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District Court Excludes Patent Quality Inventor Study that Ranked Inventor of Patents-in-Suit as “Top Rated Inventor” But Denies Motion to Stay Pending Inter Partes Review Filed on Eve of Trial

Personalized Media Communications, LLC “PMC”) filed a patent infringement action against Zynga, Inc. (“Zynga”). Prior to trial, PMC sought to use an exhibit created by Ocean Tomo, entitled “Patent Quality Inventor Study.” The study purported to rank “John Harvey (the inventor of the patents in suit) as the “top rated inventor” in the “wireless” invention category.” Zynga moved to exclude the study.

In response, PMC asserted that the exhibit was properly offered “as a secondary consideration of nonobviousness – specifically, praise by others.” The district court disagreed and found that the potential for unfair prejudice was high. “The Court notes that the study does not pertain specifically to any of the patents-in-suit, much less the asserted claims. The Court finds that the probative value of the study is minimal, as it lacks the requisite nexus to the claims at issue in this case. See, e.g., Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, (Fed. Cir. 1988), cert. denied, 488 U.S. 956 (1988). Similarly, the potential for unfair prejudice is high.”

The district court also determined that the study did not fall within the exception set forth in Federal Rule of Evidence 803(17), and that it is primarily offered for its truth. Accordingly, the district court found that it was hearsay.

Turning to Zynga’s motion to stay pending resolution of the Inter Partes Review, the district court stated that “[a]pproximately 7 business hours before the start of jury selection, Zynga moved to stay this case pending resolution of the Inter Partes Review.” Zynga argued that PMC would suffer no prejudice as a result of the the stay, but the district court disagreed. “The Court disagrees – staying the case, for at least half a year, on the eve of trial, in view of a proceeding that has no certain narrowing effect, undoubtedly prejudices any plaintiff, regardless of whether they are a practicing or non-practicing entity. The prejudice to PMC weighs heavily against a stay.

The district court also rejected Zynga’s argument that “a stay will simplify the issues. “The Court notes that this argument is speculative, and the mere fact that the PTO instituted the IPR to begin with hardly means that the issues in this case will necessarily be simplified by the conclusion of the proceeding. The speculative nature of possible simplification of issues and potential length of the IPR process and appeal weighs against a stay.”

The district court also found “no merit in Zynga’s argument ‘The Case is in its Later Stages, But the Issue of Prejudice to Zynga has Just Arisen.’ (Id. at 5.) The late stage of the proceeding and Zynga’s failure to move to stay the case earlier in the trial process weighs heavily against a stay.”

As a result, the district court denied Zynga’s motion to stay pending Inter Partes Review.

Personalized Media Communications, LLC v. Zynga, Inc., Case No. 2:12-CV-00068-JRG-RSP (E.D. Tex. Nov. 8, 2013)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or