SCOTUS calls for fed govt input on defining patent terms
The US Supreme Court has asked the federal government to weigh in on whether a ruling that reversed a $1.7 million jury verdict in a patent dispute between Olaf Sööt Design (OSD) and Daktronics was a judicial abuse of authority.
In its request, SCOTUS asks whether the seventh amendment allows the US Court of Appeals for the Federal Circuit to reverse a jury verdict based on a claim construction of a term that a district court concluded was not a term of art.
The move follows the court’s request in September that Daktronics respond to OSD’s petition accusing the Federal Circuit of regularly abusing its position.
The petition argued that the Federal Circuit should not be allowed to prevent patent owners from taking their claims to a jury based on claim construction findings and that such conduct violated the seventh amendment of the US constitution.
The request marks the third time this term that the SCOTUS justices have asked for solicitor general views on defining patent terms.
The quarrel arose in 2017 when theatrical device maker OSD sued Daktronics alleging infringement of the patent 6,520,485, which is directed towards a winch for moving scenery and lighting by winding and unwinding cables around a drum.
During legal proceedings before the US District Court for the Southern District of New York OSD argued that “the hub is a part of the drum,” while Daktronics argued that the hub and drum are separate.
Despite the claim construction dispute being unresolved, the case proceeded to jury trial, which found in favour of OSD that Daktronics’ product infringed under the doctrine of equivalents.
In a post-jury-verdict decision, the district court resolved the claim construction issue, ruling in favour of OSD and basing its ruling in part on the jury’s decision, awarding damages of $1.7 million.
Daktronics appealed, and the Federal Circuit reversed the district court’s claim construction in January 2021.
It further held that claim construction disputes must not be submitted to the jury and reversed the district court’s judgment of infringement.
In the wake of this ruling, Judge Alan Lourie advised litigants and courts “against rendering the doctrine of equivalents meaningless”.
In response to OSD’s petition to SCOTUS, Daktronics urged the court not to review the Federal Circuit decision overturning the win, arguing that the move was routine and within the circuit’s powers.
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