Judges exert new clout in patent trials

The U.S. Supreme Court has reviewed the role of a jury in one aspect of patent trials. Their unanimous decision, written by Justice David Souter (Markman v. Westview _U.S._, 1996), essentially removes a key responsibility from the jury and passes it on to the judge.

One of the important questions in a patent trial is determining the "construction of the claims," a decision which roughly determines the scope of the patent. The answer can resolve what the patent means and what it covers.

The Markman decision removes the question of construction from the jury and places it within the domain of the judge. While the jury's role otherwise remains the same, this is a significant change.

Changing patent priorities. Historically patent suits were brought to obtain an injunction. An award of damages was a secondary consideration. Such cases were usually tried to the court or judge, although a jury was a choice available to the parties. In the 1960's, and '70s, judges seemed anti-patent and frequently found a patent invalid or not infringed. The jury was, in part, a response to that position. Rising damages awards in patent cases also encouraged plaintiffs to seek a jury.

Why would damages influence a plaintiff to ask for a jury? Some court observers argue that juries favor small patent holders and are therefore more willing than judges to find a patent valid and infringed. Juries supposedly exhibit a willingness to award large damages against large corporate defendants and to be more pro-patent than judges. These perceptions seem all the more pronounced against a background where patents and other forms of intellectual property have become increasingly important to the economy and to our global competitiveness. As a result, the pendulum of public sympathy seemed to have swung toward the patent holder.

Challenging jury use. The main argument for reconsidering this arrangement focused on the jury. Proponents for change questioned whether a group as diverse as a jury can competently handle these technically and legally complicated areas. They also argued that a juries' sympathy with small patent holders amounts to bias.

Regardless, the fundamental issue here is that many believe that a jury comprised of lay people does not have the skills or experience to decide complex legal and technical questions that may lead to a determination of infringement and a multi-million dollar award. Thus, the Supreme Court decision seems to have concurred with the perception that the system has tilted in favor of the patentee-plaintiff, especially in cases where the question of infringement is close. The Markman case, which in the past may have been perceived as a common patent infringement case, surfaced as an appropriate vehicle on which to base this decision.

The probable effect of the Markman decision is to reduce the reasons for selecting and using a jury in a patent trial. Large corporations will probably approve of the decision to eliminate the use of a jury. Those less likely to cheer the decision will include plaintiff's lawyers, small plaintiffs, individual patent owners, and individual rights activists.

Legal Questions

Q: If an employee submits an idea to his employer and the employer does not, within a reasonable time, accept or reject the idea, can the employee adopt the idea as his own and act accordingly?

A: It depends. An employer's right to an employee's idea varies by state but stems, in the main, from (1) the basic employment agreement, (2) a state law commonly referred to as the Employee Invention Act, and (3) a host of surrounding circumstances. Thus, the answer to the question is not clear cut, and many factors, including the local or state law, must be considered.

Q: In a general sense, can it be concluded that the laws and cases that involve intellectual property have become more pro-protection in the recent past?

A: Yes. While the legal system in this area generally moves at a glacially slow pace, it appears that the value of intellectual property in the current competitive environment has increased. The law has responded by increasing the available protection and circumstances in which protection is available.

Q: The Internet has become a hot development recently. Is the law responding to this development?

A: Clearly the law is trying to mold itself to the Internet, to accommodate Internet users, and to use previously developed law as a guide. The law is attempting to answer questions such as these. Does the current copyright law adequately protect against misappropriation of an Internet transmission or protect copyrighted works? How are the libel laws interpreted via Internet providers? Can trademark or unfair competition laws be used to stop unauthorized uses?