The Road to Transparency: Abolishing Black-Box Verdicts on Patent Obviousness

Abstract

The criteria of novelty, utility, and non-obviousness are considered the gatekeepers of the modern patent system. The non-obviousness criterion is complicated for two reasons. First, non-obviousness attempts to measure technical accomplishment or non-triviality – a more abstract inquiry than either novelty or utility. Second, when the non-obviousness of a patented invention is challenged in the context of patent litigation, lay persons (juries or judges) are called upon to measure the level of technical accomplishment even though they are usually unfamiliar with the technology involved.So, it might not be surprising that litigants care about the format of jury verdicts on patent obviousness; the format determines the amount of information disclosed regarding the factual findings underlying the verdict. In a recent case, Wyers v. Master Lock Co., the Federal Circuit reviewed a jury’s general verdict on patent obviousness. In his concurring opinion, Judge Linn noted that the Federal Circuit had repeatedly encouraged trial courts to provide juries with special interrogatories on obviousness in order to facilitate review and to “reveal more clearly the jury’s underlying factual findings.” However, Judge Linn also noted that the Federal Circuit had not adopted a “hard and fast rule” regarding special interrogatories on obviousness, leaving the form of the jury verdict to the “sound discretion of the trial court.This Note argues that mandating special interrogatories on obviousness is preferable to the status quo. The Note first outlines the basic law on patent obviousness and the Seventh Amendment right to jury trials as it relates to obviousness. Second, the Note argues that the Federal Circuit has the legal authority to mandate special interrogatories on patent obviousness. Third, the Note discusses the risk posed by four extralegal factors that might influence jury verdicts on obviousness. Fourth, the Note reviews the arguments for and against mandating special interrogatories. Finally, the Note suggests measures that may enhance jurors’ understanding of patented technology and thereby minimize problems involving conflicting responses to special interrogatory questions.