Over the past decade, the Federal Circuit and the Supreme Court have lessened the role of the jury in patent cases, both by classifying patent issues as questions of law for the judge, and by limiting the situations in which jury trial is available as of right. Recently, In re Technology Licensing Corporation, the Federal Circuit held that there is no right to a jury trial in a declaratory judgment action seeking a declaration of patent invalidity, where the defendant counterclaims with alleged infringement and seeks an injunction as the sole remedy. In line with Supreme Court precedent, the Technology Licensing majority applied a two-pronged "historical analog" test: (1) compare the statutory action to eighteenth-century actions from England, as they existed prior to the merger of the courts of law and equity; and (2) determine whether the remedy sought is legal or equitable in nature. Under the first prong, the Federal Circuit majority determined that the closest historical analog to the declaratory judgment action for patent invalidity was the inverted form of the action: a patent infringement suit where the defendant alleges patent invalidity. A review of eighteenth-century English patent law, however, in combination with a closer look at the nature of the present-day patent invalidity action, suggests that the writ of scire facias—a legal action-is a more appropriate historical analog to the declaratory judgment action for patent invalidity, and that the right to jury trial should therefore attach. At a minimum, the uncertainty as to what the appropriate analog might be suggests that the Federal Circuit should have followed the Supreme Court's approach in Markman v. Westview Instruments. In Markman, the Court had recognized that there was no clear historical analog to patent claim construction, and therefore looked instead to functional considerations and policy concerns. Under that approach, the highly fact-intensive nature of patent invalidity issues dictates that the right to jury trial should be preserved.

Included in

Law Commons