Issues Triable by Jury in Patent Litigation, As of 2010

Issues triable by jury in patent litigation, as of 2010, provided there is enough evidence to survive summary judgment:

1. Literal infringement [direct and indirect]

2. Infringement under doctrine of equivalents

3. Damages (lost profits and reasonable royalty)

4. Willfulness of infringement

5. Invention date (where relevant)

6. Anticipation

7. Obviousness

8. Public use or on sale

9. Prior invention by another in the U.S.

10. Adequacy of specification (written description)

11. License (other than by estoppel)

12. Best mode

Issues decided by the judge:

1. Claim scope

2. All issues in ANDA infringement cases

3. Amount of enhancement of damages, where willfulness has been found by the jury 4. Inequitable conduct

5. Error to support reissue

6. Double patenting (same invention type; obvious variant type)

7. Exceptional case (attorney’s fees)

8. Injunctive relief

9. Indefiniteness

10. Enablement

11. Laches and equitable estoppel

12. Assignor estoppel

13. Prosecution laches

14. Time limitation on damages

15. Failure-to-mark limitation on damages [??]

16. Exhaustion [??]

17. Preclusions (claim and issue)