By Bernard Chao1
Most attorneys don’t spend a lot of time thinking about how to draft a proposed jury verdict form. However, a recent paper written by one of my students, Vanessa Otero, reminded me how important this document can be. A well thought out jury verdict form has the potential to prevent a lot of wasted time and effort on behalf of both the patentee and the defendant.
Otero’s paper entitled “How Much Is Really at Stake? Damages Statutes Collide in Multiple-IP Litigation” will be published in in the Journal of the Patent and Trademark Office Society. The paper uses the Apple v. Samsung litigation to discuss the complexities that arise in calculating damages when the defendant’s products are accused of infringing different types of intellectual property. As many us know by now, Samsung was found to infringe Apple’s utility patents, design patents, and trade dress. But despite all these theories, the verdict form was surprisingly simple with respect to damages. The jury was just asked to determine the total damages due for each infringing product. Otero’s paper argues that in the future, jury verdict forms should ask juries to allocate damages for each different type of infringement. This should help parties avoid retrying damages in the event that post-trial motions or appeals alter the verdict. It will also help judges determine whether to enhance or reduce damages awards. Although Otero does not suggest that a more detailed jury verdict would have prevented the second damages trial in Apple v. Samsung, she does argue that it would have avoided some of the post-trial disputes.
Of course most cases are not as complicated as the Apple v. Samsung litigation and don’t involve different types of intellectual property. But lawsuits involving multiple patents are fairly common. After thinking about Otero’s paper, I wondered what patent jury verdict forms look like in cases with multiple patents. I looked at a few such cases on Lex Machina, a database that crawls PACER for information on all district court patent cases, and contacted a few patent litigators I know. In this very small and unscientific sample, I found both verdict forms that did and did not ask the jury to break out damages on a per patent basis. Furthermore, based on my conversations, I got the impression that the litigators did not give a lot of thought to this particular detail of the verdict form. But perhaps they should.
My belief is that Otero’s insight makes sense for almost all cases that involve more than one patent. Let’s just take the easiest example. Assume the patentee prevailed at trial on two patents and was awarded $5,000,000. If the verdict is appealed and the Federal Circuit reverses on one of the patents and affirms on the other, the parties will be forced to retry damages. Presumably, there will no way for the courts to determine how much of the $5,000,000 should be attributed to the patent that was affirmed. Since there is no reason to believe that a second damages trial would favor either party, such a trial does no one any good. The parties could have avoided the additional expense by simply asking the jury to break out damages on a per patent basis.
Now there may well be countervailing interests. I know that many plaintiffs prefer simple jury verdict forms so that defendants can’t pick a part the verdict. But breaking out damages for each patent should not unduly open up a verdict to challenge. Asking the jury to break down damages on a per patent basis just may be one of those rare suggestions that saves everyone money!
1Assistant Professor the University of Denver Strum College of Law.