I S~~reme Court, U.S,FILED

No. 09-198 !i

IN THE

tff tlT t init i

MEDELA AG AND MEDELA, INC.,Petitioners,

V.

KINETIC CONCEPTS, INC.,KCI LICENSING, INC., KCI USA, INC.,

AND WAKE FOREST UNIVERSITY HEALTH SCIENCES,Respondents.

On Petition for a Writ of Certiorarito the United States Court of Appeals

for the Federal Circuit

BRIEF FOR APPLE, INC., CISCO SYSTEMS, INC.,GOOGLE, INC., MICROSOFT CORP.,

SYMANTEC CORP., AND YAHOO!, INC.AS AMICI CURIAE SUPPORTING PETITIONERS

EDWARD R. REINESCounsel of Record

JILL J. HOWEIL, GOTSHAL ~ MANGES LLP201 Redwood Shores ParkwayRedwood Shores, CA 94065(650) 802-3000

Counsel for Apple, Inc., CiscoSystems, Inc., Google, Inc.,Microsoft Corp., SymantecCorp., and Yahoo!, Inc.

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TABLE OF CONTENTS

Page

Introductory Statement .............................................

Summary of Argument ...............................................3

Argument ....................................................................6

I. This Court Should Grant the Petition toReview Whether Judges ShouldIndependently Resolve ObviousnessIssues Notwithstanding a Jury Verdict ..........6

A. Federal Circuit PrecedentEncourages Judges to Abdicatetheir Responsibility to DecideObviousness Issues ...............................7

B. Special Verdicts TheoreticallyCould Facilitate Judicial Reviewof A Jury’s Findings But AreFrequently Cumbersome andImpractical ..........................................10

C. Unless this Court ClearlyInstructs Judges toIndependently Assess the Issue ofObviousness, General VerdictsWill Continue to Impede JudicialReview .................................................16

II. This Court Should Resolve the CircuitSplit and Provide Much-NeededGuidance Regarding the Proper Role ofJuries in Making Obviousness Findings ......18

III. Functional Considerations FavorIndependent Judicial Review ofObviousness Issues ........................................22

TABLE OF CONTENTS(continued)

Page

A. Because Patents Involve PublicRights, Obviousness Should beAdjudicated Independently byJudges ..................................................22

B. From a Functional Perspective,Judges are Better Suited thanJuries to Decide the LegalQuestion of Obviousness ...................24

Conclusion ................................................................25

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TABLE OF AUTHORITIES

CasesPage(s)

American Airlines, Inc. v. Lockwood,515 U.S. 1121 (1995) ....................................2, 23, 24

Baumstimler v. Rankin,677 F.2d 1061 (5th Cir. 1982) .................................21

Connell g. Sears, Roebuck & Co.,722 F.2d 1542 (Fed. Cir. 1983) ................................6

Control Components, Inc. y. Vakek, Inc.,616 F.2d 892 (5th Cir. 1980) ...................................21

Control Components, Inc. v. Vakek, Inc.,609 F.2d 763 (5th Cir. 1980) ...................................21

Cox v. United States,332 U.S. 442 (1947) ................................................23

E.I. du Pont de Nemours & Co. v. Berkleyand Co.,620 F.2d 1247 (8th Cir.1980) .................................. 22

Graham v. John Deere Co. o£Kansas City,383 U.S. 1 (1966) ............................................passim

In re Lockwood,50 F.3d 966 (1995) ...........................................17, 23

Joy Techs., Inc. v. Manbeck,959 F.2d 226 (Fed. Cir. 1992) ................................23

KSR Int7 Co. yo TeletTex, Inc.,550 U.S. 398 (2007) ........................................passim

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TABLE OF AUTHORITIES(continued)

Page(s)

Markman v. Westv~ew Inytrument~, Inc.,517 U.S. 370 (1996) ................................................24

MeGinley v. Franklin Sporty, Inc.,262 F.3d 1339 (Fed. Cir. 2001) ................5, 9, 17, 18

Nor£in Inc. v. Int’l Buy. Machine Corp.,625 F.2d 357 (10th Cir. 1980) .................................22

Panther Pumpy & Equip. Co. v. Hydroera£t,Inc.,468 F.2d 225 (7th Cir. 1972) ...................................20

Patlex Corp. v. Moyyinghoff,758 F.2d 594 (Fed. Cir. 1985) ................................23

Perkin-Elmer Corp. v. Computerviyion Corp.,732 F2d 888 (Fed. Cir. 1984) .............................9, 19

Richardson v. Suzuki Motor Co.,868 F.2d 1226 (Fed. Cir. 1989) ..............................19

Roberty v. Sears, Roebuck & Co.,723 F.2d 1324 (7t~ Cir. 1983) (en bane) .................20

Sarkiyian v. Winn-Proo£ Corp.,688 F.2d 647 (9th Cir. 1982) (en bane) ...................19

Structural Rubber Prody. v. Park Rubber Co.,749 F.2d 707 (Fed. Cir. 1984) ..........................10, 13

Statutes

35 U.S.C. § 103 ..............................................1, 3, 5, 25

Fed. R. Civ. P. 40 .......................................................21

iv

TABLE OF AUTHORITIES(continued)

Page(s)

Fed. R. Civ. P. 49 .......................................................21

Other Authorities

Adam B. Jaffe & Josh Lerner, Innovationand Its Discontents: How Our BrokenPatent System Is Endangering Innovationand Progress(Princeton 2004) .....................................................23

American Intellectual Property LawAssociation, Guide to Model Patent JuryInstructions ............................................................10

Asyst Techs., Inc. v. Empak, Inc.,Case No. C98"20451 JF, Docket Entry 1056,(N.D. Cal. Jan. 31, 2007) .......................................15

Hen. Kimberly A. Moore, Juries, PatentCases, & a Lack of Transparency,39 Hous. L. Rev. 779 (2002) ............................11, 13

National Jury Instruction Project, ModelPa ten t Jury Instructions .......................................10

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Apple, Inc., Cisco Systems, Inc., Google, Inc.,Microsoft Corp., Symantec Corp., and Yahoo!, Inc.(Amiel) are high-technology leaders, whoseinnovative products and services have gainedworldwide recognition. Their research anddevelopment investments have led to importantpatents protecting the technology at the heart oftheir products and services.

Because patent rights are important to Amiei,they appreciate the importance of a healthy patentsystem. At the same time, their products andservices are the targets of frequent infringementassertions. Based on Amici’~ balance of interests aswell as their extensive experience with the patentlitigation system, they provide the Court with theirviews on the issues before this Court, includingcentrally the proper role of the judiciary indetermining whether a patent is "non-obvious" asrequired by 35 U.S.C. § 103. Amiciare hopeful thatthe views expressed in this brief will assist the Courtin addressing the important question presented bythe petition.1

INTRODUCTORY STATEMENT

Determining when a claimed invention is"obvious" is a difficult task that can be vexing even

1 Amiei provided counsel of record with notice of their intent tofile this brief more than ten days prior to the due date, asrequired by Supreme Court Rule 37.2(a). All parties haveconsented to the filing of this brief. In accordance withSupreme Court Rule 37.6, Amici state that this brief was notauthored, in whole or in part, by counsel to a party, and that nomonetary contribution to the preparation or submission of thisbrief was made by any person or entity other than Amiei or itscounsel.

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for the most diligent and conscientious decision-maker. This legal problem presents such achallenge because it can involve, among other things,the complicated consideration of when one entityshould be given exclusive rights to an incrementallynew technique. Standing alone, this issueimplicates thorny line-drawing problems for judges,as this Court documented recently in KSR Int’l Co. v.Telef]ex, Inc., 550 U.S. 398 (2007).

But it does not stand alone. The inherentchallenges in deciding what is legally "obvious" areexacerbated by the Federal Circuit authority thatencourages courts to delegate their responsibility forthe obviousness determination to jurors. In practice,this results in both district courts and the FederalCircuit failing to perform express obviousnessanalyses themselves, even though this Court hasrepeatedly held it is an issue of law that should beanalyzed explicitly. This misapplication of thisCourt’s obviousness jurisprudence has createdpractical litigation problems that are so chronic thatthe issue is particularly worthy of the close attentionof this Court.

Indeed, a question remarkably similar to the onepresented here was of sufficient interest to thisCourt for it to have granted certiorari in the recentpast. See American Airlines, Inc. v. Lockwood, 515U.S. 1121 (1995) (No. 94-1660) (presenting thequestion of the respective roles of the judge andjuries relating to patent invalidity). Unfortunately,the proper role of a judge in deciding issues ofobviousness was not clarified in Lockwood becausethe private parties mooted the issue before thisCourt could resolve the case. This case presents a

fresh opportunity for this Court to address this issue,which has only become more important as anincreasing number of patent cases are tried to juries.

The question now presented for review iswhether judges can and should conduct anindependent determination of obviousness, evenwhen the issue has been submitted to a jury. Amicirespectfully urge this Court to grant the petition toconsider the proper role of courts in decidingobviousness when factual questions are present.Because of the character of the patent right and toaddress the awkward split of responsibility betweenthe court and the jury that currently plays out indistrict courts every day, judges should be expresslyand unambiguously given the authority to fulfilltheir responsibility to address the legal question ofobviousness based on a plenary evaluation of therecord.

SUMMARY OF ARGUMENT

This Court should grant the petition so as toreaffirm its prior rulings that judges--not juries--bear the responsibility, and have the authority, toanalyze the legal question of whether an assertedpatent meets the nonobviousness requirement of 35U.S.C. § 103(a). This rule is not being followed.Clarifying the paramount role of the judiciary inresolving the legal question of obviousness wouldsolve the myriad practical problems currentlyexperienced on a daily basis throughout the nationaljurisdiction of the Federal Circuit.

In Graham v. John Deere Co. o£Kansas City, 383U.S. 1 (1966), this Court continued the centuries-oldquest for a "more practical test" for obviousness. Id.

at 17. The Court confirmed that the obviousnessdetermination is a question of law for the court basedon underlying factual questions, including the scopeand content of the prior art, differences between theprior art and the claims at issues, and the level ofordinary skill in the pertinent art. Id.

As the Graham framework is currentlyimplemented in the lower courts, however, the entireissue of obviousness is usually tried to a jury upon ageneral verdict. The potential alternative undercurrent Federal Circuit law is to ask the jury toanswer, through an essay or otherwise, the oftendense factual questions identified in Graham viaspecial interrogatory or special verdict. But giventhe breadth and complexity of those factualquestions in many cases (albeit not always), this canbe far too cumbersome and impractical. While someexperimentation has been attempted, little headwayhas been made in preserving the role of the courts indeciding obviousness where underlying factualquestions exist.

For such reasons, general jury verdicts regardingobviousness, such as that employed in the presentcase, have become commonplace, if not standardpractice. Yet, such general verdicts on the ultimatelegal question of obviousness inadvisably sidelinejudges from fulfilling their critical responsibility todecide this important legal issue. Such verdicts,which are inherently silent about the underlyingfacts found by the jury on the Graham factors,effectively prevent independent judicial review of thelegal question of obviousness.

Compounding this trial level problem, thesegeneral verdicts also thwart full appellate review

because appellate judges cannot look inside the’%lack box" of a jury verdict and instead mustassume every fact and inference in favor of the juryto the extent possible. As Chief Judge Michel hasput it himself, under Federal Circuit precedent, "ageneral jury verdict on the legal question ofobviousness is essentially immune" from judicialreview because judges must assume that the juryfound whatever facts and made whatever inferenceswere required to reach the verdict and then affirmthat verdict so long as there is substantial evidencein the record to support those facts. See MeGinley v.Franklin Sports, Inc., 262 F.3d 1339, 1358 (Fed. Cir.2001) (Michel, J., dissenting).

The process of reviewing the factualdeterminations "implicit within the verdict," asadvocated by the Federal Circuit blocks judges fromfulfilling their duty to make a legal determination ofobviousness even though that is expresslycontemplated by this Court’s jurisprudence. SeeMeGinley, 262 F.3d at 1351 (noting that appellatereview of a district court’s judgment as a matter oflaw overturning a jury verdict of nonobviousnessinvolves "re-creating the facts as they may have beenfound by the jury"). This problem is magnified if, ashere, the district judge fails to make explicit factualfindings in ruling on a motion for JMOL. SeePetitioners’ Br. App. D at 11 (simply finding"sufficient evidence to justify the jury’s verdict" bydeferring to the jury’s credibility determinationsregarding the expert testimony presented at trial).This practical reality is not only in conflict with thisCourt’s most recent instructions regarding theapplication of § 103, but also with the decisions ofother circuit courts prior to the inception of the

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Federal Circuit concerning the proper degree ofdeference accorded to a jury verdict on the issue ofobviousness.

In short, the jury’s effective dominion over thelegal question of obviousness in the real world is atodds with the goal of "uniformity and definiteness" inthe application of obviousness law to the public grantof a patent that this Court so emphasized in Graham.383 U.S. at 18. It is also at odds with this Court’sstatement in KSR that the findings and reasoningunderlying an obviousness conclusion should be"express" to enable judges to fulfill their importantresponsibility in this area. 550 U.S. at 418.

This Court should therefore grant the petition fora writ of certiorari to address this issue ofconsiderable national importance.

ARGUMENT

I. THIS COURT SHOULD GRANT THE PETITION TOREVIEW WHETHER JUDGES SHOULDINDEPENDENTLY RESOLVE OBVIOUSNESS ISSUESNOTWITHSTANDING A JURY VERDICT

Allowing juries to render general verdicts on thelegal question of obviousness has become routine andhas been repeatedly blessed by the Federal Circuit.

Since Connell v. Sears, Roebuck & Co., 722 F.2d1542 (Fed. Cir. 1983), the Federal Circuit hasconsistently held that it is not reversible error for adistrict judge to surrender the ultimate legaldetermination of a patent’s validity to a jury as longas it retains some control over the ultimate legalissue by reviewing the jury’s verdict on motions forjudgment as a matter of law or for a new trial. But,in the now-typical circumstance of a general verdict,

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the district judge retains control over theobviousness issue in only an attenuated sense.

The practical reality is that the use of generalverdicts not only prevents judges from analyzing thequestion of obviousness based on actual fact findingsbut also results in inappropriate deference to thejury’s ultimate determination of a legal issue. Thisresult is a natural consequence of the FederalCircuit’s caselaw holding that implicit factualfindings in support of a general verdict ofobviousness (or nonobviousness) are only reviewedfor substantial evidence. This Court should grantthe petition for certiorari to reaffirm that judges, notjuries, bear the ultimate responsibility of ruling onissues of law and must therefore engage in anindependent assessment of whether an assertedpatent is obvious.

A. FEDERAL CIRCUIT PRECEDENT ENCOURAGESJUDGES TO ABDICATE THEIR RESPONSIBILITYTO DECIDE OBVIOUSNESS ISSUES

In G~rahan~, the Court made clear that "theultimate question of patent validity is one of law,"albeit one that is founded on "several basic factualinquiries." 383 U.S. at 17. In stating the basicobviousness test, the Gra/~sn~ Court explained theimportance of uniformity and consistencytoobviousness decision-making:

That provision [Section 103] paraphraseslanguage which has often been used indecisions of the courts, and the section isadded to the statute for uniformity ~nddel~z~’teness.

We believe that strict observance of therequirements laid down here will resultin that m~it~ormity and deEmiteness whichCongress called for in the 1952 Act.

Id. at 17-18 (emphasis added).

Recently, in KSR, this Court explicitly reaffirmedthat "[t]he ultimate judgment of obviousness is alegal determination." KSR, 550 U.S. at 427. TheCourt proceeded to assume that the factualdeterminations upon which the legal conclusion ofobviousness is based should be found by the judge,not jurors:

Often, it will be necessary for a court tolook to interrelated teachings of multiplepatents; the effects of demands known tothe design community or present in themarketplace; and the backgroundknowledge possessed by a person havingordinary skill in the art, all in order todetermine whether there was anapparent reason to combine the knownelements in the fashion claimed by thepatent at issue. To £acildtate review, thisanalysis should be made explicit."

Id. at 418 (emphasis added). Not only does thispassage suggest that the proper decision-maker is ajudge, not a jury, but also that allowing a jury tosimply reach a verdict on the ultimate question of

obviousness would be improper and harmful to thehealth of the appellate processes.2

Under Federal Circuit precedent, however, oncerendered, a jury verdict on obviousness may not beignored "as though the jury had never beenimpaneled, had never been instructed on the issue,had never considered the issue, and had neverrendered a verdict based on its conclusion." PerMn-Elmer Corp. v. Computervision Corp., 732 F2d 888,895 (Fed. Cir. 1984) (further noting that the districtjudge reviewed "the jury’s presumed findings").Instead, the Federal Circuit encourages judges, as itdid here, gee Petitioners’ Br. App. A, to makeassumptions about the jury’s factual findings andreview such hypothetical findings which are "implicitwithin the verdict" to determine whether they aresupported by substantial evidence. MeGinley, 262F.3d at 1351. This leads to the perverse result thatdistrict judges effectively bend over backwards togive deference to a jury verdict on obviousness ratherthan conduct an independent assessment of theunderlying facts and determination of the legal issue.

2 Experience has quickly proven that the legal standards setforth in KSR are not readily packaged into digestible juryinstructions that can be applied easily by juries. Indeed, evena cursory review of the KS.R opinion demonstrates that itsexposition on obviousness law was written for a judge tointerpret and apply, not jurors.

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B. SPECIAL VERDICTS THEORETICALLY COULDFACILITATE JUDICIAL REVIEW OF A JURY’SFINDINGS BUT ARE FREQUENTLYCUMBERSOME AND IMPRACTICAL

In the absence of guidance from the FederalCircuit, the process of drafting jury instructions andverdict forms on the issue of obviousness has becomea complex battleground. The legal determination ofobviousness is a complicated inquiry that depends onmany factors. As Petitioners point out, see Br. at18, most textbooks on patent law devote entirechapters totaling hundreds of pages to explainingobviousness. Indeed, an entire volume of ProfessorChisum’s well-regarded treatise on patents concernsobviousness law. In contrast, even the mostthorough jury instructions on obviousness will beinadequate to capture these legal nuances. See,e.g., American Intellectual Property Law Association,Guide to Model Patent Jury Instructions, availableathttp://www.aipla.org/Content/ContentGroups/Publieationsl/Guide to Model Patent Jury Instruetions.htm; The National Jury Instruction Project, ModelPatent Jury Instructions, available athttp://www.national]urTinstruetions.org/doeuments/NationalPatentJuryInstruetions.pdf.

As described in further detail below, it has beensuggested that district courts could allow juries tomake factual findings on a special verdict or toanswer special interrogatories. See StructuralRubber Prods. v. Park Rubber Co., 749 F.2d 707, 718(Fed. Cir. 1984) (encouraging the use of specialverdict questions to aid in the review of jurydeterminations which are otherwise "a black box in

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which patents are thrown and emerge intact orinvalid by an unknown and unknowable process").Indeed, before being appointed to the Federal Circuitherself, Judge Moore argued that the Federal CircuitshouId mandate the use of such forms, observingthat "district court judges will likely appreciate theguidance from the Federal Circuit on the form of theverdicts." See Hon. Kimberly A. Moore, Juries,Patent Cases, & a Lack of Transparency, 39 Hous. L.Rev. 779, 799 (2002).

But this approach has its own challenges and isimpractical in many eases. Imagine the factfindings in Graham, KSR, or any other ease in thisCourt’s obviousness jurisprudence being written upand agreed upon by a lay jury such that it provides asolid and thorough factual foundation for the districtjudge, or an appellate court, to make an obviousnessdetermination. For a patent ease involving multiplepatents, each with numerous claims, the specialverdict forms could easily consist of a laundry list ofquestions relating to obviousness that could bedozens of pages long.

In one of the rare cases where such verdicts wereattempted, these questions (and answers) pertainedto the secondary considerations that the jury wasasked to consider, which is only one of the factualareas mandated inGraham as part of theobviousness analysis:

Whether or not you found the subjectmatter of any claim of the "051 patentinvalid under § 103 in response toquestion number 2, state below whetherany of the following objective

12

factors~secondary considerationsregarding the "051 patent are establishedin the evidence:

Whether there was a long-felt needwhich the subject matter as a whole ofthe "051 patent fulfilled at the time theinvention was made?

YES X NO

Whether others tried but failed tosolve the problems addressed by thesubject matter of the "051 pa ten t?

YES NO X

Whether the subject matter as awhole of the ’051 patent was praised byexperts in the industry?

YES X NO

Whether the subject matter as awhole of the "051 patent was praised bythe defendants?

YES X NO

Whether the defendants, in infringingthe "051 patent, chose not to use the priorart Goodyear design?

YES X NO

Whether the defendants copied theinvention of the ’051 patent?

YES NO X

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Whether the plaintifZ’s SAF & DRIcrossing achieved commercial success?

YES X NO

If you found commercial success as tothe SAle & DRI crossing, was itattributable to the claimed invention inthe "051 patent?

YES X NO

Whether the Parko crossing achievedcommercial success?

YES X NO

If you found commercial success as tothe Parko crossing, was it attributable tothe claimed invention in the "051 patent?

YES NO X

See Moore, supra, at 789-90 (reproducingquestions from the Special Verdict Form used inStructural Rubber Prods. Co. v. Park Rubber Co.,Case No. 79-CV-1223) (N.D. Ill.)).

In another attempt to test the use of a specialverdict, the district judge asked the jury to makethese underlying factual findings and the ultimatedetermination of whether the asserted claims wereobvious. The special verdict form included thefollowing questions (and answers):

Question 4. Do you find that thefollowing secondary considerations ofnon -obviousness existed in this case?

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(A "TES" answer is an answer for Asyst,a "NO" answer is an answer for Jenoptik.)

a. Commercial successof theinvention.

YES X NOb. A long felt need for the solutionprovided by the invention

YES X NOe. Acceptance by others of theinvention in the asserted claims ofthe "421 patent as shown by praise fromothers in the field or by licensing of theinvention claimed.

YES X NO

Question 5. In light of all the evidence,do you find that Jenoptik proved that it ishighly probable that the one of ordinaryskill in the art in May of 1987 would havefound the asserted claims of the "421patent obvious in view of Hesser and theprior art?

(A "YES" answer is an answer forJenoptic, a "NO" answer is an answer forAsyst.)

a. Claim 2 YES NO X

b. Claim 11 YES NO X

e. Claim 12 YES NO X

d. Claim 13 YES NO X

e. Claim 14 YES NO X

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See Asyst Teehs., Inc. v. Empak, Inc., Case No. C98-20451 JF, Docket Entry 1056, (N.D. Cal. Jan. 31,2007).

Not only do these examples demonstrate howchallenging special verdict questions on theobviousness issue can be, but even these attempts todrag explicit factual findings out of the proverbial’%lack box" do not adequately reflect themultidimensional nature of the factual inquiries setforth in Graham. For example, the questions ofwhether a product is commercially successful orwhether the commercial success of a product is dueto the merits of the claimed invention in many casesare better framed as a matter of degree, not as "yes"or "no" answers, e.g., how successful was the productor to what extent the commercial success is due tothe patented invention. Likewise, for a jury toanswer whether there is a "long felt need" for thesolution provided by the claimed invention, it mustnecessarily make silent findings regarding whatalternatives were available before the invention, towhat degree those alternatives failed to adequatelyaddressed the problem, and how long the need wasfelt. Moreover, all of these factual inquiries must beviewed through the lens of a person of ordinary skillin the art, but the level of experience of thathypothetical person is often hotly disputed and noteasily reduced to a binary "yes" or "no" question on aspecial verdict form. Yet, asking a jury oflaypersons to unanimously answer such questions inessay format using special interrogatories might beeven more cumbersome.

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While one can certainly envision manycircumstances where asking the jury to find specificfacts is superior to abandoning the wholeobviousness issue to the jury, such as where the onlyfactual dispute is whether or when an article wasactually published, 3 Amiei hereby attest to thechallenge it can be in many circumstances. Coupledwith the Federal Circuit’s governing caselaw, whichpromotes general verdicts of obviousness asdescribed above, this unfortunate situation helpsexplain why litigants often acquiesce to generalverdicts of obviousness and why this Court shouldgrant certiorari to address this troubling state ofaffairs.

(~. UNLESS THIS COURT CLEARLY INSTRUCTSJUDGES TO INDEPENDENTLY ASSESS THE ISSUEOF OBVIOUSNESS, GENERAL VERDICTS WILLCONTINUE TO IMPEDE JUDICIAL REVIEW

As explained above, general verdicts are now thenorm, but they stifle the consistency and uniformityof decision-making that is the hallmark ofmeaningful appellate review based on expresslyfound facts. Once rendered, a jury’s general verdicton the legal question of obviousness can be difficultto evaluate because the court must presume that thejury resolved all the underlying facts in favor of theverdict winner and also must accord them everyreasonable inference from the evidence. Moreover,in looking for substantial evidence in the record to

3 In a simple example, a jury might be asked a specialinterrogatory regarding whether an article that is undisputedinvalidating if it qualifies as "prior art" in fact was publishedearly enough to be prior art.

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support a hypothetical set of facts that wouldsupport the jury’s verdict, the district court is notalways required to conduct a lengthy or thoroughanalysis and in some circuits this decision isreviewed only under an abuse of discretion standard.As noted by Judge Nies, "It]he trial court’s ruling ona JMOL motion may be no more than ’Denied."’ SeeIn re Lockwood, In re Lockwood, 50 F.3d 966, 989(1995) (Nies, C.J., dissenting from order denyingrehearing en bane).

The Federal Circuit itself has referred to the’%lack box" nature of jury verdicts, observing that,when evaluating a jury’s implicit factual findingsregarding the issue of obviousness, it would be"impossible to determine" which pieces of evidencepersuaded the jury. MeGinley, 262 F.3d at 1356.In MeGinley, for example, the panel majorityconcluded that there was sufficient evidence tosupport the jury’s conclusion that the patent was notobvious, although it did not even venture a guess asto what evidence actually convinced the jury, andnoted that "so long as the parties are content to givethe jury unfettered room to operate on dispositivefactual issues within the scope of a general verdictrequest," the appellate court must respect the verdictreached. Id.

In his dissent, however, Judge Michel criticizedthe "common, if unfortunate, practice of allowing thejury to render a general verdict on the ultimate legalconclusion of obviousness without requiring expressfindings on the underlying factual issues through aspecial verdict or special interrogatories under Fed.R. Cir. P. 49." Id. at 1358. He argued that such averdict is "essentially immune" from judicial review.

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Id. He presciently expressed concern "that afterreading our majority opinion, trial courts and ourpanels will hereafter consider such general verdictson obviousness immune from meaningful review andthat serious legal errors by juries will thus gouncorrected . . . despite our settled case law that ajury’s ultimate conclusion on obviousness is a legalquestion freely reviewable by judges." Id. at 1363.

The time is now ripe for this Court to interveneand provide much-needed guidance on whatdeference, if any, judges should give to a jury’sverdict on the issue of obviousness.

||. THIS COURT SHOULD RESOLVE THE CIRCUIT SPLITAND PROVIDE MUCH’NEEDED GUIDANCEREGARDING THE PROPER ROLE OF JURIES INMAKING OBVIOUSNESS FINDINGS

In the wake of G~’aham, several Circuitsgrappled with the problem of allocating the decision-making responsibility for obviousness issues betweenjudges and juries. Different Circuits had drasticallydifferent views on seeking jury findings regardingobviousness and consequently advocated differentapproaches to instructing juries. This not onlyhighlights the tensions described above but alsoprovides a separate reason that this Court shouldgrant the petition for certiorari as the FederalCircuit has openly acknowledged that its precedentregarding the proper role of a jury in an obviousnessinquiry is in conflict with the law of these otherCircuits.4 Because the Federal Circuit’s jurisdiction

4 As noted by Petitioners, a split between Federal Circuit lawand preexisting regional circuit law has been a factorconsidered by this Court in granting a petition for certiorari,

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is national, there is no more percolation that can beexpected.

For example, the Ninth Circuit sitting en bancheld that a jury’s role in deciding whether a patent isobvious under § 103 was limited to making theunderlying factual findings because "the court mustdetermine obviousness as a matter of law." See,e.g., Sarkisian v. Winn-Proo£ Corp., 688 F.2d 647,650 (9th Cir. 1982) (en bane). In Sarkisian, the courtheld that such findings of fact are made "preferablyby detailed special interrogatories in jury trials, andby detailed findings in nonjury trials." Id. at 650.If only the legal question of obviousness is submittedto the jury, Le., "for its guidance," the verdict isadvisory and the judge "retains the duty to decidethe question independent of the jury’s conclusion."Id. The Federal Circuit, however, expressly rejectedthe Sarkisian view "that a jury verdict onnonobviousness is at best advisory" and held that acourt reviewing such a verdict should ask whetherthe jury’s "presumed findings" could support itsconclusion of nonobviousness. Perkin-Elmer, 732F2d at 895 & n.5; see also Richardson v. SuzukiMotor Co., 868 F.2d 1226, 1234 (Fed. Cir. 1989(criticizing the "discredited procedure of advisoryverdicts" suggested by Sarkisian). Amiei urge thisCourt to adopt the Ninth Circuit view that generalverdicts on the obviousness question should betreated as advisory.

Likewise, the Seventh Circuit sitting en bane hasobserved that "obviousness is a question of law and

most recently in KSR. See Petition for Writ of Certiorari, KSRInt’l Co. v. Te]eY]ex, Inc., 550 U.S. 398 (2007) (no. 04-1350),2005 WL 835463, at "20-21.

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that in a patent case, as in any other case tried to ajury, questions of law are for the court and questionsof fact are for the jury." Roberts v. Sears, Roebuck& Co., 723 F.2d 1324, 1341) (7th Cir. 1983) (en banc).In Roberts, the Seventh Circuit criticized the districtcourt because it did not treat a general jury verdicton obviousness as advisory and thereby "abdicatedits control over the legal issue." 723 F.2d at 1342.The Court explained:

Allocating between judge and jury oftheir respective decisional responsibilitiesmay be accomplished by the use of specialverdicts or special interrogatories or "bythe court’~ instructions to the jury beforeit returns a general verdict."

Id. at 1341 (quoting Panther Pumps & Equip. Co. v.Hydroera£t, Inc., 468 F.2d 225 (7th Cir. 1972))(emphasis in original). If a general verdict issought, jury instructions must explicitly link factualfindings with a particular result. In other words,the court must instruct the jury "that if it finds factsA, B, C, and D, it must render a certain verdict." Id.at 1341. In this manner, if the jury renders thatverdict, it is implicit that the jury found facts A, B,C, and D in reaching that verdict. See a]so id. at1347 (Posner, J., dissenting on other grounds)(agreeing that "the ultimate question of obviousnessis for the court, not the jury, and that the jury’s roleis limited to deciding subsidiary fact questions, of thewho-did-what-to-whom variety."). Yet, Amici canverify from experience that this mix and match"menu" approach is not practical for most cases.

The Fifth Circuit, on the other hand, advocatedan approach similar to that now employed by the

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Federal Circuit in Control Compononts, Inc. v.Valtek, Inc., 609 F.2d 763 (5th Cir. 1980). There, thejury instructions included a lengthy description ofthe legal standard of obviousness to be applied,including a list of secondary factors the jury couldtake into consideration, but only sought a generalverdict on obviousness. Id. at 766-67. Onappellate review, the panel majority held that "juryfindings on the factual underpinnings were implicitin the general verdict" and reviewed those factualfindings for substantial evidence. Id. at 767. Inhis partial dissent, Judge Rubin argued thatconsideration of the Graham factors required "juryverdicts on special interrogatories, as permitted byFed. R. Civ. P. 49(a);" otherwise, the question ofpatent validity will "effectively become a question forthe jury, not one of law for the judge" with "implicitfindings on non-obviousness" that cannot bereviewed unless the standard for judgmentnotwithstanding the verdict is used. Id. at 775(Rubin, J., dissenting) (internal citation omitted).Afterwards, four judges thought that the case shouldbe reheard en banc "because the issues it presentsarise in every jury trial of a patent case." ControlComponents, Inc. v. Valtek, Inc., 616 F.2d 892, 892(5th Cir. 1980) (Brown, J., dissenting from orderdenying rehearing en bane).

Another panel of the Fifth Circuit later revisitedthis issue in Baumstimler v. Rankin, 677 F.2d 1061(5th Cir. 1982) and agreed with Judge Rubin’sreasoning that "a general verdict in a patent easedeprives the appellate court of any meaningfulreview." Id. at 1071. The Baumstimler paneladvocated the use of special interrogatories underFed. R. Cir. P. 40(a). Id. The Eighth Circuit took a

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similar approach. See E.I. du Pont de Nemour~ &Co. v. Berkley and Co., 620 F.2d 1247, 1256 n. 5 (8th

Cir. 1980).

Finally, the Tenth Circuit had a completelydifferent view, acknowledging that the ultimate issueof patent validity is a question of law, but holdingthat the statutory conditions of patentability such asnovelty or nonobviousness are issues of fact. Assuch, question of obviousness may be submitted inits entirety to the jury and judicial review onjudgment as a matter of law (or on appeal) would belimited to determining whether that verdict wassupported by substantial evidence. See, o.g., Nor£inInc. v. Int’l Bug. Maehino Corp., 625 F.2d 357 (10th

Cir. 1980).

In light of these widely-differing divisions oflabor between judge and jury on the issue ofobviousness, the Court should take this opportunityto resolve the Circuit split. This is a goldenopportunity for the Court to clearly empower districtjudges to exercise their responsibility to resolve theobviousness issue without deferring to general juryverdicts.

III. FUNCTIONAL CONSIDERATIONS FAVORINDEPENDENT JUDICIAL REVIEW OF OBVIOUSNESSISSUES

A. BECAUSE PATENTS INVOLVE PUBLIC RIGHTS,OBVIOUSNESS SHOULD BE ADJUDICATEDINDEPENDENTLY BY JUDGES

The public nature of the patent grant highlightsthe importance of the judicial role in resolvingobviousness questions. From a historicalperspective, a patent’s validity was customarily

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challenged in courts of equity in 18th centuryEngland. See generally In re Lockwood 50 F.3d at983-87 Nies, C.J., dissenting from order denyingrehearing en banc). This is because a patent grantinvolves public rights rather than private rights: "theissuance of a valid patent is primarily a publicconcern and involves a ’right that can only beconferred by the government’ even though validityoften is brought into question in disputes betweenprivate parties." Joy Techs., Inc. v. Manbeek, 959F.2d 226, 228 (Fed. Cir. 1992) (citing Patlex Corp. v.Mossinghoff, 758 F.2d 594, 604 (Fed. Cir. 1985).5

In Lockwood for example, the issue was whetherthere is a right to jury trial on a counterclaim fordeclaratory judgment of patent invalidity. In herdissent from the denial of rehearing en banc, beforethis Court granted certiorari, then Chief Judge Niesemphasized that a patent was a "public right"created by Congress and "[a] constitutional jury rightto determine validity of a patent does not attach tothis public grant." In re Lockwood, 50 F.3d at 983(Nies, C.J.). As noted above, this Court recognized

~ Administrative actions--such as the issuance of a patent bythe United States Patent and Trademark Office~are alwaysreviewed by a court, not a jury. See Cox y. United States, 332U.S. 442, 453 (1947) (holding that "[t]he concept of a jurypassing independently on an issue previously determined by anadministrative body or reviewing the action of anadministrative body is contrary to settled federaladministrative practice"). Some commentators have claimedthat there is empirical proof that juries are reluctant to ignorethe imprimatur of the government on an issued patent. See,e.g., Adam B. Jaffe & Josh Lerner, Innovation and ItsDiscontents: How Our Broken Patent System Is EndangeringInnovation and Progress, at 125 (Princeton 2004) (arguingthat juries have a pro-patentee bias).

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the importance of this question and grantedcertiorari on interlocutory appeal, 515 U.S. 1121, butnever had an opportunity to clarify whether patentvalidity should be decided by a judge or a jurybecause the private litigants in Lockwood mooted theissue.

Because this case presents a similar questionand its procedural posture is more in line with thetypical patent case, this Court should grantcertiorari to address how the public nature of thepatent grant may require judges to exercise theirauthority and fulfill their responsibility to evaluatethe legal question of obviousness without deferenceto a jury’s general verdict.

B. FROM A FUNCTIONAL PERSPECTIVE, JUDGESARE BETTER SUITED THAN JURIES TO DECIDETHELEGAL QUESTION OF OBVIOUSNESS

This Court has recognized that "functionalconsiderations also play their part in the choicebetween judge and jury" as decision-makers.Markman v. Westview Instruments, Inc., 517 U.S.370, 388 (1996). In Markman, this Court addressedthe question of claim construction (interpreting thescope of the patent right) and explicitly recognizedthat the analysis involved mixed questions of lawand fact, but ultimately determined that judges werebetter equipped than juries to deal with thecomplicated process of construing terms in a patent.Id. at 388-90. The Markman Court also stressed the"importance of uniformity in the treatment of a givenpatent as an independent reason to allocate allissues of construction to the court." Id at 390.

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For similar reasons, obviousness is an issue moreappropriately decided by a judge instead of a jury.Regardless, a jury’s general verdict on the questionof obviousness, if sought, should be accorded nodeference. District judges should be given theauthority to fulfill their responsibility to resolvecomplex questions of obviousness, even though theremay be factual underpinnings. Indeed, the linebetween fact and law in an obviousnessdetermination can be very blurry. Although theyhave often been called fact-intensive inquiries, theGrahsrn Court, for example, referred to thesecondary considerations of commercial success, longfelt need, and failure of others as "legal inferences orsubtests" that "focus attention on economic andmotivational rather than technical issues and are,therefore, more susceptible of judicial treatmentthan are the highly technical facts often present inpatent litigation." See Graham, 383 U.S. at 35-36.

CONCLUSION

The Federal Circuit precedent which permits thelegal question of obviousness to be submitted to ajury for consideration is not only in conflict withcases from this Court and from other circuits, butfrom a practical perspective results in an often-unworkable framework for instructing juries in themajority of patent cases. Given that reality, and thefact that this case is a good vehicle for resolvingthese issues, the Court should grant the petition andclarify the proper division of labor between a judgeand a jury in determining whether an assertedpatent is nonobvious under 35 U.S.C. § 103.

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September 16, 2009 Respectfully submitted,

EDWARD R. REINES

Counsel of RecordJILL J. HO

WEIL, GOTSHAL & MANGES LLP201 Redwood Shores ParkwayRedwood Shores, CA 94065(650) 802-3000

Counsel for Apple, Inc., CiscoSystems, Inc., Google, Inc.,Microsoft Corp., Symantec Corp.,and Yahoo.t, Inc.