The Right to a Jury Trial on Legal Issues Should Not Be Lost to Prior Determination of Equitable Issues

Shum v. Intel Corporation, [2006-1249](August 24, 2007)[LOURIE, Newman, Friedman] The Federal Circuit found that the district court erred in conducting a bench trial on inventorship prior to a jury trial on state law claims.
SIGNIFICANCE: 1. Only under the most imperative circumstances will the right to a jury trial as to legal issues be lost to the prior determination of equitable issues. 2. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.
BRIEF: Shum and Verdiell were partners in a company the day after dissolving the company Verdiell filed a patent application assigned to a company he formed prior to the dissolution, later filed several others, and eventually sold out to Intel for $409 million. When Shum found out about these transactions, Shum sued. The district court held a bench trial on Shum's claim to correct inventorship, and found that Shum failed to meet his burden of proving he was an inventor. The court then granted summary judgment against Shum on his state law claims. Citing Beacon Theaters, the Federal Circuit said that only under the most imperative circumstances can the right to a jury trial of legal issues be lost through prior determination of equitable claims. The Federal Circuit agreed with Shum that the case involved both legal and equitable claims, and that he was improperly denied a jury trial on the facts underlying his state law claims. The Federal Circuit noted that conception is the touchstone of inventorship, and each joint inventor must generally contribute to the conception of the invention. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. To prove inventorship, Shum was required to show conception. Similarly to prove his state law claims, Shum had to prove false statements about inventorship by Verdiell.