Lockwood, In re

• Decision Date: 11 January 1995
• Docket Number: No. 394,394
• Parties: , 33 U.S.P.Q.2d 1406, 33 U.S.P.Q.2d 1907 In re Lawrence B. LOCKWOOD, Petitioner. Misc.
• Court: U.S. Court of Appeals — Federal Circuit

Page 966

50 F.3d 966

30 U.S.P.Q.2d 1292, 33 U.S.P.Q.2d 1406,

33 U.S.P.Q.2d 1907

In re Lawrence B. LOCKWOOD, Petitioner.

Misc. No. 394.

United States Court of Appeals,

Federal Circuit.

Jan. 11, 1995.

Order Declining Suggestion for Rehearing In Banc Jan. 11, 1995.

Opinion Dissenting from Denial of

In Banc Rehearing filed by Circuit

Judge Nies Feb. 7, 1995.

Don W. Martens, Joseph R. Re and Paul A. Stewart, Knobbe, Martens, Olson & Bear, Newport Beach, CA, were on the Petition for Rehearing and Suggestion for Rehearing In Banc.

Robert M. Taylor, Jr., Lyon & Lyon, Casta Mesa, CA, was on the response to respondents Petition for Rehearing and Suggestion for Rehearing In Banc.

ON PETITION FOR REHEARING OF GRANT OF PETITION FOR WRIT OF MANDAMUS

Before MICHEL, Circuit Judge, BENNETT, Senior Circuit Judge, and LOURIE, Circuit Judge.

ORDER

MICHEL, Circuit Judge.

American Airlines, Inc. (American) petitions for rehearing of our nonprecedential March 11, 1994 order granting Lawrence B. Lockwood's petition for a writ of mandamus, wherein we directed the district court to reinstate Lockwood's jury demand in American's pending action for a declaration that Lockwood's two patents are invalid. Lockwood opposes rehearing.

American also moves for leave to file a reply, with the reply attached, and for a precedential order.

I. BACKGROUND

A. American's Declaratory Judgment Action

This case began when Lockwood filed a complaint against American alleging that American's computerized reservation system infringed Lockwood's two patents relating to self-service terminals and automatic ticket dispensing systems. Lockwood sought both damages and injunctive relief, and his jury demand was timely made. American raised a number of defenses, including the alleged invalidity of the two patents at issue; in addition, American counterclaimed for a declaration that its activities were noninfringing and, alternatively, that Lockwood's patents are invalid or unenforceable.

After the close of discovery, American moved for summary judgment that its computerized reservation system did not infringe the claims at issue in either of Lockwood's patents. The district court granted American's motion for summary judgment of non-infringement, after which it dismissed the infringement complaint ¹ and denied Lockwood's motion to certify its summary judgment decision for immediate appeal pursuant to Fed.R.Civ.P. 54(b). The district court held that, rather than permitting an interlocutory appeal of its judgment as to infringement, it would proceed to consideration of American's prayer for a declaration of patent invalidity, ² citing the Supreme Court's recent decision in Cardinal Chem. Co. v. Morton Int'l, Inc., --- U.S. ----, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993) (infringement and declaratory judgment actions joined).

Finally, on American's motion, the district court struck Lockwood's demand that the issue of validity be tried to a jury. The court concluded that "the remaining claims are equitable in nature [and] the plaintiff [Lockwood] is not entitled to a trial by jury as a matter of right."

B. Lockwood's Mandamus Petition

Following the district court's decision to strike, Lockwood petitioned this court for a writ of mandamus directing the district court to reinstate his jury demand. We issued the writ, reasoning that because "Lockwood's underlying claim for infringement and damages is the basis of the action at the district court" and "[t]he claim for infringement damages and any asserted defenses still exist in the case," Lockwood remained entitled to a jury trial on the factual questions relating to validity.

American presents two arguments in its petition for rehearing. American first argues that, because the district court dismissed Lockwood's claim for patent infringement damages, the only claim remaining is American's claim for a declaration of patent invalidity. As American rightly asserts, contrary to erroneous statements in our previous order, the district court will not adjudicate the issue of validity as a defense to an existing infringement claim. The infringement claim exists no more. Consequently, the particulars of Lockwood's dismissed claim can play no part in our determination whether he enjoys a Seventh Amendment right to a jury trial as to validity in American's action for a declaratory judgment. See, e.g., In re Evangelist, 760 F.2d 27, 32 (1st Cir.1985) (appellate court refused to consider dismissed claim in determining whether a jury demand should be met, even though the claim might ultimately be reinstated); Hildebrand v. Board of Trustees, 607 F.2d 705, 710 (6th Cir.1979) (court suggested that claim for damages that was dismissed on summary judgment should not be considered when determining party's asserted Seventh Amendment right to trial by jury). ³ We no longer rely on the misstatements of our previous order.

American further argues that its action for a declaratory judgment is entirely equitable in nature, and that Lockwood therefore enjoys no right to a jury trial under the Seventh Amendment in this case even as to patent validity. But American errs as much with this second argument as it hits the mark with its first. Accordingly, our disposition of Lockwood's petition remains the same, though our rationale differs. Because our original analysis was based upon a misunderstanding of the procedural posture of the case, we vacate our March 11, 1994 order and replace it with the analysis presented below.

II. DISCUSSION

A. Protection of the Right to a Jury By Mandamus

American argues that, as a threshold matter, Lockwood has failed to make the extraordinary showing required for mandamus. American maintains that we need not address Lockwood's Seventh Amendment claim at this time, asserting that the error of which Lockwood complains, if it occurred at all, can simply be reviewed on appeal after the entry of a final judgment in the case. While we must begin, as American suggests, with the familiar principle that "the remedy of mandamus is a drastic one, to be invoked only in extraordinary situations," Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 34, 101 S.Ct. 188, 190, 66 L.Ed.2d 193 (1980), we can pay no less heed to the Supreme Court's Seventh Amendment jurisprudence. As the Court, per Justice Sutherland, once stressed:

Maintenance of the jury as a fact-finding body is of such importance and occupies so firm a place in our history and jurisprudence that any seeming curtailment of the right to a jury trial should be scrutinized with the utmost care.

Dimick v. Schiedt, 293 U.S. 474, 486, 55 S.Ct. 296, 301, 79 L.Ed. 603 (1935). See also Jacob v. City of New York, 315 U.S. 752, 752-53, 62 S.Ct. 854, 854-55, 86 L.Ed. 1166 (1942) (Murphy, J.) ("The right of jury trial in civil cases at common law is a basic and fundamental feature of our system of federal jurisprudence which is protected by the Seventh Amendment. A right so fundamental and sacred to the citizen, whether guaranteed by the Constitution or provided by statute, should be jealously guarded by the courts."); Parsons v. Bedford, 28 U.S. (3 Pet.) 433, 446, 7 L.Ed. 732 (1830) (Story, J.) ("The trial by jury is justly dear to the American people. It has always been an object of deep interest and solicitude, and every encroachment upon it has been watched with great jealousy."). Accordingly, "the right to grant mandamus to require jury trial where it has been improperly denied is settled." Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 511, 79 S.Ct. 948, 957, 3 L.Ed.2d 988 (1959) (reversing circuit court's refusal to issue writ of mandamus reinstating petitioner's jury demand). As the Court observed in Dairy Queen, Inc. v. Wood, it is "the responsibility of the Federal Courts of Appeals to grant mandamus where necessary to protect the constitutional right to trial by jury." 369 U.S. 469, 472, 82 S.Ct. 894, 897, 8 L.Ed.2d 44 (1962).

The cases that American cites to the contrary, First National Bank v. Warren, 796 F.2d 999 (7th Cir.1986), and In re Don Hamilton Oil Co., 783 F.2d 151 (8th Cir.1986), are unavailing. In Hamilton, the Eighth Circuit declined to issue a writ of mandamus ordering a jury trial on the issue of back wages under the Fair Labor Standards Act, 29 U.S.C. Sec. 217 (1988). The court, in a brief per curiam opinion, noted that the three circuit courts to consider this question on the merits had held that an action based on section 217 entails no Seventh Amendment right to a jury trial. 783 F.2d at 151-52. In light of the decisions of the other circuits adverse to Hamilton's position, as well as what it termed "the questionable nature of the legal issue presented," id. at 152, the court denied Hamilton's petition without prejudice. Unlike the court in Hamilton, we are asked to evaluate the petitioner's right to a jury trial on the factual questions relating to patent validity, ⁴ a right that is protected by the Seventh Amendment when those questions arise in a paradigmatic patent infringement suit. Patlex Corp. v. Mossinghoff, 758 F.2d 594, 603, 225 USPQ 243, 250 (Fed.Cir.1985). The scant support Hamilton offers for American's position cannot stand against Beacon Theatres and Dairy Queen.

The Seventh Circuit's holding in First National offers American no more support than does Hamilton; in fact, it supports Lockwood. In First National, the court declined to issue a writ of mandamus ordering a jury trial on the issue of disgorgement in an action alleging unjust enrichment. The court undertook a detailed analysis of Beacon Theatres, Dairy Queen, and the cases cited therein, concluding that mandamus is an appropriate remedy for the wrongful denial of the right to a jury trial where (a) the legal and equitable claims to be tried rest on a common factual foundation, and (b) a prior judgment on the equitable claim(s) might foreclose the legal claim by issue or claim preclusion. 796 F.2d at 1002-04. Because there was "no possibility of issue or...