Judges and legal commentators have long cautioned patent practitioners about the pitfalls of “obviousness” jury determinations that pose only the ultimate question: Has defendant proven by clear and convincing evidence [or that it is highly probable] that Claim X of the ’123 Patent is obvious? Yes ____ No ____.
Whether the answer is yes or no, this type of jury determination is difficult to review in depth even if a Rule 50 JMOL motion is filed before the case is submitted to the jury.
As patent litigators know, the ultimate question of obviousness is a legal issue reviewed de novo on appeal, while the underlying findings of fact regarding obviousness are reviewed for substantial evidence. When a general obviousness verdict is rendered by a jury, a presumption arises that all factual disputes regarding obviousness were resolved in favor of the verdict.
In contrast to readily available model patent jury instructions incorporating KSR and Graham factors, detailed templates for obviousness special verdict forms are harder to find, especially in a pinch.
The best template we’ve found is the special verdict form included in the Northern District of California’s Model Patent Jury Instructions (November 2007)(pdf). It drills down on each of the factors discussed in KSR and Graham, although it may need more work with respect to “obvious to try” consideration that KSR reinvigorated, a subject sure to prompt more debate.
Despite the Federal Circuit’s repeated clamoring for more detailed special verdict forms with respect to a variety of patent sub-issues, the issue of obviousness is nevertheless regularly presented to juries in ultimate form, such as in the recent jury verdict form used in Cerner Corporation v Visicu, Inc. (pdf). As the oldest English proverb still widely used today states: You can lead a horse to water, but you can’t make it drink.
Judge Whyte’s observation regarding obviousness special verdict forms in Hynix Semiconductor Inc. v. Rambus Inc., 2009 WL 112834 (N.D. Cal. 2009) could be applied in any number of cases: “[The defendant] gambled by proposing a condensed interrogatory on obviousness. It was not compelled to do this by the existing law; in fact, it was discouraged from doing so. Perhaps it did not want the jury to think too hard about secondary considerations. Maybe it wanted to foreclose appellate review had it won. Nonetheless, [the defendant] took its chances, and it lost.”
[Note to animal trackers: the photograph of bear paw prints was taken on an island in Sitka Sound.]