Recent cases show that courts are typically refusing to permit an accused infringer to present to a jury evidence of a non-final pending reexamination proceeding.1 Staying true to this trend, the district court in Presidio Components Inc. v. American Technical Ceramics Corp., 2009 WL 3822694, *1-*3 (S.D. Cal. Nov. 13, 2009), granted a patentee's motion in limine to exclude all evidence of a PTO reexamination proceeding as the court found that admitting the evidence would unduly prejudice the patentee under F.R.E. 403.2

Trying to avoid the pitfalls other accused infringers encountered when trying to offer evidence of a pending reexamination to rebut the presumption of validity, the accused infringer in Presidio argued that the evidence of the pending reexamination proceedings had relevance to issues in the case beyond the validity of the patent, including inequitable conduct and willful infringement. Specifically, the accused infringer argued that the grant of the reexamination requests provided probative evidence that the nine prior art references forming the basis of the reexaminations were non-cumulative to the prior art considered during the original prosecution. The accused infringer also argued that the PTO's grant of the reexamination requests provided probative evidence of the importance of the prior art references to a reasonable examiner, i.e., it provided evidence showing the materiality of the prior art reference.3 The accused infringer additionally contended that "the specific USPTO's determinations are also highly probative on the evaluation of the relevant Graham obviousness factors and regarding willfulness."

Rejecting these arguments, the district court agreed with the patentee that "the grant by the examiner of a request for reexamination is not probative of unpatentability." Id. at *2. The district court concluded that "because the reexamination proceedings before the USPTO are still incomplete and based solely on the evidence provided by [the accused infringer] in its replacement request for reexamination, there is very little probative value to the grant of reexamination." Id. The court further ruled that "even if the reexamination proceedings are somehow relevant on the issues of obviousness or willfulness, they are nevertheless unfairly prejudicial," and their admission has "great" potential for jury confusion. Id. While granting the motion in limine, the district court noted that its ruling did not preclude the accused infringer "from arguing to the jury that the nine references discussed by the USPTO in its grant of reexamination were non-cumulative or important to a reasonable examiner. ATC [the accused infringer] just has to do it based on separate and independent evidence, rather than on the grant of reexamination itself." Id. at *3.

In an interesting aspect of the opinion, the district court further noted that it had previously granted the accused infringer's motion in limine to exclude from the trial "any reference to the 'presumption of validity.'" Id. at *2 n.1.4 The court concluded that this ruling further supported excluding the evidence of the non-final reexamination proceedings. It explained that "[w]ith any reference of the 'presumption of validity' excluded, allowing the jury to hear about incomplete USPTO proceedings will be unfairly prejudicial to [the patentee], and could potentially confuse the jury as to who has what burden throughout the trial." Id.

Hence, Presidio may signal a balance future courts will strike when faced with the question of whether to admit evidence of a non-final reexamination proceeding. The balance being to exclude the evidence of the reexamination proceedings while also prohibiting the patentee from mentioning to the jury the "presumption of validity." Its doubtful accused infringers will find this compromise totally satisfying as, absent a change in the current law, they will continue to have to prove invalidity by the "clear and convincing" evidentiary standard.5

The foregoing first appeared in the December 2009 issue of Patent Happenings available at www.PatentHappenings.com. Other case summaries from that issue include:

  • Eastern District of Virginia imposes tougher requirements for a patentee to obtain a preliminary injunction by requiring the patentee to make a "clear showing" of entitlement to relief
  • Eastern District of Texas now applying a more main-stream view on transferring patent infringement actions
  • Tafas saga concludes, but Federal Circuit may have raised roadblocks for future litigants to obtain vacatur as part of settling a patent litigation
  • Federal Circuit rules that unclaimed effectiveness level could not save method claim from a finding of anticipation

About the Author

Robert A. Matthews, Jr. provides patent-law consulting services to corporate counsel and trial counsel. Specifically, he helps counsel analyze and brief the myriad of substantive and procedural legal issues arising in patent infringement litigations. Matthews authors the Annotated Patent Digest, an eight-volume patent treatise published by West and available on Westlaw, the Patent Jury Instruction Handbook, and the monthly newsletter Patent Happenings®. Matthews has assisted clients with patent matters before the U.S. Supreme Court (KSR and Bilski), the Federal Circuit, the ITC and numerous federal district courts. Further information on the patent-law consulting services Matthews offers, plus a collection of patent-litigation resources, can be found at www.MatthewsPatentLaw.com.

Footnotes

1.See generally, See Robert A. Matthews, Jr., Annotated Patent Digest § 25:104.50 Admissibility of Pending Reexamination Proceedings in Infringement Trial [hereinafter APD]; Patent Happenings, Sept. 2009 at pp.8-9.

2.See generally, APD § 44:89 General Aspects of Rule 403.

3.See generally, APD § 27:54 Treatment of Reference in Subsequent Proceedings.

4. See generally, APD § 15:31 Jury Instruction on Presumption (collecting cases where courts have refused to give an instruction on the presumption of validity).

5. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258-59 (Fed. Cir. 2004) (district court can refuse to give an instruction on the presumption of validity so long as it has the jury apply the "clear and convincing" evidentiary burden).

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