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Supreme Court Asked to Yank Obviousness From the Purview of Juries

By Peter Zura

Medela AG v. Kinetic Concepts, Inc. (petition for a writ of certiorari)

Question presented: Whether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the ?non-obvious subject matter? condition for patentability.

Medela defended against allegations of patent infringement by arguing that the asserted patent was invalid for obviousness. The district court provided the jury with lengthy instructions, along with jury interrogatories that asked the jurors to answer "yes" or "no" on whether Medela proved by clear and convincing evidence that the invention was obvious. The jury answered "no" to 37 questions related to obviousness. The jury was not asked to provide, and did not provide, any explanations of the "no" answers.

On appeal to the Federal Circuit, the court stated that ?[t]he scope and content of the prior art are factual questions to be determined by the jury,? but because the jury made no findings on those mat­ters, the Federal Circuit applied its highly deferen­tial standard of review: ?This court reviews these factual determinations, ?whether explicit or implicit within the verdict, for substantial evidence.?? Stating that the court " must assume that the jury found that the prior art does not dis­close ?treating a wound with negative pressure? with­in the meaning of the patents," the CAFC upheld the jury verdict (see CAFC opinion here).

It its petition, Medela argues that "Federal Circuit precedent broadly and improperly abrogates any right to independent judicial, as dis­tinct from lay jury, determination of whether an as­serted patent claim satisfies the nonobviousness ­requirement of 35 U.S.C. § 103(a)."

More specifically, Medela argues that Federal Circuit Precedent

[C]onflicts with two en banc decisions of other circuits, both of which were unanimous in rejecting the very sort of jury procedure that was used in this case and in many other cases.

[C]onflicts with, or is in deep tension with, this Court?s precedents on obviousness, which have repeatedly described obviousness as ?a legal determi­nation,? KSR Int?l Co. v. Teleflex Inc, 550 U.S. 398, 427 (2007), stated that obviousness analysis was to be conducted by ?a court, or patent examiner?, and instructed that ?this analysis should be made explicit? so as ?[t]o facilitate review.?

[I]s difficult or impossible to reconcile with settled principles of federal administrative law, under which the power to ?pass on the validity of an administra­tive order? is reserved exclusively to courts, not ju­ries, even in actions where a right to trial by jury ex­ists and the invalidity of the administrative action is a legal defense to the action. See Cox v. United States, 332 U .S. 442, 453 (1947).

Read/download a copy of the petition here (link)

See also, "High Court Cert Petition Argues Judges Should Decide Patent Validity" (link)

Full post as published by Two-Seventy-One Patent Blog on August 18, 2009 (boomark / email).