BSKB Case Briefs

Editors: Marc S. Weiner, Esq., MaryAnne Armstrong, Ph.D., Esq., and Nicholas P. Godici.

Vol. 4, No. 10 (14 September 2006)

In This Issue:

:: The CAFC Rules That There is No Right to a Jury Trial of an Inequitable Conduct Charge

The CAFC Rules That There is No Right to a Jury Trial of an Inequitable Conduct Charge

AGFA Corporation v. Creo Products Inc., No. 05 1079  (Fed. Cir. June 26, 2006)

Issue: Does a district court judge have the discretion to separately conduct a bench trial on inequitable conduct issues in the same case where validity issues are tried before a jury?  Answer: Yes

Facts: Agfa and Creo compete in the Computer-to-Plate systems market for producing large scale printing plates.  Agfa sued Creo alleging infringement of Agfa’s patents.  In defense, Creo asserted that the Agfa patents were unenforceable due to Agfa’s inequitable conduct before the USPTO when prosecuting the patent applications.  Creo alleged that Agfa wrongfully failed to disclose material prior art to the USPTO during prosecution of Agfa’s asserted patents.  The district court separated the inequitable conduct issue from the other issues in the case, and over Agfa’s objection, conducted a bench trial on that issue. The court found all of Agfa’s patents unenforceable due to inequitable conduct. Agfa appealed the district court’s decision to hold a bench trial on the inequitable conduct charge prior to a jury trial on the other issues in the case.

Argument: Agfa argued there was Supreme Court precedent, relying on Beacon Theatres, Inc. v. Westover, 359 U.S. 500 (1959), that the a trial judge could not conduct a bench trial (and preclude a jury trial) on equity claims when that trial would resolve “common” issues with a claim subject to jury resolution.  Agfa further argued that there is a Seventh Amendment right to jury trial for the issue of inequitable conduct.       

Reasoning: The CAFC relied on its prior decision in Gardco Manufacturing, Inc. v. Herst Lighting Co., 820 F.2d 1209 (Fed. Cir. 1987) upholding the district court right to separate the inequitable conduct issue from the infringement and invalidity issues and conducted a bench trial on the inequitable conduct issue.  Based on Gardco, Court decided that inequitable conduct and invalidity are not “common” issues as in Beacon Theatres, but rather are two different issues that have some overlap in some aspects.  The court further noted that Gardco is consistent with its previous decision in In re Lockwood, 50 F. 3d 966 (Fed. Cir. 1995), realizing that the issue of inequitable conduct would not trigger a Seventh Amendment right to a jury trial.

Conclusion: In a case that involves both issues of inequitable conduct and validity, there is no Seventh Amendment right to a jury trial for the inequitable conduct issue, and the decision to hold a bench trial on the inequitable conduct issue does not preclude the trial court’s later grant of a jury trial on validity. 

The full text of this opinion is available at http://www.fedcir.gov/opinions/05-1079.pdf

Summary supplied by Jun S. Ha. Edited by Nicholas P. Godici.

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