No Jury Trial for Declaratory Judgment Action on Patent Invalidity

In In re Technology Licensing Corporation (Fed. Cir., per curium, September 12, 2005) the court denied a petition for writ of mandamus to compel the district court to grant a jury trial request in a declaratory judgement action involving patent invalidity.

The court distinguished the facts of this case from Tegal Corp. v. Tokyo Electron America, Inc., 257 F.3d 1331 (Fed. Cir. 2001) by noting that the accused infringer had raised invalidity as a separate claim, rather than as an affirmative defense. The court went on to note that In re Lockwood, 50 F.3d 966 (Fed. Cir.) did not stand for the proposition that either party has a right to a jury trial in such a declaratory judgment action, regardless of whether damages are sought in a separate cause of action:

In sum, Lockwood does not stand for the proposition that a counterclaim for
invalidity always gives rise to a right to a jury trial (for either party) on
the ground that it is an inverted infringement action and that a patentee at
common law had the right to a jury by filing an infringement action and seeking
damages. Instead, the more accurate reading of Lockwood is that (1) it preserves
to the patentee the right to elect a jury by seeking damages in an infringement
action or counterclaim, and (2) the accused infringer or declaratory judgment
counterclaimant is entitled to a jury trial only if the infringement claim, as
asserted by the patentee, would give rise to a jury trial. Thus, if the patentee
seeks only equitable relief, the accused infringer has no right to a jury trial,
regardless of whether the accused infringer asserts invalidity as a defense (as
in the Tegal case) or as a separate claim (as in this case).

Applying the analysis of Lockwood and Tegal to the facts of this case leads to the conclusion that if TLC had filed a standard infringement action as plaintiff and had requested only an injunction, neither TLC nor Gennum would have been entitled to a jury trial, regardless of whether Gennum raised invalidity as a defense or in a counterclaim. By choosing the equity route for its infringement action, TLC would have ensured that neither claim would be triable to a jury. For that reason, the inverted lawsuit, with Gennum as plaintiff and TLC as defendant, seeking only equitable relief on its claim of infringement, confers no jury trial right on TLC.

Because a party such as TLC will ordinarily be able to dictate whether it will have a jury trial by choosing whether to limit itself to equitable relief, the problem faced by TLC is not likely to recur with frequency in conventional infringement actions. That may be the reason that there are relatively few precedents directly applicable here. Nonetheless, there is at least one prior appellate decision dealing with a similar fact setting, and in that case the appellate court reached the same conclusion that we reach here—that the patentee’s decision to seek only equitable relief resulted in the entire case, including the invalidity claims, being triable to the court, without a jury. See Shubin v. United States Dist. Court, 313 F.2d 250 (9th Cir. 1963).

Indeed, this court in Lockwood distinguished the Shubin case on the ground that there the patentee had limited its infringement counterclaim to a request for an injunction against future infringement, having stipulated to the absence of any claim for infringement damages. Lockwood stands for the proposition that if the patentee has abandoned any claim for damages, the related invalidity claims are triable to the bench, not to a jury. Several other district courts have reached the same conclusion as the court of appeals in Shubin and the court in this case, based on similar reasoning. See Kao Corp. v. Unilever United States, Inc., 2003 WL 1905635 (D. Del. 2003); Glaxo Group Ltd. v. Apotex, Inc., 2001 WL 1246628 (N.D. Ill. 2001); Pfizer Inc. v. Novopharm Ltd., 2001 WL 477163 (N.D. Ill. 2001).

Because we conclude that the magistrate judge correctly analyzed the pertinent opinions of the Supreme Court and this court on the scope of the jury trial in the procedural setting of this case, we deny the petition for a writ of mandamus.