January 11, 2022 - Federal Circuit Insights

A CVSG on Claim Construction Procedures and Jury Trial Rights

As Federal Circuitry readers likely know, the Supreme Court occasionally invites the Solicitor General to file a brief expressing the views of the United States in a case where the Court is considering granting certiorari. That action is commonly referred to as a CVSG—Call for the Views of the Solicitor General. (Check out our earlier post here where we discuss the CVSG process in more detail.)

We’re still waiting for the CVSG briefs in two patent-related cases out of the Federal Circuit: American Axle v. Neapco Holdings, a Section 101 case involving an industrial manufacturing process, and PersonalWeb Technologies v. Patreon, a case about the Kessler preclusion doctrine. That means neither of those cases will be considered in time to be argued this Term. But in the meantime, yesterday the Supreme Court CVSGed another patent case from the Federal Circuit: Olaf Sööt Design v. Daktronics. If the Supreme Court grants review, the case could have important implications for claim-construction procedures in district court and the Federal Circuit’s review of patent-infringement jury verdicts.

In Olaf Sööt, Olaf Sööt Design (OSD) sued Daktronics for infringement of OSD’s patent on a “winch” for raising and lowering equipment in theatrical productions. During claim construction, the district court determined that no construction was necessary for a certain limitation involving a “hollow hub.” At trial, the parties disputed the scope of that limitation, and the jury found infringement. Daktronics appealed.

The Federal Circuit reversed in an opinion authored by then-Chief Judge Prost and joined by Judges Lourie and Reyna. The Federal Circuit relied on its earlier decision in O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008), in which it held that “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it”; otherwise a legal question has been “improperly submitted to the jury.” The Federal Circuit in Olaf Sööt concluded that the district court’s failure to resolve the claim-construction dispute before trial ran afoul of O2 Micro. The Federal Circuit then construed the disputed limitation itself and held that, under the proper construction, the accused product did not infringe as a matter of law.

OSD petitioned for certiorari in the Supreme Court, presenting the following question:

Whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict based on a sua sponte new claim construction of a term the district court concluded was not a term of art and construed to have its plain and ordinary meaning; where the Federal Circuit’s sua sponte claim construction essentially recasts a specific infringement factual question, previously decided by the jury, as a claim construction issue, to be decided de novo by the appellate court.

As noted above, in its January 10, 2022 order list, the Supreme Court invited the Solicitor General to file a brief on whether the Court should grant review of that question. There is no formal deadline for the CVSG brief. But based on past practice, the brief could come this spring, in time for the Supreme Court to consider the petition before it recesses at the end of June. Or it could be filed over the summer; in that case, the petition would be considered at the Court’s long summer conference in September.