Use of Reexamination Results in Parallel District Court Trials

Scott Daniels | September 14, 2011

The extent to which a litigant may use results from a parallel reexamination was a major issue in Monday’s decision by Magistrate Judge Joseph Spero in Volterra Semiconductor v. Primarion in the Northern District of California (2011 U.S. Dist. LEXIS 102295).  After a three-week trial in May, the jury determined that Defendant Primarion had infringed Plaintiff Volterra’s patent claims for certain “flip-chip” semiconductor structures.  Primarion then moved for judgment as a matter of law and for a new trial, asserting inter alia that Judge Spero had given inconsistent treatment to the results of a reexamination of the patent-in-suit. 

First, Primarion argued that Judge Spero had erred when he allowed Volterra to introduce at trial evidence of the PTO’s decision confirming the validity of the patents, but at the same time precluding Primarion from introducing evidence that the PTO had construed the asserted claims more narrowly than the Court did in its claim construction.

Judge Spero disagreed, citing Federal Circuit authority for the proposition that final determinations by the PTO must be considered, particularly when the challenge in the reexamination proceeding was based on the same prior art as is at issue in the litigation. Accordingly, Volterra was entitled to introduce evidence that the PTO upheld the claims of the patents over the same prior art relied upon by Primarion at trial.  The Judge added, though, that neither a court nor a jury may “look behind the PTO’s decision to speculate about the examiner’s understanding of the claims or reasoning.”  The Judge elaborated: “[b]ecause the examiner is not required to set forth on the record the claim constructions used in making final determinations on validity — and did not do so in this case – Defendants’ position that the PTO relied on narrower constructions than did the Court is speculative and inappropriate for presentation to the jury.”

Second, Primarion complained that Judge Spero had erred by highlighting the reexamination in its instructions to the jury, telling it that it “must consider the fact that the United States Patent and Trademark Office, on reexamination, has found that the asserted claims are valid,” but at the same time refusing to instruct the jury that the material facts before the Patent Office during the reexamination were different from those put before the jury, citing the Supreme Court decision in Microsoft v. i4i Ltd.

Again, Judge Spero was not persuaded.  The Judge stated that final determinations by the PTO must be considered when the challenge in the reexamination proceeding was based on the same prior art as is at issue in the litigation. The Microsoft case, he explained, was distinguishable from the present case.  There, the Supreme Court had concluded that the clear and convincing standard applies to the defense of invalidity, even where the prior art at issue was not presented to the PTO in the reexamination.  Still, the Supreme Court noted that the burden of establishing invalidity by clear and convincing evidence might be lighter if the prior art at issue had not been considered by the PTO.

When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence.

In this case, on the other hand, all the prior art at issue in this litigation was also before the PTO.  Because the PTO had the opportunity to review the same prior art as was at issue in this litigation, Judge Spero found that there was no error in declining to give the instruction with respect to the reexamination requested by Primarion.

Judge Spero therefore denied Primarion’s motions.

 

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