Will the Supreme Court consider a CAFC penchant for setting aside patent jury verdicts?

On February 29, 2016, ParkerVision, Inc. filed a petition for a writ of certiorari with the United States Supreme Court questioning whether an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law. We along with several other attorneys represent ParkerVision, the plaintiff, which secured a $173 million infringement verdict that the courts subsequently threw out based on their own assessment of the evidence.

This case raises fundamental questions about the jury’s role in patent trials. All patent owners should seriously consider filing an amicus brief in support of this petition for certiorari.

Background

ParkerVision holds a patent for technology that converts a high-frequency electromagnetic signal into a low-frequency signal called the “baseband.” ParkerVision’s technology comprises a switch and a capacitor. The signal flows into the switch and then to the capacitor, and then out to the circuit. Both the switch and capacitor play a role in converting the input signal to the baseband. Qualcomm makes products that convert high-frequency signals to the baseband using a switch and a capacitor.

ParkerVision’s lawsuit alleges that Qualcomm’s products infringe its patents. At trial, ParkerVision presented the only expert witness on the question of infringement, Dr. Paul Prucnal, who testified that Qualcomm’s products infringe. On cross-examination, Dr. Prucnal also stated, however, that the output of the switch is the baseband signal, a statement that is arguably inconsistent with his testimony that both the switch and the capacitor play a role in generating the baseband. On redirect, Dr. Prucnal reiterated that both the switch and capacitor together generate the baseband.

The eight-person jury was highly educated. It included an engineer with a master’s degree in electrical engineering, a computer scientist, a commercial litigator, a college nursing instructor, and a teacher. The jury was properly instructed, and after significant deliberation it found that Qualcomm had infringed ParkerVision’s patents and awarded approximately $173 million to ParkerVision.

The district court, however, determined that Dr. Prucnal’s testimony was internally inconsistent and therefore failed to prove infringement. The court threw out the verdict and granted Qualcomm judgment as a matter of law. The Federal Circuit affirmed, essentially conducting its own assessment of the testimony and determining that it did not support a finding of infringement. It is telling that the Federal Circuit did not cite any authority in the analysis affirming the district court’s decision to throw out the jury verdict; instead, it only offered its own views about the strength of Dr. Prucnal’s testimony.

ParkerVision moved for rehearing, arguing that the fact-finder, and not the court, has the right to resolve inconsistencies in testimony. The Federal Circuit stood by its earlier opinion. The court admitted that generally, judges cannot second-guess juries, but held that “[w]hen the party with the burden of proof rests its case on a witness’s unexplained self-contradictory testimony, the court, in appropriate cases, may conclude that the evidence is insufficient” to support a verdict. It determined that “this is such a case” because Dr. Prucnal’s testimony was inconsistent, and “ParkerVision made no attempt to reconcile the two conflicting strands of its expert’s testimony.” The court also determined that Dr. Prucnal’s direct and redirect testimony was “vague,” but his testimony on cross-examination was “unequivocal.” Thus, it reweighed the evidence of infringement and again found it wanting.

On February 29, ParkerVision filed a petition seeking the Supreme Court’s review of that decision. The petition argues that the Federal Circuit’s holding conflicts with those of other courts of appeals, and pays short shrift to the Seventh Amendment, which provides a right to a jury trial, and protects jury verdicts from unduly intrusive appellate review.

Why An Amicus Brief Is Warranted

In this case, the roles of courts and juries are front and center. The Federal Circuit has been dismissive of jury findings. As Judge Newman has observed, the Federal Circuit frequently “reweigh[s] the evidence to reach [the court’s] preferred result, rather than considering whether substantial evidence as presented at the trial supports the verdict that was reached by the jury.”^[1] Other judges and scholars have concurred in this view.^[2]

This case presents an ideal opportunity to reverse this trend. If certiorari is granted, it is highly likely that the decision below will be reversed. As the Supreme Court has explained, when, as here, “there is an evidentiary basis for the jury verdict, the jury is free to discard or disbelieve whatever facts are inconsistent with its conclusion.” Lavender v. Kurn, 327 U.S. 645, 652 (1946). “[T]he appellate court’s function is exhausted when that evidentiary basis becomes apparent, it being immaterial that the court might draw a contrary inference or feel that another conclusion is more reasonable.” Id.

Certiorari will only be granted, however, if the Court is convinced that this case stands for more than the narrow interests of the parties involved. We believe that the case implicates a circuit split because other courts have recognized that even when a witness testifies inconsistently, an appellate court cannot second-guess the jury’s resolution of that inconsistency.^[3] But the Federal Circuit clouded the split in response to ParkerVision’s petition for rehearing by paying lip service to these principles even as it defied them.

That is why amicus participation is particularly important in this case. Amicus briefs are a trusted proxy for the importance of an issue. Participation by multiple amicus filers would send a strong signal, and provide filers an opportunity to make an original and impactful contribution to the cause of the civil jury.

As noted above, the petition was filed on February 29. The Court has not yet called for a response, but we expect that it will do so sometime during the month of March. Amicus briefs will be due thirty days from that date, so most likely in mid to late April.

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^[1] PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1381 (Fed. Cir. 2007) (Newman, J., dissenting); see also Med. Instrum. & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1225 (Fed. Cir. 2003) (Newman, J., dissenting); Malta v. Shulmerich Carillons, Inc., 952 F.2d 1320, 1331 (Fed. Cir. 1991) (Newman, J., dissenting).

^[2] See, e.g., I/P Engine, Inc. v. AOL Inc., 576 Fed. Appx. 982, 996 (Fed. Cir. 2014) (Chen, J., dissenting); Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1266 (Fed. Cir. 2010) (Gajarsa, J., dissenting); William C. Rooklidge & Matthew F. Weil, Judicial Hyperactivity: The Federal Circuit’s Discomfort with its Appellate Role, 15 Berkeley Tech. L.J. 725, 739-40 (2000); Ted D. Lee and Michelle Evans, The Charade: Trying a Patent Case to All “Three” Juries, 8 Tex. Intell. Prop. L.J. 1, 14 (1999); Gregory D. Leibold, In Juries We Do Not Trust: Appellate Review of Patent-Infringement Litigation, 67 U. Colo. L. Rev. 623, 625-26 (1996); Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 Colum. L. Rev. 1035, 1056 (2003).

^[3] See, e.g., Zellner v. Summerlin, 494 F.3d 344, 371 (2d Cir. 2007) (“[T]he jury is free to believe part and disbelieve part of any witness’s testimony.”); Poertner v. Swearingen, 695 F.2d 435, 437 (10th Cir. 1982) (holding that “inconsistency within the testimony of [the plaintiff’s] expert witness is an issue of credibility for the jury to resolve”); Payton v. Abbott Labs, 780 F.2d 147 (1st Cir. 1985) (“The expert testimony in this case was certainly not free of ambiguity and uncertainty. But it is a matter for the jury to resolve any inconsistencies in expert testimony.”); Contractor Util. Sales Co. v. Certain-Teed Corp., 748 F.2d 1151, 1155 (7th Cir. 1984) (“Issues as to inconsistencies, conflicts, and credibility are for resolution by the jury.”); Teti v. Firestone Tire & Rubber Co., 392 F.2d 294, 298 (6th Cir. 1968) (“[A] trial judge, in considering a motion for a directed verdict, must not usurp the function of a jury and determine the credibility of a witness or weigh the relative merits of a party’s claim.”); Chicago Great Western Ry. v. Smith, 228 F.2d 180, 183 (8th Cir. 1955).