Intellectual Property Law

A divided panel of the Federal Circuit held earlier this week in Agfa Corp. v. Creo Products Inc. that the issue of whether plaintiff committed inequitable conduct in failing to disclose material prior art during prosecution of its patents, including defendants' own prior art system, was properly resolved by the court, rather than a jury. The district court had severed the inequitable conduct issue from infringement and validity issues and, over plaintiff?s objection, conducted a bench trial solely on the inequitable conduct issue. At the conclusion of that bench trial, the district court declared all of plaintiff?s patents unenforceable and further granted attorney's fees pursuant to 35 U.S.C. Section 285. The Federal Circuit affirmed.

Judge Rader?s majority opinion held that the Federal Circuit?s 1987 opinion in Gardco Manufacturing, Inc. v. Herst Lighting Co., controlled, and stated that ?[t]his court has consistently treated inequitable conduct as an equitable defense that may be adjudicated by the trial court without a jury . . . . [A] judge retains the discretion to conduct a bench trial on the equitable issue of unenforceability in the same cases where invalidity is to be tried to a jury.? In dissent, Judge Newman stated that the majority?s decision ?depart[s] from the established jury right, for materiality and intent are quintessential questions of fact, and have been tried to a jury throughout the nation's history.

Are determinations of materiality and intent questions of fact that must, if demanded, be resolved by a jury? Let us know what you think.

Today's Blogger:  Jeff Fisher