Presumption of Validity may not be Argued to the Jury

Scott Daniels | April 3, 2014

In infringement actions with a pending parallel reexamination or review of the patent-in-issue, it is customary for trial judges to prohibit an accused infringer from informing the jury that the patent is under reexamination or review at the Patent Office.  Almost uniformly, judges believe that such information about parallel activity at the Patent Office would confuse or unduly prejudice the jury.  In an in limine ruling this Monday, Judge Larry Hicks followed this customary approach, but then went a step further.  Server Technology, Inc. v. American Power Conversion Corporation (3:06-cv-00698 (D. Nev.)). 

Judge Hicks granted the patent owner’s motion to “preclude any evidence, testimony, or argument concerning the reexamination proceedings of the ‘543 patent as unfairly prejudicial under Rule 403 of the Federal Rules of Evidence.”  The Judge first explained that the ‘543 patent reexamination proceeding is not final, and that a final decision will not occur until long after trial. As such, the status and holdings of the reexamination proceeding are of little relevance to this action.”  He then found “that the prejudicial effect of informing the jury of the reexamination proceeding greatly outweighs any probative value of the evidence.” Further, “allowing evidence of the reexamination proceeding would only serve to confuse the jury because both the standard of proof and claim construction applied by the patent office were different from the standards to be applied at trial.”

Judge Hicks then turned his attention to the statutory presumption of validity: “the court finds that it would be prejudicial to [the accused infringer] to allow argument and instruction on the ‘543 patent’s presumption of validity because the ‘rationale underlying the presumption of validity is much diminished where the evidence before the factfinder was not before the PTO during the examination process,’” citing Oracle America, Inc. v. Google Inc., 2012 U.S. Dist. LEXIS 688, *11-12 (N.D. Cal. 2012).  Because the prior art asserted by the accused infringer had not been before the patent examiner during the original prosecution, the Judge prohibited the patent owner from arguing the presumption of validity to the jury.

 The rationale for Judge Hicks’ prohibition might have been that it is unfair to allow one party, and only one party, to benefit from its version of what is happening at the Patent Office. 

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