Advanced Patent Law
Jaime Olin, 11/15/05
Juries in Patent Cases
Bewildered, Befuddled, and Bemused: Should Juries Decide Patent Cases?
Jaime K. Olin
Section Contents Page
The Seventh Amendment of the U.S. Constitution JKO-1
Introduction. The Seventh Amendment
Right to a Jury Trial. Timeline of Seventh Amendment Jurisprudence JKO-1
Jaime K. Olin
Ross v. Bernhard (S. Ct. 1970, White). JKO-2
Footnote 10 provides a heretofore unknown factor (the
complexity exception) for determining application of the
Seventh Amendment.
In re U.S. Financial Securities Litigation (9th Cir. JKO-2
1979, Kilkenny, Anderson, Byrne).
Holds that the complexity exception to the Seventh
Amendment does not exist.
The Complexity Exception. Can a
Jury’s Lack of Technical Expertise In re Japanese Elec. Prods. Antitrust Litig. (3d Cir. JKO-5
Negate the Seventh Amendment Right 1980, Seitz, Maris, Gibbons).
to a Jury Trial In Patent Cases? Decides that the complexity exception to the Seventh
Amendment applies in limited circumstances.
SRI Int’l v. Matsushita Elec. Corp. (Fed. Cir. 1985, JKO-7
en banc, 5-1-5 decision, Markey).
The “Additional Views” section of the opinion holds that
there is no complexity exception in patent cases.
Joseph A. Miron, Jr., Note, The Constitutionality of a JKO-10
Complexity Exception to the Seventh Amendment,
73 CHI-KENT L. REV. 865 (1998)
-Associate attorney, Skadden Arps, Chicago, IL
- J.D., Chicago-Kent College of Law, 1999
Phillipe Signore, On the Role of Juries in Patent JKO-12
Litigation (Part 1), 83 J. PAT. & TRADEMARK OFF. SOC’Y
Juries: Why Bother? Why do patent 791 (2001)
litigants ask for jury trials in the first - Partner, Oblon Spivak P.C.
place? - J.D., Georgetown University Law Center, 2001
- PhD, physics, University of Florida, 1994 (named most outstanding
experimental Physics doctoral graduate)
Empirical Evidence and Alternatives. Empirical Evidence and Alternative Ways to JKO-13
Should patent cases all be bench trials? Address Jury Difficulties in Patent Cases, Jaime K. Olin
Are there any better ideas out there?
{Note: The materials in this packet have been extensively edited and reformatted, and punctuation has been added
throughout. Some citations and footnotes have been removed without notice. Other deletions are indicated by
ellipses or asterisks. All bold emphasis is my own. My comments are italicized and in brackets.—JKO}
JKO-i
Advanced Patent Law Seventh Amendment
Jaime Olin, 11/15/05 Timeline
Juries in Patent Cases
INTRODUCTION equitable remedies) is a more important factor than
the nature of the action in deciding whether to apply
Seventh Amendment the Seventh Amendment.
U.S. Const. amend. VII
5 50 1987: Tull v. United States, 481 U.S. 412 (1987). In
In Suits at common law, an action with analogues in both law and equity, the
where the value in controversy shall exceed Court holds that the Seventh Amendment still
twenty dollars, applies, so long as the legal action is appropriately
the right of trial by jury shall be preserved, analogous.
10 and no fact tried by a jury, shall be
otherwise re-examined in any Court of the United 55 1995: Hilton-Davis Chem. Co. v. Warner-Jenkensen
States, Co., 62 F.3d 1512 (Fed. Cir. 1995). The Federal
than according to the rules of the common law. Circuit upholds the right to a jury trial for evaluating
the doctrine of equivalents in a patent infringement
15 suit. Two years later, the Supreme Court reverses the
Timeline of Seventh Amendment Jurisprudence 60 Federal Circuit’s decision on the merits, but declines
Jaime K. Olin, 2005 to address the jury issue. Warner-Jenkensen Co. v.
Hilton-Davis Chem. Co., 520 U.S. 17 (1997).
1791: The Seventh Amendment is ratified.
1995: In re Lockwood, 50 F.3d 966 (1995). The
1812: United States v. Wonson, 28 F. Cas. 745 Federal Circuit sustains the right to a jury trial in
20 (1812). Justice Story affirms that the right preserved 65 patent invalidity actions. The Supreme Court
by the Seventh Amendment is the right that existed at vacates this decision without addressing the Seventh
English common law. He devises the historical test Amendment issue. American Airlines v. Lockwood,
for applying the Amendment: a jury trial is granted if 515 U.S. 1182 (1995).
one would have been granted under similar
25 conditions by English common law. 1996: Markman v. Westview Instruments, 517 U.S.
70 370 (1996). The Court unanimously affirms the
1935: Baltimore & Carolina Line, Inc. v. Redman, Federal Circuit’s decision that claim construction in
295 U.S. 654 (1935). The Court (through Justice Van patent cases is a question of law that cannot be given
Devanter) devises a test with two parts: (1) the right to the jury. The Federal Circuit decision leads to the
to jury trial is that right which was provided under creation of “Markman hearings”, in which issues of
30 English common law (i.e. for suits at law, not equity), 75 claim construction are argued and decided separately
and (2) the date for measuring that right is 1791, the from the rest of the trial.
year the Seventh Amendment was adopted.
NOW: Juries in patent cases are entitled to decide
1938: The Federal Rules of Civil Procedure are questions of utility, written description, enablement,
adopted. The distinction between law and equity is validity, best mode, novelty, literal infringement,
35 eliminated. 80 doctrine of equivalents, reverse doctrine of
equivalents, and the amount of damages. Bench
1950s-1960s: Most of the guarantees of the Bill of trials are held on questions of law (for example,
Rights are incorporated against the states through the claim construction, obviousness, and prosecution
Fourteenth Amendment. The Seventh Amendment is history estoppel) and questions of equity (such as
one of the exceptions to this trend. 85 laches, estoppel, inequitable conduct, conception, and
inventorship).
40 1962: Dairy Queen v. Wood, 369 U.S. 469 (1962).
The Court extends the Seventh Amendment to
include legal issues that previously would have been
considered incidental to the equitable issues in a
case.
45 1974: Curtis v. Loether, 415 U.S. 189 (1974). The
Court holds that the relief sought (damages or
JKO-1
Advanced Patent Law Ross
Jaime Olin, 11/15/05 In Re Finan. Sec.
Juries in Patent Cases
should be an exception to the Seventh Amendment
right to jury trial in this type of case. The practical
difficulties created by the size and scope of these
THE COMPLEXITY EXCEPTION consolidated cases are vividly illustrated. n13
55 Nevertheless, such practical considerations diminish
Ross v. Bernhard in importance when they come in conflict with the
396 U.S. 531, 538 (1970) (White, J.) constitutional right to a jury in civil cases.
5
{This footnote is the sole example of the Supreme n13. The court estimated that the fact-finder will
need to read over 100,000 pages of paper which
Court’s recognition of a complexity exception to the 60 would be the equivalent of reading the first 90
Seventh Amendment. The Court in this shareholders’ volumes of the Federal Reporter, 2d Series. It was
derivative suit held that the litigants were entitled to further estimated that the trial would take at least two
10 a jury trial, without considering complexity at all. It years. Concern was also expressed as to where a
seems ironic that the complexity exception was born courtroom could be found to seat all of the attorneys,
in a case that was, for all intents and purposes, not 65 let alone the parties to the case.
complex. Assuming this factor was not added by the ***
Court, but derived from an attorney or amicus brief,
15 is this unprecedented inclusion an example of The [district court] decision then takes a quantum
careless lawyering, or lawyers willfully trying to leap and establishes some general guidelines as to
change the law? – JKO} when the "complexity exception" will deny to a
70 litigant his constitutional right to a civil jury trial.
n10 As our cases indicate, the "legal" nature of These are:
20 an issue is determined by considering:
- First, the pre-merger custom with
"First, although mere complexity is not enough,
reference to such questions;
complicated accounting problems are not
- Second, the remedy sought; and,
75 generally amenable to jury resolution. Although
- Third, the practical abilities and such problems often arise only during the
25 limitations of juries.
damages portion of a trial, they sometimes are
Of these factors, the first, requiring extensive
present during the liability portion as well . . .
and possibly abstruse historical inquiry, is
only a case in which such a special master could
obviously the most difficult to apply. See
80 not assist the jury meaningfully may be subject
Fleming James, Jr., Right to a Jury Trial in Civil
to removal from the province of the jury because
30 Actions, 72 Yale L.J. 655 (1963).
of complex accounts.
"Second, the jury members must be capable of
In re U.S. Financial Securities Litigation understanding and of dealing rationally with
609 F.2d 411 (9th Cir. 1979) 85 the issues of the case.
35 [Before Kilkenny, Anderson, Byrne. – JKO]
"And third, an unusually long trial may make
extraordinary demands upon a jury which would
This appeal presents a challenge which strikes at the
make it difficult for the jurors to function
heart of this country's system of jurisprudence.
90 effectively throughout the trial." In re U.S.
Simply stated, we are asked to decide whether there
Financial Securities Litig., 75 F.R.D. 702 (S.D.
40 is a "complexity" exception to the Seventh
Cal. 1977).
Amendment right to a jury trial in civil cases. We
answer this question in the negative and reverse the
decision of the district court. The court found the first two guidelines satisfied
95 based on its conclusion that a jury was not capable of
***
either understanding or rationally reconciling the
45 II. Background mass of data, the variety of legal theories, and the
number of parties involved in the case. Since the trial
*** time was estimated at two years, the court concluded
3. District Court Decision 100 that it would be very difficult to find a jury which
could sit for that long. {Do we WANT a jury to sit for
In a carefully thought out opinion the district court two years? Would anyone voluntarily appear for
50 presents a persuasive argument as to why there
JKO-2
Advanced Patent Law In re Finan. Sec.
Jaime Olin, 11/15/05
Juries in Patent Cases
jury duty if two-year trials were a realistic dictum totally unnecessary to the Court's holding. As
possibility? – JKO} such, it is not binding on this court.
*** While it is unclear as to what was meant by the
III. DISCUSSION 55 inclusion of the third factor, we do not believe that it
5 stated a rule of constitutional dimensions. After
Analytically, we are faced with three different employing an historical test for almost two hundred
arguments as to why the Seventh Amendment right years, it is doubtful that the Supreme Court would
should not apply to this class of complex civil cases. attempt to make such a radical departure from its
60 prior interpretation of a constitutional provision in a
- The first approach follows the historical legal- footnote.
10 equitable test. Complex commercial litigation,
such as the present case, is analogized to an Another consideration involves the two sources cited
"equitable accounting," where there was no for the rule: the vague reference to "our cases" and
right to jury trial. the James article. No Supreme Court decision prior to
65 Ross ever utilized a test even partially dependent
- The second argument, based upon the Ross upon an inquiry into the abilities of jurors. . . . The
15 footnote {see JKO-2}, asks the court to adopt a James article also fails to add any support to the use
new interpretation of the Seventh Amendment of the third factor, and, if anything, it counsels
and examine the practical abilities and against such an inquiry. James explains that under the
limitations of juries. 70 Constitution, judges are not free to examine what
- The [third] argument claims that due process issues may be best suited for resolution by a judge or
20 requires trial by the court when a jury cannot by a jury.
comprehend the issues and evidence in the While the Supreme Court has never specifically
case. repudiated the third factor in the Ross footnote, it has
*** 75 never met with general acceptance by the courts. In
3. The Ross Test the Ross decision itself, the Court did not consider
25 the practical abilities and limitations of juries. And,
As we discussed earlier in this opinion, the [Ross] although the Supreme Court has considered the
decision has been interpreted by some courts and Seventh Amendment question in depth on at least
commentators as establishing a new test for 80 five occasions since Ross, the abilities of juries have
determining the right to jury trial. See, e.g., In re never been considered. See, e.g., Parklane Hosiery
30 Boise Cascade Securities Litigation, 420 F. Supp. 99 Co. v. Shore, 439 U.S. 322 (1979). The subsequent
(W.D. Wash. 1976); Bernstein v. Universal Pictures, decisions have all relied upon the traditional
Inc., 79 F.R.D. 59 (S.D.N.Y. 1978); ILC Peripherals historical test.
v. Int’l Business Machines, 458 F. Supp. 423 (N.D. 85 ***
Cal. 1978). {Interestingly, LEXIS says that all of
35 these cases are still good law. –JKO} The court Another factor which militates against our adoption
below held, and the appellees argue, that Ross of a new interpretation of the Seventh Amendment is
establishes a test under which a court must inquire our belief that it would be totally at odds with prior
into the practical abilities and limitations of juries in Seventh Amendment experience. n49 To consider the
resolving the Seventh Amendment question. We do 90 practical abilities and limitations of juries within the
40 not believe that Ross may be read as establishing a context of complex cases would necessitate an
new test for determining when the Seventh examination of the whole case. However, the Seventh
Amendment applies. Amendment right has never been made dependent
upon such an examination; it has always been the
*** 95 nature of the issue. Ross, 396 U.S. at 538. When a
case involves mainly equitable issues and only
Based on [the Ross] footnote, this court is asked to
incidental legal issues, the right to jury trial still
45 employ an inquiry into the practical abilities and
attaches to the legal issues. Dairy Queen v. Wood,
limitations of a jury as the test for determining the
369 U.S. 469 (1962). Under Seventh Amendment
application of the Seventh Amendment. We decline
100 jurisprudence, an historical approach must still be
this invitation for several reasons. n43
followed. United States v. J.B. Williams Co., Inc.,
50 n43. Initially, we observe that footnote 10 of Ross was
498 F.2d 414, 428 (2d Cir. 1974). Thus, we conclude
that Ross may not be read as establishing a
JKO-3
Advanced Patent Law In re Finan. Sec.
Jaime Olin, 11/15/05
Juries in Patent Cases
functional interpretation of the Seventh 55 B. Abilities of Juries
Amendment.
The jury system has never been without its critics,
n49. One commentator noted that the Ross footnote: which have included some of this country's most
eminent judges. See, e.g., Jerome Frank, COURTS
5 " . . . is so cursory, conclusory and devoid of ON TRIAL 124 (1949). The opponents of the use of
cited authority or reasoned analysis that it is 60 juries in complex civil cases generally assume that
difficult to believe it could have been intended to
reject such established historical practice or
jurors are incapable of understanding complicated
Supreme Court precedent." matters. This argument unnecessarily and improperly
demeans the intelligence of the citizens of this
10 Martin H. Redish, Seventh Amendment Right to Jury Nation. We do not accept such an assertion. Jurors, if
Trial: A Study in the Irrationality of Rational Decision 65 properly instructed and treated with deserved respect,
Making, 70 Nw.U.L.Rev. 486, 526 (1975). And
bring collective intelligence, wisdom, and dedication
another commentator has explained it in this way:
to their tasks, which is rarely equalled in other areas
15 "Standing as it does, thus alone, this fleeting of public service.
expression in Ross v. Bernhard of infidelity to ***
the centrality of the traditional historical test in
Seventh Amendment determinations would 70 IV. CONCLUSION
hardly justify an announcement that the
20 historical test has been superseded in the Federal Not only do we refuse to read a complexity exception
courts."
into the Seventh Amendment, but we also express
Charles W. Wolfram, The Constitutional History of grave reservations about whether a meaningful test
the Seventh Amendment, 57 MINN. L. REV. 639, 645 75 could be developed were we to find such an
(1973). exception. Where would the courts draw the line
25 *** between those cases which are, and those which are
not, too complex for a jury? The court below found
4. Due Process that the complexity of the present case was created
A. Complexity 80 primarily by the accounting and financial nature of
the issues and evidence. The appellees generally
Many cases appear overwhelmingly complicated in assume that only antitrust and securities cases
30 their early stages. Nevertheless, by the time {what about patent cases? – JKO} could qualify for
such cases go to trial, what had initially appeared as the complexity exception. We acknowledge the
an impossible array of facts and issues has been 85 complicated nature of the evidence and issues
synthesized into a coherent theory by the efforts of associated with the accounting and financial
counsel. Moreover, in answering the Seventh questions involved in antitrust and securities cases.
35 Amendment question, courts should take into Yet, almost all tax cases also involve the same type
consideration the various procedural developments of evidence and issues; does this then mean that there
which serve to simplify and facilitate the trial of a 90 should not be a right to jury trial in this broad class of
"complex" case to a jury. cases as well?
40 The assumption that attorneys cannot develop and Many other types of cases also require a jury to
present complex cases to a jury underestimates the unravel complicated factual issues totally unrelated to
abilities of the bar, especially the experienced and 95 financial or accounting problems. Products liability
capable counsel associated with the present litigation. cases almost always require an inquiry into the
Whether a case is tried to a jury or to a judge, the task design of the product, which includes the plan,
45 of the attorney remains the same. The attorney must structure, choice of materials, and specifications
organize and assemble a complex mass of which were used. For instance, cases arising from
information into a form which is understandable to 100 airplane crashes often present difficult issues, the
the uninitiated. In fact, one judge has suggested resolution of which is dependent upon engineering
attorneys may do a better job of trying complex cases evidence relating to the design, metallurgy, materials,
50 to a jury than to a judge. A. Leon Higginbotham, and service. Inevitably, both sides will present expert
Continuing the Dialogue: Civil Juries and the testimony on the different issues. Will this type of
Allocation of Judicial Power, 56 TEX. L. REV. 47 105 case also come within the complexity exception?
(1977). . . . Should we draw a distinction based upon whether a
case involves engineering or accounting
*** issues? Once we open the door, it would be difficult
JKO-4
Advanced Patent Law In re Finan. Sec.
Jaime Olin, 11/15/05 In re Japanese Elec. Prods.
Juries in Patent Cases
to keep it only partially open. In answering the contentions: the trial will be protracted. The court
Seventh Amendment question, we believe that any predicted that the trial would last a full year. It noted
test which is dependent upon the complexity 55 that the parties are nearing the end of discovery,
characterization of a case would be too speculative to which after nine years has produced millions of
5 be susceptible of any type of practical application. documents and over 100,000 pages of depositions.
The court did not estimate how much of this evidence
*** will be introduced at trial.
We hold that there is no complexity exception to the 60
Seventh Amendment right to jury trial in civil cases. Beyond these observations of the district court, we
10 We do not believe that the equitable action for an have only the parties' divergent predictions of the
accounting can be stretched so as to include all the proof that appellees' claims call for. We understand
complex commercial cases which arise today. their primary disagreements to concern four general
Moreover, we decline the invitation to read the Ross 65 sources of complexity:
footnote as establishing a new interpretation of the
(1) Proof of the Antidumping Act claims,
15 Seventh Amendment. And we do not believe any
(2) Proof of the alleged conspiracy,
case is so overwhelmingly complex that it is beyond
(3) Resolution of a number of financial issues,
the abilities of a jury. The order striking the demands
and
for jury trial is REVERSED and this case is
70 (4) Understanding of several conceptually
REMANDED for trial.
difficult legal and factual issues.
20
In re Japanese Elec. Prods. Antitrust Litig. ***
631 F.2d 1069 (3d Cir. 1980)
[Defendants] contend that litigation of [this] case will
produce an enormous mass of financial
[Before Seitz, Maris, Gibbons -- JKO]
75 documentation for the jury to work through. They
25 This certified interlocutory appeal from a pretrial also contend that the jury will need the assistance of
order of the district court raises an issue that currently substantial amounts of expert testimony on
is the subject of much debate: In an action for treble accounting, marketing, and other technical matters.
damages under the antitrust and antidumping laws, [Plaintiffs] reject this prediction, arguing that all the
do the parties have a right to trial by jury without 80 relevant financial evidence can be submitted neatly in
30 regard to the practical ability of a jury to decide the computer printouts with accompanying summaries.
case properly? They do not foresee great problems in the jury's
understanding of the evidence.
***
{The plaintiffs in this case included Zenith Radio 85 Finally, [defendants] argue that the complexity of the
Corp. and National Union Electric Corp., and the suit will be compounded by the presence of some
35 defendants were Mitsubishi Corp., seven Japanese issues that conceptually are very difficult.
television manufacturers, and nine subsidiaries of
***
these companies.--JKO} Both [National Union
Electric Corp.] and Zenith made timely demands for IV. [Seventh Amendment and Complexity]
jury trial. Fourteen of the defendants moved to strike
40 the demands, arguing that the case is too large and 90 [Defendants] dispute none of the foregoing
[arguments presented by plaintiffs] and concede that
complex for a jury. The district court denied their
a right to jury trial normally exists in suits for treble
motion, concluding that the Seventh Amendment
damages under the antitrust and antidumping laws.
does not recognize the complexity of a lawsuit as a
valid reason for denying a jury trial. They argue that the Seventh Amendment does not
95 guarantee a right to jury trial when any particular
45 *** lawsuit, because of its extraordinary complexity, is
beyond the ability of a jury to decide.
II. [Defendants’ Arguments]
[Defendants] argue that the proof of the foregoing For the sake of clarity, we should state our
claims will be too burdensome and complicated for a 100 understanding of complexity in this context. A suit is
jury. They have cited several dimensions of too complex for a jury when circumstances render the
50 complexity. jury unable to decide in a proper manner. The law
presumes that a jury will find facts and reach a
The district court accepted one of [defendants’] basic verdict by rational means. It does not contemplate
JKO-5
Advanced Patent Law In re Japanese Elec. Prods.
Jaime Olin, 11/15/05
Juries in Patent Cases
scientific precision but does contemplate a resolution Both [Defendants] and IBM {amicus – JKO} offer a
of each issue on the basis of a fair and reasonable second constitutional argument [in favor of a
assessment of the evidence and a fair and reasonable 55 complexity exception]. They contend that the due
application of the relevant legal rules. See Schulz v. process clause of the Fifth Amendment prohibits trial
5 Penn. R.R. Co., 350 U.S. 523, 526 (1956). A suit by jury of a suit that is too complex for a jury. They
might be excessively complex as a result of any set of further contend that this due process limitation
circumstances which singly or in combination render prevails over the Seventh Amendment's preservation
a jury unable to decide in the foregoing rational 60 of the right to jury trial.
manner. Examples of such circumstances are:
Although no specific precedent exists for a finding a
10 - An exceptionally long trial period, and
due process violation in the trial of any case to a jury,
- Conceptually difficult factual issues.
the principles that define the procedural requirements
65 of due process would seem to impose some
Some district courts have recognized complexity as a
limitations on the range of cases that may be
grounds for denying jury trial. See, e.g., ILC
submitted to a jury. The primary value promoted by
15 Peripherals Leasing Corp. v. IBM, 458 F. Supp. 423
due process in factfinding procedures is "to minimize
(N.D. Cal. 1978); In re Boise Cascade Securities
the risk of erroneous decisions." Greenholtz v.
Litigation, 420 F. Supp. 99 (W.D. Wash. 1976).
70 Inmates of the Nebraska Penal and Correctional
{Here they are again. Why are these Ninth Circuit
Complex, 442 U.S. 1, 13 (1979). A jury that cannot
cases still good law, even after In re Financial
understand the evidence and the legal rules to be
20 Securities Litigation? -- JKO} On the other hand, the
applied provides no reliable safeguard against
Ninth Circuit recently has held that the Seventh
erroneous decisions. Moreover, in the context of a
Amendment applies without regard to a lawsuit's size
75 completely adversary proceeding, like a civil trial,
or complexity. In re U.S. Financial Securities
due process requires that
Antitrust Litigation. {See JKO-2}
25 "the decisionmaker's conclusion . . . rest solely
The Supreme Court has supplied direct support for on the legal rules and evidence adduced at the
[Defendants’] position only in a footnote to its hearing."
opinion in Ross v. Bernhard. {See JKO-2}
80 Goldberg v. Kelly, 397 U.S. 254, 271(1970). Unless
The third prong of the [Ross] test plainly recognizes the jury can understand the legal rules and
30 the significance, for purposes of the Seventh evidence, we cannot realistically expect that the
Amendment, of the possibility that a suit may be too jury will rest its decision on them.
complex for a jury. Its inclusion in the three prong
test strongly suggests that jury trial might not be 85 As we have noted, the law presumes that a jury will
guaranteed in extraordinarily complex cases . . . . decide rationally; it will resolve each disputed issue
35 The district court made no use of the Ross footnote, on the basis of a fair and reasonable assessment of
finding it too brief to authorize a major departure the evidence and a fair and reasonable application of
from the traditional construction of the seventh relevant legal rules. We conclude that due process
amendment. Zenith Radio Corp. v. Matsushita Elec. 90 precludes trial by jury when a jury is unable to
Industrial Co., 478 F. Supp. 889 (E.D. Pa. 1979). We perform this task with a reasonable understanding of
40 also find it unlikely that the Supreme Court would the evidence and the legal rules.
have announced an important new application of the
seventh amendment in so cursory a fashion. Yet, at ***
the very least, the Court has left open the possibility 95 [Plaintiffs] argue that the due process objection to
that the "practical abilities and limitation of juries" jury trials carries less weight than the preservation of
45 may limit the range of suits subject to the Seventh the right to jury trial because it concerns a
Amendment and has read its prior Seventh "hypothetical prospect" of an improper jury verdict
Amendment decisions as not precluding such a and would be applied "prospectively prior to trial."
ruling. With this understanding of Ross, we shall 100 We find no merit in this argument. The due process
consider the merits of appellants' arguments for a objection does concern, to be sure, a possibility of an
50 complexity exception. erroneous and erratic jury verdict that might not
occur, but this possibility is anything but remote. If
***
the jury is unable to understand the evidence and
VI. [Due Process vs. Seventh Amendment] 105 legal rules the possibility is substantial. Striking a
jury trial demand in order to prevent this possibility is
JKO-6
Advanced Patent Law In re Japanese Elec. Prods.
Jaime Olin, 11/15/05 SRI v. Matsushita
Juries in Patent Cases
prospective relief. However, the procedural of arbitrary and erratic judicial power.
requirements of due process are by their very nature
prospective: They are safeguards against the Therefore, we find the most reasonable
possibility of erroneous and arbitrary deprivations of accommodation between the requirements of the
5 liberty and property. This feature never has been 60 Fifth and Seventh Amendments to be a denial of jury
thought to diminish their importance. trial when a jury will not be able to perform its task
of rational decisionmaking with a reasonable
The district court asserted that the due process understanding of the evidence and the relevant legal
argument fails to account for the special benefits that standards. In lawsuits of this complexity, the interests
10 juries bring to civil litigation. Because the jury is a 65 protected by this procedural rule of due process carry
representative of the community and can call upon greater weight than the interests served by the
the community's wisdom and values, the legal system constitutional guarantee of jury trial. Consequently,
has relied on it to perform two important functions. we shall not read the Seventh Amendment to
The first is "black box" decisionmaking. The jury guarantee the right to jury trial in these suits.
15 issues a verdict without an opinion to explain or 70
justify its decision. This feature allows juries to SRI Int’l v. Matsushita Elec. Corp.
perform a type of "jury equity," modifying harsh 775 F.2d 1107 (Fed. Cir. 1985)
results of law to conform to community values in
cases where a judge would have to apply the law [En banc opinion, 5-1-5, Markey – JKO]
20 rigidly. The second function is to accord a greater 75
measure of legitimacy to decisions that depend upon {This case held that the reverse doctrine of
determinations of degree rather than of absolutes, equivalents is a question of fact, and the court denied
such as whether particular conduct constitutes Matsushita’s motion for summary judgment . The
negligence. Certain decisions of this "line-drawing" majority opinion does not discuss the denial of SRI’s
25 nature seem less arbitrary when made by a 80 request for a jury trial. This omission apparently
representative body like the jury. Zenith Radio Corp., necessitated this extra section. – JKO}
478 F. Supp. at 938-42.
MARKEY, Chief Judge, with whom NEWMAN,
In the context of a lawsuit of the complexity that we Circuit Judge, joins, additional views.
30 have posited, however, these features do not produce 85
real benefits of substantial value. The function of ***
"jury equity" may be legitimate when the jury (a) Complexity
actually modifies the law to conform to community
values. However, when the jury is unable to Those who would create a basis for distinguishing the
35 determine the normal application of the law to the 90 right to jury trial of patent litigants from the same
facts of a case and reaches a verdict on the basis of right of other litigants point to the "complexity"
nothing more than its own determination of present in some patent cases.
community wisdom and values, its operation is
indistinguishable from arbitrary and unprincipled Despite the clear directive of the Seventh
40 decisionmaking. Similarly, the "line-drawing" 95 Amendment -- that "the right to jury trial shall be
function is difficult to justify when the jury cannot preserved" (emphasis added) -- one federal appellate
understand the evidence or legal rules relevant to the court and three federal district courts have remanded
issue of where to draw a line. or struck jury demands in "complex" civil cases,
relying on a judge-created "complexity exception".
45 The district court also noted that preservation of the 100 {See JKO-3:26-31; Japanese Elec. Prods., JKO-6}. . .
right to jury trial is important because the jury
"provides a needed check on judicial power." Zenith Proponents of a "complexity exception" say legally
Radio Corp., 478 F. Supp. at 942. A jury unable to or factually complex matters, e.g., those appearing in
understand the evidence and legal rules is hardly a some antitrust, securities, or patent cases, are "too
50 reliable and effective check on judicial power. Our 105 complex" for juries to comprehend, and those cases
liberties are more secure when judicial should therefore be tried by a single judge. One line
decisionmakers proceed rationally, consistently of argument looks to the distinction made in England
with the law, and on the basis of evidence produced in 1791 between "suits at common law" and
at trial. If the jury is unable to function in this "proceedings at equity". Professor Arnold's research
55 manner, it has the capacity of becoming itself a tool 110 would undermine the acceptance of the historical
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Juries in Patent Cases
basis for that position. See M. Thomas Arnold, A appropriately submissible to judges sworn to uphold
Historical Inquiry Into the Right to Trial By Jury in that Constitution. To permit a judicial interpretation
Complex Civil Litigation, 128 U. PA. L. REV. 829 60 of a constitutional provision that destroys another
(1980). . . . It is argued, nonetheless, that the Seventh constitutional provision is to place at risk the entire
5 Amendment right to jury trial, placed in our Constitution. See Ullmann v. United States, 350 U.S.
Constitution in 1791, was never "intended" to extend 422 (1956).
to certain "complex cases" of today.
65 The call for injection of "expertise" into our
A second line of argument for a "complexity jurisprudence can be as alluring, and as fatal, as the
10 exception" is that trying a complex case before an sirens' song. Exhibiting no desire to convert our
"incompetent" jury denies the due process protection jurisprudence into "juriscience", Congress has
of the Fifth and Fourteenth Amendments. See In re repeatedly rejected calls for "specialized" courts
Japanese Electric Prods. Antitrust Litigation, 631 70 limited to decision making solely on technological
F.2d 1069,1086 (3d Cir. 1980). {See JKO-6} considerations and has cautiously limited reliance on
15 Proponents of that view argue that a jury "incapable" "expertise" to its employment by administrative
of understanding the evidence, or the legal rules to be agencies.
applied, provides no "constitutional" safeguard
against an "erroneous" result. The argument confuses 75 Those few courts that have referred to a "complexity
the route with the destination, for "due process" is exception" have pointed to dicta in Ross v. Bernhard.
20 just that, a process. It is an important and {See JKO-2} . . . n10
constitutionally required process. It is not a result.
{This is poetic, but what does it actually mean? – n10 Professor Wright was "surprised" by the reference
JKO} 80 to "the practical abilities and limitations of juries":
25 One commentator, apparently recognizing that not all . . . The third of the factors mentioned in that
footnote was surprising since it seems to invite a
judges are inevitably more competent than all juries, balancing approach to the right to jury trial,
has suggested that the "complexity exception" should 85 while the accepted learning has been that that
encompass judges. See 5 J. MOORE'S FEDERAL balance was already struck by the Seventh
PRACTICE para. 38.02[1] (1984). Empirical support Amendment. But "the footnote is so cursory,
30 is simply lacking for the assumption that the process conclusory, and devoid of cited authority or
provided in a properly conducted jury trial is reasoned analysis that it is difficult to believe it
necessarily less "due" than that provided in a bench 90 could have been intended to reject such historical
trial. practice or Supreme Court precedent."
WRIGHT, LAW OF FEDERAL COURTS § 92,
at 614 (4th ed. 1983).
35 However some may view what they see as a "better
system", and however one may weigh its effect on 95 A footnote to the dissent [in Ross] stated:
the due process clauses of the Fifth and Fourteenth
Amendments, judges are nowhere authorized to . . . Certainly there is no consensus among
exercise their personal predilection by revising or commentators on the desirability of jury trials in
40 repealing the Seventh Amendment. n8 civil actions generally. Particularly where the
100 issues in the case are complex . . . much can be
n8 Little can be added to Judge Gilmore's statement in said for allowing the court discretion to try the
the patent related case of Kian v. Mirro Aluminum case itself. " Ross. at 545 n.5.
Co., 88 F.R.D. 351, 355(E.D. Mich. 1980):
45 Though the Third Circuit majority in Japanese
Those who would seek an " elitist" approach to 105 Electronic Products rejected contentions that
the use of the jury trial would undermine one of "extraordinary complexity renders a suit equitable in
the most fundamental of our rights. There is no nature," 631 F.2d at 1081, and that complexity
complexity exception to a jury trial that would warranted discretionary exercise of equitable
50 authorize the denial of a jury when it is
otherwise available under the Seventh
jurisdiction, id. at 1083, it remanded for a
Amendment. 110 determination of whether a balancing of Fifth and
Seventh Amendment interests showed that
The arguments supporting denial of a jury demand in
55 complex civil cases are clearly submissible to the "a jury will not be able to perform its task of rational
decision-making with a reasonable understanding of
Congress or to the States in support of a proposal
under Article V of the Constitution; they are not
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Juries in Patent Cases
the evidence and the relevant legal standards." Id. at because they are "complex" or "ultimate". The
1086. . . . district court, in announcing its decision to deny a
55 jury trial and employ a bench trial, said "these
The Ninth Circuit, in which sits the district court in questions" could be resolved in that way "more
this case, has repeatedly rejected calls for a economically and expeditiously." But whether
5 "complexity exception", stating that "we do not judicial economy and expedition might be served is
believe any case is so overwhelmingly complex that irrelevant. The Seventh Amendment contains no
it is beyond the abilities of a jury." In re Financial 60 "economy" exception.
Securities Litigation, {see JKO-2}. The Seventh and
Fifth Circuits have reserved judgment on the (b) Management
10 constitutionality of a complexity exception and have
declined to apply it. See, e.g., Soderbeck v. Burnett For those whose concern for jury competence would
County, Wisconsin, 752 F.2d 285, 289 (7th Cir. deny patent litigants the same right to jury trial
1985); Pinemont Bank v. Belk, 722 F.2d 232, 238 65 available to others, reassurance abounds. To begin,
(5th Cir. 1984). No circuit has affirmed an actual jury the same governing Rules apply.
15 denial on the ground of complexity.
- First, if genuine material fact issues are absent,
We discern no authority and no compelling need to jury trial may be denied and summary
apply in patent infringement suits for damages a judgment granted as a matter of law. Rule 56,
"complexity" exception denying litigants their 70 Fed. R. Civ. P.
20 constitutional right under the Seventh Amendment. - Second, a court may remove a case from the
There is no peculiar cachet which removes jury on motion for a directed verdict, the facts
"technical" subject matter from the competency of a presented at that point being undisputed by the
jury when competent counsel have carefully movant and failing in law to support any
marshalled and presented the evidence of that subject 75 possible verdict for the non-mover. Rule 50(a),
25 matter and a competent judge has supplied carefully Fed. R. Civ. P.
prepared instructions. - Third, after the jury has returned its verdict,
the court may set it aside on motion for JNOV
There is thus no warrant for limiting even complex when, on the totality of the evidence, and after
patent litigation to an exclusive professional ritual 80 drawing all inferences and credibility
30 engaged in only by lawyers and judges. Elbowing to determinations in favor of the non-movant, no
one side the Seventh Amendment, and the reasonable jury could have reached that verdict.
compelling social and democratic (much less Rule 50(b), Fed. R. Civ. P.
constitutional) bases for its existence, would be at - Lastly, judges exercise substantial control over
best an unseemly judicial exercise. 85 jury trials in choosing to require a general or
35 special verdict, Rule 49(a), Fed. R. Civ. P., in
Jury demands are made before jury selection. The admitting and excluding evidence, in
"competency" of the jury that will be selected cannot instructing the jury on the law, in choosing to
at that time be reliably measured. Doubtless juries employ interrogatories, Rule 49(b), Fed. R.
vary in "competence" but, as appears below, denial of 90 Civ. P., and in granting new trials, Rule 59,
40 a jury demand should not be premised on the notion Fed. R. Civ. P. . . .
that the jury will be allowed to function as though it
were left twisting in the wind. . . Reassurance resides also in the role of judge and
counsel in managing, simplifying, and assuring
The constitutional right to jury trial should not presentation of complex evidence with clarity to the
depend on which judge is assigned; i.e., on whether a 95 fact-finder. That effective trial management is the
45 particular judge views particular fact issues as "too route to fair resolution of "complex" matters in jury
complex" for what the judge assumes will be the trials is a truism unchallenged by extant empirical
jury's "common experience". . . . evidence.
100 As they have in varying degrees for almost 200 years,
In the case at bar, the district court indicated that this
trial judges daily require, as did the district court
court had distinguished between fact issues
here, pretrial procedures in an effort to identify and
50 "appropriate" for a jury and those "appropriate" for a
focus the issues. They discourage unnecessary
judge. There is, however, no such distinction in the
pleadings and encourage stipulation of undisputed
Seventh Amendment. Fact issues are no less such
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Juries in Patent Cases
matters. They precharge the jury and explain legal 55 Eng. Rep. 489, decided in 1740. Clench, a civil case
and technical terms to be used. They shield the jury for possession of personal property, was tried in the
from irrelevant, non-probative evidence and from Court of Chancery, contrary to the pleading of the
unnecessarily lengthy or complicated "foundation" defendant, who requested trial by jury. In removing
5 laying. They encourage use of charts, graphs, and the case, the Chancellor stated that the average juror
other visual devices to focus and clarify the evidence. 60 was not adept enough to read the complex
Following summations, trial judges greatly facilitate documents, which accounted for the majority of the
the jury's function when they give clear-cut, evidence central to the case. The Chancellor referred
comprehensible jury instructions in plain and simple to the issue as one "to be discerned by books and
10 English. deeds, of which the Court was better able to judge
65 than a jury of ploughmen."
And if further reassurance be demanded, it can be
found in the availability of the appellate process.
In Gyles, the plaintiff sought an injunction to stay the
printing of an allegedly plagiarized book. The
Chancellor found the facts in Gyles too complex for a
Note: The Constitutionality of a Complexity 70 "common jury" because of the extensive reading that
15 Exception to the Seventh Amendment would be required. Unlike today, jurors of the time
73 CHI.-KENT L. REV. 865 (1998) were commonly illiterate. Therefore, in cases
Joseph A. Miron, Jr. requiring extensive reading of any kind, whether or
not the material itself was complex, the Chancellor
[Associate attorney, Skadden Arps, Chicago, IL. B.A.
20 Michigan State University. M.B.A., Finance, DePaul 75 would take it upon himself to decide both the legal
University. J.D., Chicago-Kent College of Law, 1999.] and factual matters. The Chancellor's statement in
Gyles typifies this argument:
***
III. The Historical Foundation of a Complexity The court is not under an indispensable obligation to
25 Exception 80 send all facts to a jury, but may refer them to a master,
to state them, where it is a question of nicety and
difficulty, and more fit for men of learning to inquire
A. Existence of a Complexity Exception in into, than a common jury. The House of Lords very
English Common Law often, in matters of account which are extremely
85 perplexed and intricate, refer it to two merchants
30 1. Historical foundation in England named by the parties, to consider the case, and report
their opinions upon it, rather than leave it to a jury.
The English common law in 1791 allowed the
Chancellor to withhold complex cases from the jury. Wedderburn v. Pickering, 13 Ch. D. 769, decided in
In these cases, the Chancellor assumed the role of 90 1879, is another example of a court denying a jury
35 judge and jury and tried both the factual and legal trial due to complex written evidence, although it was
issues. He exercised this power whenever he heard after 1791. Wedderburn involved a dispute
concluded that a case involved issues beyond the over the ownership of real property. The Chancellor
understanding of the jury. While this criterion for commented on his discretion to remove a complex
judging complexity may be simplistic, the pertinent 95 case from a jury:
40 fact is that the principle of removing complex cases
from a jury was accepted in English common law, I do not forget that this common law right, if I may so
and therefore should be part of the Seventh call it, ought not to be taken away by mere caprice,
Amendment today. but only when there is some reason why the case
100 cannot be conveniently tried before a jury. 'This rule
***
was framed expressly to meet cases which would,
45 2. English case law supporting the theory of a under the old system, have been tried in the Chancery
complexity exception Division, and which might be considered, by reason
of involving a mixture of law and fact, or from great
*** 105 complexity, or otherwise, not capable of being
The involvement of complex or extensive written conveniently tried before a jury.'
50 evidence was perhaps the most common scenario in
which the Chancellor would assume jurisdiction over In denying a jury trial, the Chancellor explained,
a case on complexity grounds. Two cases that
illustrate this point are Clench v. Tomley, 21 Eng. 110 "I think that this action is one which cannot be
Rep. 13, decided in 1603, and Gyles v. Wilcox, 26 conveniently tried before a jury. It is a conveyancing
action. The ownership of this site is entirely a question
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Juries in Patent Cases
of title, and depends upon the construction of certain For the first characteristic, courts typically consider
deeds." the number of parties, probable length of the trial,
and amount of evidence and corresponding
While Wedderburn might be discounted to a certain 60 exhibits to be introduced into the record. The number
5 extent because it was decided after 1791 {the cut-off of parties is relevant because of the added complexity
date for examining the right to jury trials under the associated with a trial consisting of numerous claims,
Seventh Amendment -- JKO}, the Chancellor based counterclaims, and cross-claims. In these trials, jurors
his decision on his understanding of pre-1791 cases - who, unlike judges, have little experience in
of "great complexity" and "cases that would, under 65 deciphering large quantities of legal facts - have a
10 the old system have been, tried in the Chancery difficult time reaching a well-reasoned decision. The
Division." It is clear that the Chancellor believed that trial length is important because, in today's society,
complex cases should be, and always had been, cases may last years, which puts an inordinate burden
within the realm of the Court of Chancery. on jurors.
70
15 *** For the second characteristic, courts determine
whether the average juror can reasonably or
B. Colonial Adoption and Use of the Complexity realistically understand the sophisticated evidence
Exception presented in the case. Opponents of a complexity
*** 75 exception point out that, while the evidence may be
20 While the records of colonial cases are incomplete complex, the counsel's task, as an officer of the court,
and not very abundant, one early American case is to make it understandable to the average juror. This
deserves recognition. President of the Farmer's Bank argument, however, misses the point of why a
v. Polk, 1 Del. Ch. 167, decided . . . in 1821, involved complexity exception exists. In a complex case,
a case that called for an accounting. Referring to the 80 presenting the issues in an "understandable" way may
25 facts of the case, the court remarked that involve glossing over many of the intricacies and
result in an inaccurate picture of the facts. This raises
these transactions are so complicated, so long and one of the essential questions regarding the
intricate, that it is impossible for a jury to examine complexity exception - is it possible to make all
them with accuracy. They will require time, assiduous
30 attention and minute investigation, and are involved in
85 relevant concepts sufficiently intelligible to an
so much confusion and difficulty that no other tribunal average jury? As noted earlier, the common law of
can afford the plaintiff a remedy. England apparently did not think so, because the
Chancellor often assumed jurisdiction over cases he
Given the court's use of the term "accuracy," the considered too complex for a jury.
35 logical concern of the court was the "practical 90
abilities and limitations of juries." For the third characteristic, courts examine how
difficult it may be for jurors to apply the substantive
C. Characteristics Considered by Courts in law to the facts presented at trial. . . . The complexity
Invoking a Complexity Exception of the law in certain cases makes it unfair to subject a
40 95 party to the decision of jurors who might not fully
*** understand the testimony and evidence presented to
For the modern courts that have adopted the theory of them. This factor lends itself to the argument that the
a complexity exception, their decision to invoke the Seventh Amendment entails some sort of due process
exception arises when "[a] suit is too complex for a consideration.
45 jury." A case is considered "too complex" when 100
"circumstances render the jury unable to decide in a ***
proper manner." Three characteristics of a case assist V. Conclusion
the court in the determination of whether it is "too
complex" for a jury trial: ***
50 105
(1) the operative details and nature of the trial, Courts have begun to realize that the mechanistic
(2) the nature of the evidence to be proposed at approach to interpreting the Seventh Amendment is
trial, and no longer an effective method of interpretation.
(3) the difficulty of the substantive law to be Specifically, deciding whether to grant a jury trial
55 applied to this evidence. 110 based on a static list respects the form but not the
substance of English common law, to which courts
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Juries in Patent Cases
should turn in reading the Seventh Amendment. C. WHY PARTIES CHOOSE OR AVOID JURY
TRIALS IN PATENT LITIGATION
Before Markman v. Westview Instruments, Inc., {See
JKO-1:69-76} most scholars deemed the Court's
55 1. Why Parties Choose Jury Trials In
5 intention in footnote ten in Ross v. Bernhard {See
Patent Litigation
JKO-2) to have been misinterpreted. This footnote
claimed that a consideration in granting a jury trial is
the "practical abilities and limitations of juries." The [J]ury trials are preferred by at least one party over a
Court further strengthened this line of reasoning in bench trial in a majority of patent cases. What
10 Markman, lending additional support to the theory of 60 benefits do jury trials offer parties involved in patent
a complexity exception. While Justice Souter's litigation?
opinion in Markman did not explicitly create a
complexity exception {indeed, the Court did not even Possible reasons for a party to prefer a jury trial
cite to Ross – JKO}, the "functional considerations" include:
15 referred to are not in any way unique to patent cases.
They amount to a complexity consideration in other 65 The ribbon and the seal on the patent
cases as well. Thus, the Court has laid the impresses the jury, an obvious benefit to the
groundwork for articulating a doctrine of a patentee. This reason seems to be supported
complexity exception that a proper reading of the by the above-noted statistics indicating that
20 Seventh Amendment in light of the 1791 English juries tend to favor patentees, at least with
common law only reinforces. Whether the Court 70 respect to the validity of patents.
chooses to construct an edifice upon this spadework The party is a U.S. company, while the
remains to be seen. other is a foreign one. While foreign bias is
probably a reason that is often used to
25 *** decide between a jury and a bench trial, at
75 least one set of statistics undermines this
reasoning as it shows that there is no
difference between the probabilities that a
JURIES: WHY BOTHER? foreign invented or owned patent versus a
domestic one will be held invalid.
80 The party's case is weak but involves
{Even with all the skepticism about jury performance in complex technical questions so that a jury
30 complex cases, requests for jury trials in patent cases have
might get confused enough to even out the
increased substantially over the last century. In 1940, only
2.5% of patent cases were tried to the jury, and this odds.
remained fairly constant through 1970. The number has The party's legal case is weak but
steadily increased since that time, however, with 59% of all 85 "morally" strong so that a jury's emotions
35 patent cases being decided by juries in 1999. See might be favorable.
Kimberly A. Moore, Judges, Juries, and Patent Cases – An
Empirical Peek Inside the Black Box, 99 MICH. L. REV. 2. Why Parties Avoid Jury Trials in Patent
365, 366 (2000). – JKO} Litigation
90
40 On the Role of Juries in Patent Litigation (Part 1) The above statistics {omitted – JKO} indicate that a
83 J. PAT. & TRADEMARK OFF. SOC’Y 791 (2001) majority of the time, at least one party wants a jury,
Phillipe Signore but they fail to show how many times at least one
party does not want a jury. We know that 40% of the
[Partner, Oblon Spivak, P.C. J.D., from the Georgetown 95 cases that reach trial are bench trials, which means
University Law Center, 2001. Ph.D. in Physics from the
that in 40% of the cases that reach trial, neither party
45 University of Florida, 1994, where he was awarded the
Scott Memorial Award for "most outstanding experimental wants a jury. For the 60% of cases that are jury trials,
Physics doctoral graduate".] it is impossible to know from these statistics whether
or not both parties wanted a jury. Therefore, the
*** 100 percentage of tried cases where at least one party
III. THE PRESENT JURY SYSTEM FOR PATENT does not want a jury is between about 40% and 100%
50 LITIGATION of all tried cases. {Why is this surprising? Isn’t it
just typical litigation strategy to oppose the other
*** party’s request for a jury trial?—JKO}
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Jaime Olin, 11/15/05 Evidence & Alternatives
Juries in Patent Cases
cases (discussed next) is outweighed by the above
benefits. n137
***
n137 See, e.g., Hosteny, If You Are Looking For
5 D. THE ADVANTAGES AND 60 Justice, Try a Jury, INTELLECTUAL PROPERTY TODAY,
DISADVANTAGES OF JURY TRIALS IN September 2000, 30-31 (“We are, on the whole, better
PATENT LITIGATION off with juries. If there is too much complexity for a
jury to handle, there is probably too much complexity
for a judge to handle. But too much complexity is
The previous section considered the advantages and 65 your fault as the attorney. The first job of a trial
10 disadvantages of jury trials in patent cases from the lawyer is to simplify. If you do, and if your cause is
perspective of the parties. What can be said for and good, trust a jury.”)
against jury trials in patent cases from a public policy
perspective? 2. The Disadvantages of Jury Trials in
70 Patent Litigation
15 1. The Advantages of Jury Trials in Patent
Litigation Significantly, there is no statutory educational
requirement for federal jury duty. In most U.S.
The following are arguments favoring jury trials, as counties, the number of voters without a college
compared to bench trials. These benefits apply to any 75 degree is greater than the number of voters with a
20 jury trial, and thus also to patent jury trials. college degree. Accordingly, the jury system is set up
so that less educated persons are more likely to be
Juries protect against the eccentricities and selected on a federal jury. This seems to be a
unfairness of judges. drawback for a system that attempts to resolve
Juries educate citizens about the legal 80 complicated technical and legal issues, such as those
25 system and foster democratic participation. typically involved in patent litigation. Accordingly,
Jurors bring a variety of backgrounds and the overriding criticism of using juries in patent
points of view to the deliberation thereby cases revolves around the perceived inability of
reducing the probability for bias. jurors to comprehend the technical evidence
Jurors take their job seriously and feel a 85 presented to them and the legal concepts they must
30 sense of duty while deliberating. apply to that evidence.
The collective recollection of the evidence
and testimonies can lead to more accurate ***
results.
The decision is made while the evidence is 90
35 still fresh in the mind of the fact finder. EMPIRICAL EVIDENCE &
Jurors are able to focus on the issues ALTERNATIVES
because they are not interrupted during Jaime K. Olin
deliberations.
Jurors do not feel the pressure of 95 I. EMPIRICAL EVIDENCE ABOUT THE
40 managing a docket. CURRENT SYSTEM
A verdict can be obtained relatively quickly
(within days) after the end of trial compared Courts and commentators have questioned the
to a judge's decision, which may come jury system for many years, largely based on intuition
months after trial. 100 that lay jurors cannot perform the tasks set to them.
45 Expensive post-trial briefs are not Only recently have researchers attempted to
required. However, jury trials tend to last systematically study jury performance in complex
longer. cases. This evidence, along with whatever may be
The judge filters out inadmissible evidence discovered in the future, is integral to deciding
from the fact finder. In a bench trial, the fact 105 whether juries are actually competent in these cases,
50 finder is exposed to inadmissible evidence. or whether an alternative system of adjudication is
necessary.
Furthermore, many patent litigators view the jury One researcher took the logical first step by
system as an appropriate tool for finding justice, even asking if district court judges have done a better job
in patent litigation. For these practitioners, any 110 of deciding claim construction issues in patent cases
55 problem associated with the complexity of patent than juries did pre-Markman. See Kimberly A.
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Juries in Patent Cases
Moore, Are District Court Judges Equipped to One’s (Technically Competent) Peers?, 21 WHITTIER
Resolve Patent Cases?, 15 HARV. J. LAW & TECH. 1 L. REV. 645 (2000).
(2001). Moore analyzed all claim construction
appeals to the Federal Circuit from April 23, 1996 (3) Require every jury to contain a certain
5 (the day of the Markman decision) to 2000, which 60 percentage of college-educated jurors. See
included 323 cases. Moore labeled a claim Franklin Strier, The Educated Jury: A Proposal for
construction as “wrong” when it was overturned by Complex Litigation, 47 DEPAUL L. REV. 49 (1997).
the Federal Circuit. She found that 33% of all
appealed patent cases included at least one claim (4) Develop a modified jury-selection process to
10 incorrectly construed by the district court judge 65 require jurors with experience in the patent
(judges had problems with both technically simple system. See Phillipe Signore, On the Role of Juries
[such as “between” or “a”] and technically complex in Patent Litigation (Part 2), 83 J. PAT. &
[such as “memory selection second switch means”] TRADEMARK OFF. SOC’Y 896 (2001).
terms). In 81% of these cases, the Federal Circuit
15 reversed or vacated the decision. Thus, Moore 70 (5) Mandate Federal Circuit approved pattern
argues, giving judges the task of claim construction jury instructions for patent cases. See Gerald J.
does not make for a more efficient, reliable, or Mossinghoff & Donald R. Dunner, Increasing
effective system. Certainty in Patent Litigation: The Need for Federal
This research, though by no means perfect, does Circuit Approved Pattern Jury Instructions, 83 J. PAT
20 provide a starting point for the debate about which 75 & TRADEMARK OFF. SOC’Y 431 (2001).
system of adjudication is actually best for patent law.
Moore’s study does not directly compare judge and (6) Increase transparency in patent cases by
jury verdicts on claim construction during a particular permitting reviewability of jury verdicts. See
time period: this would be impossible (at least for the Kimberly A. Moore, Juries, Patent Cases, and A Lack
25 last fifteen years), since juries are no longer permitted 80 of Transparency, 39 HOUS. L. REV. 779 (2002).
to decide this issue. A more informative study would
compare judge and jury performance on an issue both (7) Give the U.S. Court of Int’l Trade plenary
are entitled to decide, such as validity. If it turned jurisdiction over trial-level patent cases. See John
out that these decisions were affirmed or reversed at B. Pegram, Should There Be a U.S. Trial Court With
30 the same rate by the Federal Circuit, this would 85 a Specialization in Patent Litigation?, 82 J. PAT. &
provide hard evidence that concerns about juries’ TRADEMARK OFF. SOC’Y 765 (2000).
lack of technical expertise are unfounded. This
would also mean, perhaps, that for the patent system (8) Promote alternative dispute resolution as an
to develop greater certainty and reliability, an alternative to patent litigation. See Richard P.
35 alternative apart from pure bench trials and pure jury 90 Cusick, et al, A Critical Analysis of the Proposed
trials might be the answer. National Patent Board, 13 OHIO ST. J. ON DISP.
RESOL. 461 (1998).
II. ALTERNATIVE SYSTEMS OF PATENT
LITIGATION (9) Provide expedited review of claim construction
40 95 issues to the Federal Circuit. See Kimberly A.
Because of the perceived failure on the part of Moore, Are District Court Judges Equipped to
both juries and district court judges to properly Resolve Patent Cases?, 15 HARV. J. LAW & TECH. 1
decide patent cases, many commentators have come (2001).
up with alternatives to address this problem:
45
(1) Allow jurors to take notes, question witnesses,
and discuss the evidence before deliberations. See
Joel C. Johnson, Note, Lay Jurors in Patent
Litigation: Reviving the Active, Inquisitorial Model
50 for Juror Participation, 5 MINN. INTELL. PROP. REV.
339 (2004).
(2) Replace the traditional jury system with a
system of specially qualified (“blue-ribbon”),
55 expert jurors. See Davin M. Stockwell, A Jury of
JKO-14