United States: Can Evidence Of Noninstitution Of An IPR Be Introduced In District Court? Yes And No

Last Updated: January 19 2018
Article by Douglas H. Pearson

With institution rates of IPR petitions continuing to slide, and with district courts determining (depending on narrow or broad readings of the Shaw case) how estoppel may or may not apply in district court to noninstituted IPR grounds, a natural question is whether evidence of the fact of the noninstitution itself can by introduced by patent owners in district court to push back against invalidity challenges.

The answer may be yes or no or something in between depending on how the district court evaluates the balancing under Federal Rule of Evidence 403. Rule 403 states, "The court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence." While not intended to be comprehensive, several cases illustrating different outcomes are discussed briefly below. As reflected below, district courts have broad discretion in applying Rule 403, and decisions on exclusion or admission of the fact of noninstitution are highly fact specific. As a result, different courts could come to different conclusions on relatively similar facts.

Exclusion of Evidence of Noninstitution of IPR

In determining that evidence of noninstitution of several IPRs by the PTAB should be excluded from the district court trial, the Court in Milwaukee Electric Tool Corporation v. Snap-On Incorporated, 2017 WL 4570787 (E.D. Wis., Oct. 12, 2017) was concerned about both the potential for jury confusion and the potential time that would be consumed if introduction of evidence of noninstitution were permitted. For instance, the Court noted that, while the Plaintiff (and patent owner) wanted to argue to the jury that certain prior art was used in grounds petitioned but not instituted (in order to argue the art was inferior), the Court believed that doing so would be prejudicial since institution of IPRs can be denied for reasons other than a merits review. 2017 WL 4570787 at *6. Regarding the consumption of time, the Court noted, "Introducing the jury to the several series of IPR proceedings at issue here, explaining to them the evidence considered and the role of the PTAB, and discussing the outcomes of those proceedings, will consume enormous amounts of time." Id. at *7. The Court likewise excluded evidence of instituted IPRs for patents at issue, concluding that IPR estoppel provisions would require the prior art used at trial to be different than that used in the (instituted) IPRs, and noting that the IPRs therefore "would only ever be relevant for the broad notion that patents are resilient, but such a proposition is misleading and unhelpful." Id. at *7. In concluding that it was therefore obligated under Rule 403 to exclude evidence related to the IPR proceedings, the Court nonetheless permitted the parties to make other stipulations and that indicated that they could use, as evidence, statements made or proffered during the IPRs as long as they did so without referencing the proceedings or the outcomes. Id.

In Finjan, Inc. v. Sophos, Inc., 2016 WL 4560071 (N.C. Cal. 2016), the Court acknowledged that evidence of noninstitution of several IPRs may have some probative value, but concluded that the probative value was far outweighed by likely jury confusion under Rule 403. The Defendant (and IPR petitioner) pointed out that some petitions were brought by other entities, two denials for review were based on procedural grounds, and none of the reviews involved the same prior art at issue in the district court case. 2016 WL 4560071 at *14. In excluding the evidence of noninstitution of the IPRs, the Court stated its belief that "it would take a significant amount of time and effort to adequately explain the relevance and limitations of the PTO proceedings to the jury" and that "there is a substantial risk that the jury will improperly substitute its own judgment for the PTO decisions." Id.

In ZiiLabs Inc. v. Samsung Elecs. Col. Ltd. (E.D. Tex. Oct. 28, 2015), the Court granted the Defendant's motion to preclude the Plaintiff (and patent owner) ZiiLabs from introducing evidence of the PTAB's denial to institute two IPRs for the asserted patent brought by a third-party competitor because the danger of unfair prejudice to the Defendant Samsung substantially outweighed the probative value of the PTAB's noninstitution decision. The Court noted that the Defendant was not a party to the IPR petitions and had not presented arguments to the PTAB in those petitions. Slip. Op. at *6-7. The Court maintained some flexibility, however, in stating, "This order does not preclude ZiiLabs from approaching the bench at trial to seek permission to argue, introduce evidence, or elicit testimony on the PTAB's September 17 decision in response to argument, evidence, or testimony from Samsung stating the prior art references considered in the PTAB's decision have never been considered by the PTO." Id. at *7.

In Wisconsin Alumni Research Foundation v. Apple, Inc., 135 F.Supp.3d 865 (W.D. Wis. 2015), the Court granted Defendant Apple's motion to preclude Plaintiff WARF from introducing evidence of the PTAB's denial of Apple's IPR petition for the asserted patent under Rule 403. The Court noted that, while the PTO's consideration of prior art by an Examiner during prosecution can be pertinent to the weight of that prior art offered as evidence during an invalidity challenge in court, the Court noted that here, the "PTAB did not conclude that the patent was either 'valid' or 'invalid," and that "there was no explicit, or even implicit, decision on the validity of the patent as there is during the initial prosecution of the patent." 135 F.Supp.3d at 873. The Court also stated:

The IPR proceeding is subject to different standards, purposes and outcomes than both the original prosecution and this court proceeding. Not only is PTAB's decision not binding in these proceedings, the law is not even clear on whether and how much the PTAB's decision denying Apple's request for review should affect the weight given to the two prior art references presented during the IPR proceedings. Although the court could attempt to provide instructions to the jury regarding the purpose and current standards applicable to the IPR proceeding, it would be difficult for a jury to understand, much less apply, the nuanced differences between the various proceedings and to determine how much weight should be given to PTAB's decision, if any. Instead, there is a great risk that the jury would conclude, incorrectly, that the Patent Office has twice held the [] patent is nonobvious over prior art. Such a conclusion would likely unfairly prejudice the jury against Apple before being asked to decide the same question.

Id. at 874-875.

In Interdigital Communications Inc., et al. v. Nokia Corporation, et al., 2014 WL 8104167 (D. Del. 2014), the Court likewise excluded evidence of noninstitution of an IPR petition for the asserted patent. The Court explained that the denial of the IPR petition was not a decision on the merits, and was more "akin to a ruling on a preliminary injunction, where the merits are assessed with less than a full record and with less than a full adversarial proceeding." 2014 WL 8104167 at 1. The Court also noted that the Defendants in the case were not a party to the IPR petition. Id. Given its view that the PTAB's denial of the IPR petition was of marginal relevance, the Court found that "the probative value is greatly outweighed by the expenditure of time that would be required to give the jury the full context necessary to fairly evaluate the evidence" and that "because of the complexity involved in giving the full context, there would also be a significant risk of confusion of the issues." Id. See also Interdigital Communications Inc., et al. v. Nokia Corporation, et al., 2014 WL 12465431 (regarding the Court's earlier conditional granting of the same motion to exclude for substantially similar reasons).

Admission of Evidence of Noninstitution of IPR

In StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., et al., 2015 WL 3824208, (M.D. Fla. 2015), on the other hand, the Court permitted introduction of evidence that the PTAB denied the Defendants' IPR petition and CBM petition for the asserted patent. The Court was unconvinced by arguments that "these procedures 'have distinctly different standards, parties, purposes, and outcomes compared to civil litigation'" and that "'different results between those forums and the current forum may be entirely reasonable.'" 2015 WL 3824208 at *8 (internal citations omitted). The Plaintiff noted, however, that the IPR petition in this instance was submitted by one of the Defendants. Id. at *9. The Court simply stated that it "can and will instruct the jury on the appropriate law to apply to this case and can, if requested, further instruct the jury that different standards apply to these various proceedings. Id.

In Universal Electronics, Inc. v. Universal Remote Control, Inc., 2014 WL 8096334 (C.D. Cal. 2014), the Court likewise permitted introduction of evidence that the PTAB denied the Defendant's IPR petition for the asserted patent. While the Defendant argued that introducing evidence of the IPR noninstitution would be irrelevant to the court proceeding because of the different applicable legal standards and would increase complexity and confuse the jury, the Court disagreed simply stating, "Any potential confusion can be addressed by appropriate jury instructions on the standard of proof applicable to patent invalidity defenses and counterclaims." 2014 WL 8096334 at *7.

Takeaway: District courts have broad discretion in applying Rule 403, and decisions on exclusion or admission of the fact of noninstitution of an IPR are highly fact specific. The factors considered in weighing probative value against unfair prejudice may typically include: whether the defendant was the IPR petitioner; how denials of institutions of IPRs are not actual decisions on the merits; how denials of institution can be based on procedural grounds; the differences in standards between PTAB institution decisions and district court adjudication of validity on the merits (and the associated potential for jury confusion); and the lengthy time commitment required to explain the complexities to the jury. But courts do not necessarily weigh the factors in the same way, and different courts could come to different conclusions on relatively similar facts.

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.

In association with
Related Topics
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