No Right to a Jury Trial on the Jurisdictional Issue of Standing
On an issue of first impression, the Federal Circuit, in DDB Technologies, LLC v. MLB Advanced Media, LP. (No. 2007-1211; February 13, 2008), affirms a district court's ruling that a jury trial is not required to determine the jurisdictional issue of standing. At the same time, however, the district court's dismissal of the case for lack of subject matter jurisdiction is overturned on the grounds that the plaintiff-appellant was not afforded an opportunity to obtain sufficient discovery on that issue.
Many years before this case began, one of the inventors worked for another company. At the start of that employment, the inventor entered into an agreement that included an automatic assignment of inventorship rights. Nevertheless, with the former employer's apparent knowledge, the inventor obtained a patent on an invention that was arguably outside the scope of the former employer's business. After the inventor left his former employer, he assigned his patent to DDB Technologies and filed suit against defendant-appellee (MLBAM). As discovery came to a close, MLBAM managed to secure from the inventor's former employer a retroactive license to practice the asserted patent. MLBAM then moved to dismiss the case for lack of subject matter jurisdiction. The plaintiff-inventor requested additional jurisdictional discovery on the question of whether the invention claimed by the asserted patent was related to the former employer's business. The district court denied the plaintiff's request for jurisdictional discovery and ruled on the existing evidence -- without a jury trial -- that the plaintiff lacked standing to assert the patent against MLBAM.
The Federal Circuit affirmed the district court's ruling that a jury was not necessary in this case to determine standing, since the "degree of intertwinement of jurisdictional facts and facts underlying the substantive claim" are not sufficiently "intertwined" as to require a jury. But because the inventor's employment agreement was deemed ambiguous as to whether it could have included an invention that related to the company's business, the Federal Circuit overturned the district court's dismissal and remanded the case for further action after the necessary discovery is obtained. Judge Newman dissented from the panel decision on several aspects of law, including the question of whether the issue of standing can be decided without a jury at all.
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