A large portion of all patents involved in post grant proceedings are also involved in litigation. When it comes to the courtroom, what use can trial counsel make of certain rulings from the PTAB? Two recent cases have shed some light on this question. First, in the District of Delaware, the patentee argued that the PTAB’s decision not to institute an IPR should be admitted as evidence tending to prove that the patent was not invalid. Although, as the Court acknowledged, the PTAB’s decision is part of the file history, the court concluded that the PTAB’s decision—“made by lawyers who are not persons of ordinary skill in the art”—was of marginal relevance and should be excluded under FRE 403. See Interdigital Communications, Inc. v. Nokia Corp., Case No. 13-cv-00010-RGA (D. Del. Sept. 19, 2014).
In another case, the accused infringer (& patent challenger) sought to introduce evidence of inter partes review proceedings during the liability phase of trial to rebut the presumption of validity. In that case, the court decided to instruct the jury on the presumption of validity and agreed that the patentee could refer to this presumption during argument. The accused infringer wanted to use the pending inter partes review proceeding as evidence to rebut this presumption. In addition, the accused infringer wanted to use evidence from the IPR proceedings to argue (during the damages phase) that the patents are entitled to diminished value. The Court denied both requests finding that: “because of the different standards, procedures and presumptions applicable to IPR proceedings, evidence concerning the proceedings is irrelevant and highly prejudicial to the jury’s determination of the validity of the patents.” However, the Court did allow the accused infringer to refer to the PTAB’s findings, outside the presence of the jury, as objective evidence to rebut allegations of willfulness. Ultratec, Inc. et al. v. Sorenson Communications, Inc. et al, No. 3:13-CV-00346 (W.D. Wisc. Oct. 8, 2014).
Together, these decisions provide some useful guidance on how the district courts will allow litigants to use PTAB findings in the courtroom. However, there are still several questions that remain unanswered. How will expert testimony pertaining to identical issues be treated in the courtroom? If the PTAB finds a disclaimer of claim scope in a claim construction ruling, is that finding admissible during Markman if these proceedings are considered part of the file history? Bottom line, pay attention to further rulings from the district courts as they continue to define the evidentiary boundaries for how IPRs can be used in the courtroom.