United States: Federal Circuit: No Right to a Jury Trial for Attorney's Fees Awarded in Patent Cases

In an August 10, 2017 opinion, AIA America, Inc. v. Avid Radiopharmaceuticals, a Federal Circuit panel held that 35 U.S.C. § 285 does not establish a right to a jury trial when attorney's fees are requested.1 The case began after AIA America, Inc. ("AIA") sued Avid Radiopharmaceuticals and The University of Pennsylvania (collectively, "Avid") for infringement of the patents-in-suit, which are "generally directed to research technologies stemming from the discovery of . . . a genetic mutation that is associated with early-onset familial Alzheimer's disease." In a prior ruling, the Federal Circuit affirmed the district court's finding that AIA lacked standing to assert the patents-in-suit and judgment was entered in favor of Avid. Afterwards, Avid requested attorney's fees. The district court allowed the submission of "extensive briefing, evidence, and declarations on the issue of fees" and held a hearing on the issue before awarding over $3.9 million in attorney's fees to Avid. AIA appealed, arguing that: (1) "the Seventh Amendment requires a jury trial to decide the facts forming the basis to award attorney's fees," (2) "the district court erred by making factual findings on issues that were not considered by a jury," and (3) due process was violated because AIA was denied "the opportunity to submit evidence regarding its intent, state of mind, or culpability." Disagreeing with AIA's arguments, the Federal Circuit affirmed the attorney's fee award.

First, AIA argued that the Seventh Amendment requires a jury trial to decide facts forming the basis for an attorney's fees award under § 285. The panel explained that "[t]he Seventh Amendment preserves the right to a jury trial for '[s]uits at common law,'" which refers to "suits in which [] legal rights and remedies were at issue, as opposed to equitable rights and remedies."2 Thus, "[a] legal remedy requires a jury trial on demand, while an equitable remedy does not implicate the right to a jury trial."3 To determine whether a grant of attorney's fees implicates "legal rights and remedies," the panel applied the two-step inquiry set out in Tull v. United States, 481 U.S. 412 (1987).

Step one of the Tull inquiry "compare[s] the statutory action to 18th-century actions brought in the courts of England prior to the merger of the courts of law and equity."4 Applying this step, the panel found that English courts traditionally allowed judges-not juries-to determine attorney's fees. Accordingly, step one of the Tull inquiry "implies that attorney's fees generally do not involve legal rights."5

The panel then turned to step two of the Tull inquiry, which "examine[s] the remedy sought [to] determine whether it is legal or equitable in nature."6 While noting that attorney's fees may constitute legal remedies in certain circumstances (i.e., when fees "are themselves part of the merits of an action"), the panel found that attorney's fees under § 285 are an equitable remedy. The panel reasoned that § 285, like some other statutory provisions awarding attorney's fees, provides an equitable remedy because it "raise[s] 'issues collateral to and separate from the decision on the on the merits.'"7 Thus, the panel decided that "[b]oth steps of the Tull test reflect that requests for attorney's fees under § 285 are equitable and do not invoke the Seventh Amendment right to a jury trial." Accordingly, "AIA's right to a jury trial under the Seventh Amendment was not violated."

Second, AIA argued that the attorney's fees award was improper because the district court made factual findings on issues that were not considered by a jury. Specifically, AIA argued that two Federal Circuit cases "precluded the district court from making factual determinations about AIA's state of mind, intent, and culpability since those questions were never presented to the jury." The panel, though, found that these cases stood for "the straight-forward proposition that after a trial on legal issues, a court may not make findings contrary to or inconsistent with the resolution of any issues necessarily and actually decided by the jury."8 "Thus, the district court was not foreclosed from making additional findings about AIA's state of mind, intent, and culpability" when determining whether to award attorney's fees.

Finally, AIA argued that the district court violated AIA's due process rights by failing to give it opportunity to submit evidence regarding its state of mind, intent, or culpability. The panel disagreed, noting that "the district court provided both parties the opportunity to fully brief the motion seeking attorney's fees and allowed both parties to submit any additional evidence and affidavits." Additionally, the panel stated that "[t]o the extent AIA believes its due process was violated because the district court did not allow it to present evidence regarding intent to a jury, AIA was not entitled to a jury trial on the issue of attorney's fees."9 Thus, there were no due process violations regarding the district court's granting of attorney's fees.

In sum, under the facts of this case, the panel held that "[b]ecause the Seventh Amendment right to a jury trial does not apply to requests for attorney's fees under § 285 of the Patent Act, the district court did not err by making factual findings not foreclosed by the jury's [prior] verdict."


1 AIA America, Inc. v. Avid Radiopharmaceuticals, No. 16-2647, Slip Op. at 2 (Fed. Cir. Aug. 10, 2017).

2 Slip Op. at 5 (citing U.S. Const. amend. VII; Granfinanciera, S.A. v. Nordberg, 492 U.S. 33, 41 (1989)).

3 Slip Op. at 5 (citing Curtis v. Loether, 415 U.S. 189, 196 n.11 (1974)).

4 Slip Op. at 5 (quoting Tull, 481 U.S. at 417).

5 Slip Op. at 6.

6 Id. at 5 (quoting Tull, 481 U.S. at 417-18).

7 Slip Op. at 6 (quoting Budinich v. Becton Dickinson & Co., 486 U.S. 196, 200 (1988)).

8 Slip Op. at 7 (citations omitted).

9 Id. at 8.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions