Monday, July 27, 2015

PTAB’s Decision to Institute Inter Partes Review of Asserted Patent Excluded

The court granted plaintiff's motion in limine to preclude evidence of the PTAB's decision to institute inter partes review of the patent-in-suit. "[Defendant] opposes the motion, maintaining that the inter partes proceedings are part of the patent prosecution history and probative of the relevance of peritoneal dialysis art. For the [PTAB] to institute an inter partes review, the petitioner need only show 'a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.' By contrast, patents are presumed valid in litigation, and a party challenging a patent’s validity must prove invalidity by clear and convincing evidence. Further, after the PTAB instituted inter partes review upon the petition of a non-party to this litigation, that case settled and the IPR proceedings were dismissed. The parties never fully briefed the issues and the PTAB never rendered a decision. Under these circumstances, the institution of the IPR proceeding based on a different standard and concluded without decision on the merits has little probative value. Moreover, the evidence would be confusing to the jury and prejudicial to [plaintiff] without a time-consuming explanation of the PTAB procedures."

Ivera Medical Corporation et al v. Hospira, Inc., 3-14-cv-01345 (CASD July 21, 2015, Order) (Huff, J.)

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