Patentee's Right to a Jury Trial Was Forfeited by Election to Drop Infringement Damages Claim

Case: In Re Technology Licensing Corp. , No. 765 (Fed Cir. 9/12/05)

The One Sentence Summary: A patentee who elected to drop its damages claim and proceed only on claims for an injunction was not entitled to a jury trial on its claim and the alleged infringer's claim for a declaration of invalidity of the patent.


What They Were Fighting About: Gennum filed a declaratory judgment action seeking a declaration that patents held by Technology Licensing Corporation (TLC) and asserted against a customer of Gennum were invalid, unenforceable and not infringed. TLC counterclaimed against Gennum, alleging that TLC was liable for direct and contributory infringement of the patents. After an adverse ruling on damages, TLC dropped its damages counterclaim and sought only injunctive relief. Gennum then dropped its request for a jury trial, but TLC argued that it was entitled to a jury trial on the declaratory relief claims seeking to hold the patent invalid. The district court denied the request for a jury trial, finding that the relief sought was entirely equitable, and that a comparable claim at the time of the adoption of the Seventh Amendment would have been tried to a court rather than a jury. Gennum petitioned for mandamus.

Federal Circuit Holdings:

• The fact that the patentee is the third-party defendant in this particular action does not matter, and the right to a jury trial does not depend upon who initiated the action: "We have made clear that for purposes of the right to a jury trial in patent cases, it is inconsequential whether the parties are aligned in the conventional manner (patentee as plaintiff and accused infringer as defendant and invalidity counterclaimant) or in the manner that results when the accused infringer initiates the action as a declaratory judgment (accused infringer as plaintiff and patentee as defendant and infringement counterclaimant). See Lockwood, 50 F.3d at 974-75."
  
• By electing to drop its damages claim, the patentee TLC forfeited its right to a jury trial on the invalidity claim: "In this case, by contrast, the patentee has voluntarily abandoned its claim for damages and is proceeding only on a request for equitable relief. Thus, the declaratory judgment action in this case is an inverted form of an infringement action in which the patentee has sought only an injunction. In the historically analogous setting of a patent infringement suit with an invalidity defense, the case would therefore have been tried in an equity court, where neither party would be entitled to a jury. For that reason, as the magistrate judge correctly held, Lockwood’s historical analysis dictates that TLC’s decision to seek only an injunction meant that it lost its right to a jury on the related invalidity claims."
• Judge Newman dissented, arguing that the right to a jury trial on patent validity arises from the common law writ of scire facias. The majority disagreed.