Trial Judge Permits Limited use of Reexamination Results before Jury

Scott Daniels and Cindy Chen | February 19, 2013

Most trial judges do not allow the parties in patent infringement trials to disclose the results of a reexamination proceeding to the jury.  Judges worry that the jury might misunderstand the meaning of the reexamination, causing unjustified prejudice to one party or the other.  In Syntrix Biosystems, Inc., v. Illumina, Inc., 2013 U.S. Dist. LEXIS 20270 (February 14, 2013), however, Judge Benjamin Settle of the Western District of Washington determined that certain aspects of an earlier reexamination of the patent-in-suit could be presented to the jury, for two limited purposes.  Interestingly, in both instances, the disclosure of the reexamination to the jury would help the patent owner, not the accused infringer.

First, Judge Settle found that the jury could be told that the prior art asserted by the accused infringer had already submitted to, and reviewed by, the Patent Office during the reexamination.  The Judge believed that confirmation of the patentability of the claims by the PTO during reexamination could rightfully enhance the statutory presumption that the claims are valid over the prior art considered in the reexamination.

The best solution … is to introduce the concept of a reexamination proceeding in preliminary instruction number 2 (Federal Circuit Bar Assoc. Model Patent Jury Instructions § A.1 (2012)) and then, when the prior art at issue is introduced, the witness may testify as to whether it was considered during the original examination, the reexamination,  both or neither.  This solution ameliorates any concern or objection as to “super examiners,” the overworked patent office, and the fact that [the accused infringer] requested the ex parte examination, which are highly prejudicial topics.

Second, Judge Settle allowed the patent owner to provide evidence to the jury that the accused infringer was aware of the patent before the reexamination was requested.  The Judge explained that this information could be admitted by stipulation between the parties or by direct question to accused infringer’s witness.  Normally, it is the accused infringer who hopes to use the reexamination results to show that any possible infringement was not willful.  Here, though, the reexamination will be used by the patent owner to increase the period of time during which the infringement could be considered willful.

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