Patent Lawyer Blog
Plaintiff Abbott Laboratories and Abbott Biotechnology Limited (“Abbott”) filed a declaratory judgment action that defendant’s patent was invalid. After the defendant demand a jury trial, Abbott moved to strike the defendant’s demand for a jury trial on the issue of patent validity.
As the district court explained, “[t]he parties agree that whether a Seventh Amendment right to a jury trial arises here is governed by Tull v. United States, 48 U.S. 412 (1987), which “turns on whether the case ‘is more similar to cases that were tried in courts of law than to suits tried in courts of equity or admiralty’ in 1791,” when the Seventh Amendment was adopted. Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1339 (Fed. Cir. 2001) (quoting Tull, 481 U.S. at 417)). A right to a jury trial arises only if a case is more similar to those that were tried in courts of law. Id. This inquiry requires a two-part evaluation of (1) the nature of the action; and (2) the nature of the remedy sought. See id. (citing Tull, 481 U.S. at 417-18)). In this analysis, “the nature of the remedy is more important than that of the action.” Id. (citing Chauffeurs, Local No. 391 v. Terry, 494 U.S. 558, 565 (1990); Tull, 481 U.S. at 417, 421)).”
The district court then focused on whether the underlying controversy was either legal or equitable. “Whether a claim for declaratory judgment, which did not exist in 1791, is properly classified as legal or equitable turns on the underlying controversy on which is founded. In re Lockwood, 50 F.3d 966, 973 (Fed. Cir. 1995), vacated 515 U.S. 1182 (1995); see In re Tech. Licensing Corp., 423 F.3d 1286, 1289 (Fed Cir. 2005) (per curiam). In Lockwood, where a patentee brought an infringement action seeking damages and an injunction and demanded a jury trial, and the alleged infringer counterclaimed for a declaration that the patents were invalid, the Federal Circuit held that the closes eighteenth-century analog was a suit for patent infringement where an accused infringer pleaded invalidity as an affirmative defense. Lockwood, 50 F.3d at 974; Tech. Licensing, 423 F.3d at 1289. The court ruled that such cases implicate the Seventh Amendment’s right to a jury trial because a patentee in the eighteenth century had a choice as to what remedy to seek for infringement — if the patentee sought damages, the patentee brought an action at law (and the defense of invalidity would be tried to a jury); if the patentee sought only to enjoin future acts of infringement, the patentee brought a suit in equity (and the defense of invalidity would be tried to the bench). See Lockwood, 50 F.3d at 976; Tech. Licensing, 423 F.3d at 1289; Tegal, 257 F.3d at 1340-41. Applying this analysis and emphasizing the importance of the nature of the remedy sought, the Federal Circuit has held that the right to a jury trial arises in situations where a patentee facing a claim or defense of invalidity would otherwise be able to seek damages for infringement from the alleged infringer. See, e.g., Tech. Licensing, 423 F.3d at 1289-91; Tegal, 257 F.3d at 1339-41.”
The district court concluded that a jury trial demand was improper because the matter to be tried had nothing to do with damages. “Here, the only issue at trial will be the parties’ competing claims for declaratory judgment regarding the validity of the ‘442 patent. Since this claim does not seek damages for patent infringement, Kennedy does not have a right to a jury trial on the validity of the ‘442 patent. See Tech. Licensing, 423 F.3d at 1289-91; Tegal, 257 F.3d at 1339-41.”
Finally, “[t]he Court determines that the analysis in MedImmune, Inc. v. Genentech, Inc., 535 F. Supp. 2d 1020 (C.D. Cal. 2008), is compelling. There, a patent licensee sought a declaratory judgment that a patent was invalid, unenforceable, and not infringed by the licensee. Id. at 1021. After the patentee stipulated that it would not sue the licensee for infringement, the only claims that remained before the court were for declaratory judgments of the rights and obligations under the license agreement, invalidity of the patent, and unenforceability of the patent. Id. at 1021-22. The licensee then moved to strike the patentee’s demand for a jury trial. The court, analyzing each of the claims at issue individually, held that no jury trial right existed on the contract claim because the patentee conceded it could not seek damages as the contract had not been breached. Id. at 1023. Addressing the patent validity claim, the court applied the Federal Circuit’s Lockwood analysis, highlighting the centrality of the nature of the relief sought, and held that because the patentee could not assert a claim for infringement damages no right to a jury trial existed on the patent validity issue. Id. at 1029. Here, Kennedy cannot assert a claim for infringement damages where the only issue at trial will be the parties’ competing claims for declaratory judgment regarding the validity of the ‘442 patent.”
Accordingly, the district court granted the motion to strike the jury trial demand.
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.