Friday, October 9, 2015

Denial of Inter Partes Review of Patent-in-Suit Excluded Due to Potential Jury Confusion and Prejudice

The court granted defendant's motion in limine under FRE 403 to preclude plaintiff from presenting evidence that the PTAB denied defendant's petition for inter partes review of the patent-in-suit. "There appears to be no controlling Federal Circuit law on the admissibility of evidence from an IPR proceeding. . . . An IPR proceeding is not an examination by a patent examiner in which a decision is made about the scope and validity of a patent. It is an adjudicative proceeding during which PTAB, comprised of three administrative law judges, determine whether the challenger has shown 'a reasonable likelihood' that it will prevail on its challenges. Moreover, the prior art that can be considered by PTAB is more limited. . . . 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 [defendant'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."

Wisconsin Alumni Research Foundation v. Apple Inc., 3-14-cv-00062 (WIWD September 29, 2015, Order) (Conley, J.)

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