In the 2006 case of Agfa Corp. v. Creo Products Inc., the Federal Circuit took away the right to demand a jury trial on the issue of inequitable conduct. 1 Inequitable conduct is a defense to patent infringement based on the doctrine of “unclean hands”2 and occurs when a party knowingly fails to submit prior art to the United States Patent and Trademark Office (“USPTO”). To prove inequitable conduct, a party must show by clear and convincing evidence that (1) the withheld prior art is “material” such that the USPTO would not have allowed one of the claims in the patent application if it had been aware of the undisclosed prior art, and (2) that the patent applicant knowingly withheld the material prior art from the USPTO with an intent to deceive.3
Though the line between what constitutes a question of fact and what constitutes a question of law is often blurred, courts have long held that intent is a question of fact to be decided by a jury.4 Juries decide intent because it involves analyzing the subjective knowledge within one’s head to determine the credibility of a witness. In cases involving inequitable conduct, witness credibility is critical to finding intent in cases involving inequitable conduct.5 For example, the patent applicant’s personal testimony may be crucial to finding whether the applicant intended to deceive the USPTO by not disclosing prior art, and expert testimony from patent office experts or outside experts offering technical declarations may also be involved. And the weight given to these types of witness testimony will be based on the believability or persuasiveness of the testimony.6 A judge is in no better position that a jury to determine whether the applicant or expert is lying or telling the truth based on factors such as facial expressions, tone of voice, aversion of gaze, and general nervousness.7
If credibility determinations have exclusively been the role of the jury,8 then why are judges insisting on usurping the jury’s role in weighing witness testimony? One reason could be related to the Lake Wobegone effect, a natural tendency to overestimate one’s own capabilities.9 A judge may in good conscience believe that he will get it right and the jury will get it wrong. But studies show this to be inaccurate, at least as it relates to probability data.10 Research studies suggest that while jurors often make poor inferences from probability data, judges are no better. After performing a series of case studies, the National Research Council demonstrated that judges frequently misinterpret statistical information.11 These studies further suggest that judges are not superior to jurors in assessing scientific evidence; there is simply “no evidence that juries are incompetent to evaluate expert testimony.” 12 As such, the ruling for Agfa Corp. v. Creo Products, Inc. should be overturned, and the right to demand a jury trial in cases of inequitable conduct should be reinstated.