Evidence of IPR not Admissible in Validity or Damages Phase, But May be Admissible for Willfulness

The court partially granted defendants' motion to reconsider an earlier order on plaintiff's motion in limine to preclude defendants from introducing evidence of inter partes review. "[D]efendants expressed their view that . . . evidence as to the pending inter partes review proceedings is relevant and admissible to rebut the presumption of validity. . . . Although defendants’ position is not without merit, I am persuaded that, because of the different standards, procedures and presumptions applicable to IPR proceedings, evidence concerning the proceedings is irrelevant and highly prejudicial to the jury’s determination of the validity of the patents. For this same reason, defendants may not rely on evidence of the IPR proceedings during the damages phase to argue that the patents are entitled to diminished value. That said, defendants are free to refer to the board’s findings and argue their weight when making any arguments outside the jury’s presence on the objective prong of the willfulness test. In addition, should the question of subjective willfulness be presented to the jury, defendants may introduce the board’s decision as evidence showing their good faith belief in invalidity. The parties agree that in the event this occurs, the jury should be given a curative instruction regarding the proper weight to be given the IPR evidence."

Ultratec, Inc. et al v. Sorenson Communications, Inc. et al, 3-13-cv-00346 (WIWD October 8, 2014, Order) (Crabb, J.)