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Magistrate Judge Mary Pat Thynge: Patent Misuse Tried to Judge

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The Federal Rules of Civil Procedure provide a trial judge with the ability to manage the presentation of a trial, particularly where complex matters are being tried before a jury. Patent misuse is a defense that courts have held can be tried to the jury or to the judge. Judge Thynge in Cordance Corporation v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. July 28, 2009), was faced with the question of whether Amazon’s defense of patent misuse should be tried before the jury or the bench. “[C]onsidering the Einsteinian analysis and Herculean task that Amazon is assigning to the jury by its proposed verdict form consisting of 14 pages with 20 questions containing over 160 subparts just to determine infringement and invalidity…” the Court chose not to “further burden and (potentially confuse) the jury with patent misuse” and therefore, that defense will be tried to the Court. Id. at 3.

In another portion of the opinion, the Court also found that plaintiff is only entitled to damages for infringement from the time the USPTO issued a certificate of correction for the patent-in-suit. Id. at 6. The corrections do not apply retroactively and prior to trial Cordance never articulated an infringement theory based on the uncorrected claims. Id. Thus, the damages period only runs from the date the PTO issued the certificate of correction.

Cordance Corporation v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. July 28, 2009).

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