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District Court Precludes Admission of Inter Partes Review Proceedings in Front of Jury But Permits Consideration as part of Willfulness Determination

In this patent infringement action between Ultratec, Inc. (“Ultratec”) and Sorenson Communications, Inc. (“Sorenson”), Sorenson sought to admit evidence of an inter partes review proceeding of the patent-in-suit. Sorenson wanted to admit the evidence to contradict the plaintiff’s use of the presumption of validity of the patent.

As explained by the district court, “[a]t the final pretrial conference on October 3, however, defendants expressed their view that, in light of the court’s ruling that it would instruct the jury on the presumption of validity and allow plaintiffs’ counsel to refer to the presumption during argument, evidence as to the pending inter partes review proceedings is relevant and admissible to rebut the presumption of validity.”

The district court found that introducing such evidence before the jury would be improper. “It is unclear whether defendants were merely making a record for appeal or stating their intent to introduce the inter partes review evidence during the liability phase of trial. Assuming the latter, I will not allow it. Although defendants’ position is not without merit, I am persuaded 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. For this same reason, defendants may not rely on evidence of the IPR proceedings during the damages phase to argue that the patents are entitled to diminished value.”

Nonetheless, the district court did permit Sorenson to introduce the evidence of the inter partes review proceedings before the court during a willfulness determination. “That said, defendants are free to refer to the board’s findings and argue their weight when making any arguments outside the jury’s presence on the objective prong of the willfulness test. In addition, should the question of subjective willfulness be presented to the jury, defendants may introduce the board’s decision as evidence showing their good faith belief in invalidity. The parties agree that in the event this occurs, the jury should be given a curative instruction regarding the proper weight to be given the IPR evidence. They disagree, however, on what the instruction should say. As with other matters concerning willfulness, the court will take this matter up with the parties only if and when it becomes necessary.”

Ultratec, Inc. v. Sorenson Communications, Inc., Case No. 13-cv-346-bbc (W.D. Wisc. Oct. 8, 2014)

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