New Model Patent Jury Instructions

Posted on December 15, 2008 by R. David Donoghue

At the request of Federal Circuit Chief Judge Michel, an all-star panel was established to create a comprehensive set of model patent jury instructions -- click here to download them.  The panel included patent litigation heavy weights like Don Dunner and federal judges -- Judges Ward (E.D. Texas) and Whyte (N.D. Cal.).  The Federal Circuit has not officially endorsed the jury instructions, but they are very comprehensive and deal with just about every recent case law development.  In particular, they provide an excellent glossary of patent terms for the jury (something that should be in every set of patent jury instructions, but often is not) and they provide two KSR obviousness instructions, one for if the jury is making the final determination and one if the judge does (the panel could not come to a consensus on what the correct reading of the law was). 

The one instruction I had hoped to see that was missing was an instruction for awarding royalties on post-verdict sales -- see the MTTLR Blog on the issue here or read commentary on Judge Clark's plan to submit post-verdict damages to the jury here at Michael Smith's E.D. Texas blog.  If anyone has seen an instruction for post-verdict damages, send it to me and I will post it for all to consider.

You can also read more about patent jury instructions in the Blog's archives -- click here for the Seventh Circuit's model patent jury instructions and here for a list of jury instructions Northern District judges have offered as precedent in IP cases.

Hat tip to Dennis Crouch for linking to the new model jury instructions here at Patently-O.

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Post-Verdict Infringing Sales Exceptional, But Not Willful

Posted on July 3, 2007 by R. David Donoghue

Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. May 29, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) granted in part plaintiff’s Fed. R. Civ. P. 59(e) and 60(a) motion to alter or amend the judgment, altering the judgment to include all post-verdict sales of infringing product. The court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent, but that the infringement was not willful. The Court entered judgment in February 2007. Shortly after the judgment, defendant Northgate Technologies (“Northgate”) informed plaintiff that after the verdict, but before the judgment was entered, Northgate sold its remaining inventory. Plaintiff sought damages for the post-verdict sales and argued that the Court should find the post-verdict sales willful and declare the case exceptional. The Court held that the post-verdict sales infringed the patent, but that they were not willful because Northgate received an oral opinion of counsel prior to shipping any post-verdict product. The oral opinion was based upon three factors: 1) a belief that the jury’s verdict was unreasonable; 2) the fact that the Court had not yet entered a permanent injunction; and 3) Northgate’s post-trial arguments that were pending before the Court. The Court noted that the second factor could not support Northgate’s decision. But the remaining justifications were not “so flawed as to alert Northgate to reject [the oral opinion] as ‘obviously bad legal advice.”

But because Northgate’s decision to sell infringing product post-verdict “needlessly multiplied” the case, the Court held that the post-verdict sales were exception and awarded plaintiff’s attorneys fees and costs incurred by the post-verdict sales motion. Additionally, the Court entered a permanent injunction.

*You can read the opinion here.

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