Practice Tips:

What Can Jury Instructions Teach Us About Patent Prosecution?

By Phillip M. Pippenger - June 30, 2014

Many companies and individuals place a high value on patent protection. Moreover, the markets and courts tend to validate this prioritization of patent rights.

However, we’ve also seen that individual patents can be high-value patents or low-value patents, depending upon a number of factors. Some factors, such as market dynamics and consumer adoption, are not within the control of the patent drafter or prosecutor. However, one very important factor that can be controlled during the drafting and prosecution process is quality; this refers to the quality of the application as well as the quality of the prosecution.

While certain aspects of quality such as clarity, organization and accuracy are important and should always be maintained, there is one aspect of quality is often overlooked and yet is the key parameter of patent value – the likelihood that the patent can be effectively enforced. After all, actual or potential enforcement is a determining factor in every settlement, license, cross license and successful patent counterclaim.

Although the evaluation of this factor is often subject to opinion and conjecture, there do exist concrete standards against which the likelihood of successful enforcement can be evaluated. Of these, one of the most overlooked sources of guidance is Federal Court jury instructions. Evaluating a patent against the standards that a jury would use to evaluate the patent makes eminent sense yet is rarely done.

There are numerous publicly available sets of patent jury instructions from which to choose. A good balanced example is the set of model instructions produced under the guidance of the American Intellectual Property Law Association (AIPLA). The instructions regarding anticipation and obviousness will generally be straightforward and familiar, with little to add to the practitioner’s understanding of the law. Similarly, instructions regarding §§101 and 112 will be as familiar as they can be given the current state of clarification from the Supreme Court. However, as will be discussed below, certain other instructions may inform the practitioner.

For example, the AIPLA model set makes clear to the jury that the exact same claim construction must be used for infringement as for validity. While most practitioners are generally familiar with this canon, they do not necessarily proactively control the claim construction during drafting and prosecution. If the claims are as broad as possible without, in the drafter’s mind, encompassing the prior art, then there is a real chance that the claim construction could fall on either side of that fine line. As such, in this situation, the drafter needs to expressly support, and the prosecutor needs to carefully adhere to, the needed claim construction.

With respect to means-plus-function claim limitations (invoking §112 para. 6), the required equivalent structure in the specification will be identified by the Court and specifically included in the jury instructions; it will thus be an easy determination for the jury to limit or invalidate the claim based on that definition.

Thus, the drafter must carefully invoke §112p6 (or be careful not to invoke §112p6). The techniques for accomplishing are slightly beyond the scope of this article, but we would be happy to discuss any specific situations with you. Assuming that §112p6 is invoked, the jury will be told what the matching structure in the specification is. In anticipation of this, the drafter must clearly define sufficient structure in the specification and must just as clearly link the claim language to that structure.

This is just a brief sampling of model jury instructions, but published instructions exist for most potential situations including reissued and reexamined claims, terminally disclaimed patents, distributed infringement, and so on. In short, most issues have been treated in various jury instructions, and it is worthwhile to understand these instructions so as to ensure that your patents will be high-value patents having a high likelihood of successfully passing through the jury system to successful enforcement.

It should be noted that patent enforcement sometimes occur without a jury depending upon the parties’ preferences. Nonetheless, the summaries provided in jury instructions continue to provide valuable insight. There are many sources of jury instructions, including models from various Federal Courts and state and national legal associations. The professionals at Miller, Matthias & Hull LLP continuously inform their practice through reference to these and all other available resources in order to provide high-value IP to our clients. For more information on how we can help with your IP needs, please contact us at (312)977-9902.