Non-Final Rejections in Reexamination Not Admissible in Jury Trial

Scott Daniels | August 14, 2009

The CAFC ruled today that non-final reexamination determinations are “of little relevance” to a jury’s consideration of the obviousness issue. Since the risk of the jury being “confused” by such determinations was high, the CAFC affirmed the trial judge’s exclusion of such a determination at trial.

In that case, Callaway had accused Acushnet of infringing a series of patents claiming golf balls. Acushnet replied by filing inter partes reexamination requests with the PTO, asserting that the patents were invalid over certain prior art.

At the time of the trial, the PTO had issued a non-final rejection of the claims as being obvious over the prior art. The accused infringer then asked to introduce the non-final rejection into evidence at trial, but the judge refused to admit it, finding that there would be undue prejudice to the patentee. The accused infringed on the same prior art at trial as in its reexamination requests.

The CAFC’s decision today also reversed the jury’s verdict of nonobviousness because that verdict had been inconsistent – it an independent claim to be non-obvious, but a claim that depended on it to be obvious. The CAFC therefore remanded the case to the trial court for it to conduct a new trial on the obviousness issue to all of the patents.

Interestingly, on July 31, the PTO made its obviousness rejection final in a 368-page Office Action.

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