Are We Kidding Ourselves With Patent Jury Trials? Lessons from Apple v. Samsung
When I talk to lawyers who do not practice patent law, they often speak of the complexity of patent cases in terms of the scientific or technological issues involved. What many of them fail to understand is that quite apart from the technology, the law itself is very complex. Lawyers and judges often have difficulty in mastering the nuances of claim construction, infringement, anticipation, obviousness, reasonable royalty damages, etc. As a result, errors in patent trials are likely, and appeals are the norm. Patent law is unique in that it has a specialized court of appeals (the Court of Appeals for the Federal Circuit) but non-specialized federal district trial courts, a structure which seems to enhance the likelihood that trials will result in errors that need to be corrected on appeal.
I could not resist the temptation to take a look at the jury instructions and verdict form from the recently tried Apple v. Samsung case to see what the jury was confronted with. As a new associate with the Quinn Emanuel firm (the firm that represented Samsung) in 1998, I was tasked with preparing the first drafts of the jury instructions and verdict form in a patent case that was set to go to trial about two months after I joined the firm. I found the task daunting, so I can only imagine how a jury would react to trying to apply the instructions.
The Apple v. Samsung jury instructions are 109 pages long, and the verdict form is 20 pages long. To see the jury instructions click here. To see the special verdict form, click here. The jury was asked to determine, among other things: 1) whether 21 Samsung devices infringed one Apple utility patent, 2) whether 24 Samsung devices infringed two other Apple utility patents, 3) whether 13 Samsung devices infringed two Apple design patents, 4) whether 8 Samsung devices infringed another Apple design patent, 5) whether the three Apple utility patents and four Apple design patents were invalid, 6) whether five Apple devices infringed any of five Samsung utility patents, and 7) whether any of the five Samsung utility patents were invalid.
With respect to validity, the jury was simply asked to provide a “yes” or “no” answer as to the validity question overall. It was not asked to distinguish between anticipation and obviousness. Nor was it asked to make the specific factual findings called for in an obviousness analysis, i.e., the level of ordinary skill in the art, the scope and content of the prior art, and the differences between the claimed invention and the prior art. I understood that obviousness was a question of law for the court based on these factual underpinnings, but the jury here was asked to draw the “ultimate conclusion” of obviousness. The obviousness instruction is particularly interesting as it includes the following summary of many of the holdings from the Supreme Court’s decision in KSR v. Teleflex:
A patent claim composed of several elements is not proved obvious merely by demonstrating that each of its elements was independently known in the prior art. In evaluating whether such a claim would have been obvious, you may consider whether the alleged infringer has identified a reason that would have prompted a person of ordinary skill in the field to combine the elements or concepts from the prior art in the same way as in the claimed invention. There is no single way to define the line between true inventiveness on the one hand (which is patentable) and the application of common sense and ordinary skill to solve a problem on the other hand (which is not patentable). For example, market forces or other design incentives may be what produced a change, rather than true inventiveness. You may consider whether the change was merely the predictable result of using prior art elements according to their known functions, or whether it was the result of true inventiveness. You may also consider whether there is some teaching or suggestion in the prior art to make the modification or combination of elements claimed in the patent. Also, you may consider whether the innovation applies a known technique that had been used to improve a similar device or method in a similar way. You may also consider whether the claimed invention would have been obvious to try, meaning that the claimed innovation was one of a relatively small number of possible approaches to the problem with a reasonable expectation of success by those skilled in the art. However, you must be careful not to determine obviousness using the benefit of hindsight; many true inventions might seem obvious after the fact. You should put yourself in the position of a person of ordinary skill in the field at the time the claimed invention was made and you should not consider what is known today or what is learned from the teaching of the patent.
The instruction for invalidity based on anticipation is not all that simple either:
A utility patent claim is invalid if the claimed invention is not new. For the claim to be invalid because it is not new, all of its requirements must have existed in a single device or method that predates the claimed invention, or must have been described in a single previous publication or patent that predates the claimed invention. In patentlaw, these previous devices, methods, publications or patents are called “prior art references.” If a patent claim is not new we say it is “anticipated” by a prior art reference.
The description in the written reference does not have to be in the same words as the claim, but all of the requirements of the claim must be there, either stated or necessarily implied, so that someone of ordinary skill in the field looking at that one reference would be able to make and use the claimed invention.
Here is a list of the ways that either party can show that a patent claim was not new:
– If the claimed invention was already publicly known or publicly used by others in the United States before the date of conception of the claimed invention;
– If the claimed invention was already patented or described in a printed publication anywhere in the world before the date of conception of the claimed invention. A reference is a “printed publication” if it is accessible to those interested in the field, even if it is difficult to find;
– If the claimed invention was already made by someone else in the United States before the date of conception of the claimed invention, if that other person had not abandoned the invention or kept it secret;
If the patent holder and the alleged infringer dispute who is a first inventor, the person who first conceived of the claimed invention and first reduced it to practice is the first inventor. If one person conceived of the claimed invention first, but reduced to practice second, that person is the first inventor only if that person (a) began to reduce the claimed invention to practice before the other party conceived of it, and (b) continued to work diligently to reduce it to practice. A claimed invention is “reduced to practice” when it has been tested sufficiently to show that it will work for its intended purpose or when it is fully described in a patent application filed with the PTO.
– If the claimed invention was already described in another issued U.S. patent or published U.S. patent application that was based on a patent application filed before the patent holder’s application filing date or the date of conception of the claimed invention.
Since certain of them are in dispute, you must determine dates of conception for the claimed inventions and prior inventions. Conception is the mental part of an inventive act and is proven when the invention is shown in its complete form by drawings, disclosure to another, or other forms of evidence presented at trial.
Clear enough? Try reading the instructions to your spouse or friends and see what kind of reaction you get.
So here’s the question: Does it make any sense to take what is a complicated legal regime, dump it in the laps of a group of uninitiated lay people, and then ask for a black-box result that provides no insight into how–or whether–they applied the complicated legal regime to the evidence?
The jury found all of the asserted Apple patents to be valid. It would seem that in order for Samsung to challenge the verdict, it will have to show that no reasonable jury could have concluded that the patents were anticipated or obvious, and the Federal Circuit will have to speculate as to whether the jury could have legitimately based its decision on either ground. In doing so, the Federal Circuit will have to assume that the jury applied the instructions correctly and then determine whether it would have been reasonable based on the evidence to conclude that the patents are valid.
Juries may be well-suited to decide discrete factual disputes, but the task they were assigned here (and in most patent trials) goes well beyond such discrete disputes and required the jury to apply difficult legal concepts that can befuddle attorneys and judges. Perhaps a better system would limit the jury’s role to making such discrete findings, but of course, that could seriously tax the resources of the presiding judge who would have to then apply those discrete findings to the law instead of simply leaving it up to the jury. It would also subject to the trial court to a greater degree of scrutiny and potential reversal based on whether it applied the law correctly.
The jury instructions and verdict forms are not simply determined by the court and handed down to the jury. Instead, they are the result of sometimes lengthy and contentious negotiations between counsel, which may result in disputes over what the law is and how it should be articulated (which must be decided by the court). Of course, the clients pay for the lawyers to engage in this process. One has to wonder whether it makes sense to put that kind of effort into the process and then simply ask for a black-box verdict that assumes the jury correctly understood and applied the law, when it seems so improbable that the assumption is correct. It seems like a strange way to resolve a billion dollar dispute.