newell 1552, (Fed.Cir.), denied, F.2d cert. 762; Rubber, 864 F.2d at Structural 749 F.2d 902, 281, U.S. 116 L.Ed.2d 232 at 718-19.20 DMI, 425; see, 802 F.2d at But New ell, (not jury point pick 864 F.2d 757 function of I can to no definitive Court among relating pronouncement respecting and choose established facts Amend obviousness). jury The instructions need not ment or no to have a decide disputes underlying delineate factual the case. Gen factual issues an issue of law. instructions, However, example, outlining clearly eral for the touchstone of rights dispute broad standard v. not that a fact of Graham John underlies Deere, 684, 1, 17, 693, “[T]he 383 U.S. 86 S.Ct. 15 issue be decided. Seventh Amend (1966), determining L.Ed.2d 545 obvious ment was never intended establish the ness, DMI, imprimatur. bear our as the exclusive mechanism for factfind 425; Shearing Corp., ing Roofing Atlas v. v. Iolab civil cases.” Co. 1541, (Fed.Cir.1992); Sjolund Occupational Safety n. 2 Review & Health (Fed.Cir. Musland, Comm’n, 451 n. 97 S.Ct. F.2d 1575-76 Moreover, (Fed.Cir.1988), although Kenney Mfg., ings by 19. Newell Co. v. 864 F.2d 757 the trial court. fact- denied, inquiries, the Court identified the sec- t. 493 U.S. 110 S.Ct. intensive cer 62, (1989). need, long ondary others, felt failure of considerations of "legal and commercial success as infer- Graham, cases, trilogy In the I see ences or subtests.” 383 U.S. at Graham no refer- 52(a) to Rule deference to factual find- 86 S.Ct. at 702-03. ence nor 383, 384, (1977). L.Ed. I 51 S.Ct. n. 51 L.Ed.2d Capital also Traction Co. See Praprotnik, City Louis v. glean from St. Hof, 19 S.Ct. 915, 99 L.Ed.2d 107 (1899). Moreover, only a reasoned L.Ed. 873 Kungys v. (plurality opinion), and meaningful lays the foundation decision States, United review. (1988), entirety that the of an precedent has been read Because our jury. law is taken from the ultimate issue of resolution, longer litigants no require differently. read those cases Others propriety giving the issue of challenge the Union, Similarly, Corp. v. Bose Consumers if there is to decide By underlying facts. conflicting evidence on scrutiny of close of the evi- speaks issue, they must be deemed to raising jury right. if there is no protect constitutional have consented even the courts to dence posture of a declar- This which is I do can be read as so limited. rights and atory judgment invalidity, presents a suf- rights equate argue patent with setting prior cases ficiently different from rights. But the determi- First litigant raise the issue without that a could equate validity also does not nation of provided with fear of chastisement. We com- which benefits from the with decision definitively speak opportunity to at least jury. my It is under- munal wisdom jury rights procedures. We have on and standing of an issue as that the denomination again. I away opportunity once thrown represents policy decision that one of law respectfully dissent. appropriate than a judge is more policy for As a matter of make the decision. decisions, and uniform this is true

reasoned validity. and The identification

of underlying in the case is

resolution of facts important judgmental decision. If as the MULLINS, Texa- Clinton Robert C. d/b/a presumes, example, Stokes, Skyline that a ver- co, one D. Ed’s Edward d/b/a Texaco, Stone, Frank Frank Stone on the issue means all the Graham dict d/b/a Rudy’s Rudy Thomas, and & Sons d/b/a in favor of the verdict factors were answered Service, Plaintiffs-Appellants, Texaco winner, judgmental likely call is to be skewed. DEPARTMENT The UNITED STATES tried, in juryAs cases are now accordance ENERGY, O’Leary, Hazel R. Secre- OF precedent, respecting with our the evidence Hearings tary Energy, Office is thrown into the black Director, Appeals, George Breznay, B. room, box of the and the verdict Hearing Appeals, Econom- Office par- or invalid. If both returned either valid Regulatory Administration, M. ic Paul agree procedure, it. But ties to that so be Secretary, Regulatory Geier, Economic objects, party

where a I believe that a liti- Administration, Defendants-Appellees. gant has a to a trial court’s decision 93-1424. findings of fact and conclusions of law with Appeals, United States Court validity. judge has an the issue Federal Circuit. play essential role to in a constitutional trial. As stated Herron v. Southern March 1995. Pacif- ic Co.: Denied; Rehearing Suggestion for court, by jury In a trial in a federal Rehearing In Banc Declined moderator, judge but is the is not mere June governor purpose of the trial for the

assuring proper conduct its deter-

mining questions discharge of law. This judicial function as at common law is process

an essential factor in the for which provides.

the Federal Constitution

Case Details

Case Name: In Re Lawrence B. Lockwood

Court Name: Court of Appeals for the Federal Circuit

Date Published: Feb 7, 1995

Citation: 50 F.3d 966

Docket Number: Misc. 394

Court Abbreviation: Fed. Cir.