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Inequitable Conduct Case not Necessarily for JuryJune 27, 2006

Agfa Corporation (‘Agfa’) sued Creo Products (‘Creo’) for infringement of a patent covering a large scale printing system. As a defense, Creo asserted that Agfa’s patents were unenforceable due to inequitable conduct. Creo alleged that Agfa failed to disclose at least three material prior art systems during prosecution. The trial court determined that the issue of inequitable conduct should be tried separately to the court, rather than at a jury trial. Ultimately, the trial court found all of Agfa’s patents unenforceable due to inequitable conduct, and awarded attorney’s fees to Creo due to the exceptional circumstances of the inequitable conduct. Agfa appealed, arguing it had been denied its Seventh Amendment right to a trial by jury. The Federal Circuit disagreed, and affirmed the lower court’s ruling. In order to determine whether a jury trial is constitutionally required for a given claim, courts look to whether such a claim (or similar claims) were tried to a jury at the time the Bill of Rights was adopted in 1791. Inequitable conduct, and specifically the issues of intent to deceive and material misrepresentation, have not historically been subject to a jury trial, but rather have been adjudicated by courts. While there was no analogous claim in 1791, Agfa asserted that the writ of scire facias (which was tried to a jury) was the closest historical analog, and thus an inequitable conduct claim must also be tried to a jury.A writ of scire facias was an English legal process for a patentee to prove to a jury why their patent was not fraudulently obtained and should not be invalidated. The Court determined that the writ of scire facias is more similar to inequitable conduct than invalidity, however, it does not trigger a Seventh Amendment right to a jury trial. In essence, while the modern doctrine of inequitable conduct is a potential ‘contemporary analog’ to the writ of scire facias, it is not a historical analog to inequitable conduct. Thus, because the court determined that there was no historical analog that required inequitable conduct to be tried to a jury, the lower court’s decision to hear the issue without a jury was affirmed.Judge Newman dissented, asserting that the right to a jury trial extends to the factual matters of material misrepresentation and deceptive intent, which are the two items that must be proven to show inequitable conduct. She asserted that the trial court has no right to reject a jury demand for questions of fact, and explained that the majority’s decision was contrary to the court’s precedent and history, as well as the Constitution. Judge Newman illustrated the Court’s long tradition of jury trials for issues of inequitable conduct by listing case precedent where a jury determined the issue of inequitable conduct. The majority’s and dissent’s opposing views on the Court’s ability to force the factual issue of inequitable conduct to be heard by a judge rather than a jury illustrates a substantial conflict on a constitutional issue at the Federal Circuit. It would seem that this issue would be ripe for rehearing en banc at the Federal Circuit or for the Supreme Court to grant certiorari to resolve the disagreement. The complete opinion can be found at

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