Patent Law

The following is excerpted from a December 28, 2009 case summary by the Massachusetts Lawyers Weekly Staff available at LexisNexis:

Where a jury returned a verdict in a patent infringement case, a new trial is necessary because the court erred in allowing the issue of the obviousness vel non of claims 9-11 to go to the jury.

"On April 7, 2009, the jury returned a verdict finding that [defendant] Newkirk infringed claims 9-11, that its infringement was not willful, but that certain of the claims in suit, specifically including the crucial claims 9-11 which had been found infringed, '635 Patent claims 1, 3-5, and 8-11, were invalid as obvious. Jury Verdict (Doc. No. 301). In addition, the jury found that Newkirk did not breach its contract with [plaintiff] NewRiver. ...

"... Notwithstanding Rules 704 and 705, Federal Circuit case law renders legally inadequate the opinions of qualified experts on the ultimate issues of anticipation, obviousness, and doctrine of equivalents unless the bases therefor are spelled out on the record. ...

"I told the jury that they were the sole judges of the facts. I instructed concerning making credibility judgments and told the jury they could believe (or disbelieve) any witness who had testified before them. I cautioned the jury as to experts (I refer to them as 'opinion witnesses') but told them it was open to them to believe what the experts, including Dr. Syzmanski, had said. I instructed (accurately) as to the legal concept of obviousness and told the jury to make the determination concerning whether claims 9-11 were obvious. NewRiver made no objection to these aspects of the jury charge. Yet, on all of these matters, the jury charge was palpably wrong. ...

"Yet simply to set aside the jury's verdict will not do. Here, I failed to appreciate the applicable legal framework and thus sent the jury off on a wild goose chase. ..."

See the full U.S. District Court case summary and a link to the full text of the decision here.