Jury Trial on Fraud Claims Should Have Preceded Bench Trial on Correction of Inventorship

Case: Shum v. Intel Corp., (Fed. Cir. No. 2006-1249, 8/24/07)

The One Sentence Summary: The district court erred in conducting a bench trial on claims for correction of inventorship on a patent under 35 U.S.C. § 256 when common factual issues existed on fraud claims that should have been determined by a jury.


What They Were Fighting About: Plaintiff appealed after the trial court's judgment after a bench trial rejecting his claims for correction of inventorship.

Federal Circuit Holdings:

• Plaintiff claimed that defendant had fraudulently filed for a patent on an invention created by plaintiff. Plaintiff's claims for fraud and correction of inventorship presented common factual issues, and plaintiff's right to a jury trial on its fraud claim required that the jury trial precede the bench trial. Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (1959).
• The trial court should not have dismissed plaintiff's unjust enrichment claim as "merely duplicative" of its fraud claim because the elements of the claims differ.