On June 23, 2014, Ivera Medical Corporation and Becton, Dickinson, and Company (plaintiffs) alleged infringement against Hospira, Inc. (defendant). Prior to trial, the parties exchanged motions in limine. In granting and denying in part the parties’ motions, the court granted plaintiffs’ motion in limine regarding inter partes review proceedings. Plaintiff’s argued that defendant should not be allowed to submit evidence or argument regarding institution of the inter partes review of the asserted patent. Defendant opposed the motion arguing that the inter partes proceedings were part of the patent prosecution history and probative of the relevance of prior art.

In granting plaintiff’s motion in limine, the court relied on the difference in standards – “a reasonable likelihood that the petitioner would prevail” contrasted with the “clear and convincing” standard. The court also noted that after the Patent Trial and Appeal Board (PTAB) instituted inter partes review, the non-party petitioner settled and the inter partes review proceeding was dismissed, without the PTAB rendering a decision. The court further noted that the evidence would be confusing to the jury and prejudicial to plaintiffs without a “time-consuming explanation of the PTAB procedures.” “Telling the jury that the patent has been called into question by the Patent Office may influence the jury’s application of the presumption of validity and prejudice [plaintiff].” The court concluded that the prejudicial potential of the evidence substantially outweighed any probative value.

Ivera Medical Corporation et al v. Hospira, Inc., 3-14-cv-01345 (S.D. Cal. July 21, 2015, Order) (Huff, J.).