Toward a more reliable fact-finder in patent litigation.

• Author: Tindell, Amy
• Position: Company overview

INTRODUCTION I. HISTORICAL DEVELOPMENT OF SEVENTH AMENDMENT JURISPRUDENCE II. THE SEVENTH AMENDMENT IN THE CONTEXT OF PATENT TRIALS III. JUDGING JUDGES AND JURIES: WHAT THE STATISTICS SUGGEST IV. WHERE DO WE GO FROM HERE? FROM PEER-TO-PATENT TO PEER-REVIEWED LITIGATION CONCLUSION INTRODUCTION

Commentators describe the institution of the American jury as both a blessing and a curse. On the positive side, scholars hail the jury as a stalwart protector of defendants from an overly oppressive government. (1) Judges praise juries for providing an additional measure of perceived fairness and credibility to the United States legal system. (2) The presence of a jury tends to encourage simplification of complex issues. (3) Further, service on a jury provides a practical education in civics to the American public. (4) These praises, however, are sung more loudly in some corners of the legal world than in others. For example, many practitioners in patent law view jury fact-finding in their cases as a curse. At best, patent litigators may perceive juries as simply unequipped to understand complex technical, scientific, and legal standards involved in patent cases. (5) Tangential issues are thus viewed as more likely to sway a patent jury that does not understand more challenging issues central to a case. (6) At worst, patent juries are thought to be just plain biased in favor of patentees who have the benefit of approval from the experts at the Patent and Trademark Office (PTO). (7)

In accordance with these critiques of juries in patent trials, the Court of Appeals for the Federal Circuit (Federal Circuit) has narrowed the role of the jury in patent trials. (8) Moreover, the Supreme Court has for the most part affirmed these Federal Circuit's decisions. (9) The reasoning of these opinions that limit the jury's role in patent litigation stands in a shadow cast by the Seventh Amendment's codification of the right to a jury trial in certain civil trials. (10) The combination of developing patent law and varying interpretations of how to apply the Seventh Amendment to patent cases has created the current inconsistent approach to the division of labor between judges and juries in patent litigation.

Despite limits placed on jury decision-making in patent cases and practitioner complaints about jury outcomes, the number of patent cases involving juries is increasing. (11) Statistical analyses of recent patent cases confirm that whether a judge or jury serves as the fact-finder has a significant impact on outcomes (12) even though neither fact-finder traditionally has technical or scientific training. (13) The Federal Circuit's juggling of factual matters, legal matters, precedent, and the Seventh Amendment in patent cases demonstrates that perhaps the round peg of patent law does not fit into the proverbial rectangular jury box.

In an attempt to fit these incongruous pieces together, this paper will trace the development of Seventh Amendment precedent in the context of patent litigation to its current status. Further, this paper proposes a system akin to peer review to replace the traditional jury in patent trials. Such a system would be analogous to the current "Peer-to-Patent" experiment at the PTO, wherein scientific and technical experts have the opportunity to aid PTO examiners in determining the validity of patents. (14) The patent system is a unique system in American law because it boasts its own bar and its own governmental agency; in turn, its own court demands its own jury tailored to fill in the adjudicatory gap. (15) Adjudication of such public rights as those involved in patent validity (16) would find increased efficiency and credibility with public expert input. Moreover, given that there are few constitutional constraints on adjudication of public rights, such a process likely would survive constitutional scrutiny. (17) The area of patent law provides the American legal system with a unique opportunity to develop flexibility in the context of an otherwise cumbersome division of fact and law.

1. HISTORICAL DEVELOPMENT OF SEVENTH AMENDMENT JURISPRUDENCE

   The Seventh Amendment provides, "[i]n [s]uits at common law, ... the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of common law." (18) The amendment seems to provide for the right to a jury trial in civil suits, but its language is unclear, especially when compared to that of the Sixth Amendment. (19) For example, the Sixth Amendment embraces within its scope "all criminal prosecutions," but the Seventh Amendment leaves open the extent of its application to "[s]uits at common law." (20) Additionally, the Sixth Amendment requires that the accused "shall enjoy" the right, while the Seventh Amendment employs the more permissive phrase that the right "shall be preserved." (21) Finally, the Sixth Amendment specifies from where the jury will be drawn, while the Seventh Amendment makes no such specification, leaving jury composition open. (22) The language of the Sixth Amendment demonstrates "that Congress knew how to use [clear,] express language when it drafted the Seventh Amendment." (23) The Supreme Court has interpreted the different phrasings of the Sixth and Seventh Amendments to mean that the right to a jury trial is mandated in criminal cases but not in civil cases. (24) Further, the Supreme Court has ruled that the Seventh Amendment, unlike the Sixth Amendment, is not essential to due process and thus not applicable to the states. (25)

   The traditional role of the American jury under both the Sixth and Seventh Amendments has been to decide questions of fact, as opposed to legal matters. (26) This responsibility was established first by the Judiciary Act, which was enacted before the Seventh Amendment was ratified. (27) The Judiciary Act provided that "the trial of issues in fact, in the district courts ... shall be by jury." (28) The Seventh Amendment itself expressly notes that "facts" initially tried by the jury may not be reexamined in a U.S. court. (29) Finally, the Supreme Court generally affirmed this notion, stating that "[q]uestions of fact in common law actions shall be settled by a jury ..." (30) and warning that "the ultimate determination of issues of fact by the jury [shall] be not interfered with." (31)

   Recently, however, the Supreme Court has shifted its focus away from the fact-law distinction to other concerns. In the 1987 case of Tull v. United States, for example, the Supreme Court applied a two-prong historical-analog test to determine whether a real estate developer accused of violating the Clean Water Act was entitled to a trial by jury under the Seventh Amendment. (32) The first step of the test was to determine whether the present action was analogous to a suit at common law, as opposed to a suit in equity or admiralty, as of the 18th century--the time of the Seventh Amendment. (33) The second prong examined whether the remedy sought was legal or equitable in nature. (34) Taking into account the nature of the action and the remedy sought, the Court focused on the latter and found the case closely analogous to punitive damages in the 18th century, which were available in courts of law. (35) Although the result suggested that Tull was entitled to a jury trial on some issues, the Court took it one step further. (36) It stated that the civil penalties involved in Tull's trial were not a "fundamental element of a jury trial" because Congress may fix those penalties by statute and therefore may delegate such responsibilities to judges. (37)

   The Supreme Court in Tull further observed that in the past it considered "practical limitations of a jury trial and its functional compatibility with proceedings outside of traditional courts of law" to find that a litigant was not entitled to a jury trial. (38) A later decision qualified this consideration as applying only where "public rights" were at issue. (39) Unlike "private rights," Congress may assign causes of action involving "public rights" to a non-Article III court. (40) Although the Federal Circuit ignored this comment in In re Lockwood, stating that an action for a declaration of patent invalidity may be brought in an Article III court because declaratory judgments may be brought properly in an Article III court, (41) the relevance of the court's decision should not be underestimated. For example, many issues relevant to public rights in patents may be decided at the PTO, thus falling outside of Article III. (42) With its specialization in technical and scientific fields, the PTO may be more "functionally compatible" with patent issues than a lay jury.

   Indeed, commentators and courts have long debated whether juries are competent to decide certain issues. (43) Alexander Hamilton posited in his Federalist Paper Number Eighty-three that very complex issues "require often such long, deliberate, and critical investigation as would be impracticable to men called from their occupations, and obliged to decide before they were permitted to return to them." (44) Hamilton worried that demanding that lay juries decide issues that are too complicated may undermine respect for the jury system. (45) Although not addressing lay juries in particular, Judge Learned Hand later criticized generalist courts and "the extraordinary condition of the law which makes it possible for a man without any knowledge of even the rudiments of [science and technology] to pass upon such questions" of high difficulty and complexity. (46) Similarly, and more recently, Judge Michel of the Federal Circuit reflected that businesses and corporations competing in high stakes technology races may pressure Congress to increase specialization in U.S. courts. (47) Because their cases have such large economic and practical impacts, these businesses are unlikely to trust a lay and generalist system with...