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District Court Declines to Admit Denial of Petition for Inter Partes Review (“IPR”) into Evidence before Jury

In a pending patent infringement action, Apple moved to preclude the plaintiff, Wisconsin Alumni Research Foundations (“WARF”) from offering evidence or argument regarding the Patent Office’s denial of an IPR that Apple initiated. Apple relied on two prior art references as well as a declaration of Dr. Robert Colwell, who is Apple’s validity expert in the patent lawsuit. The petition also made several of the same arguments regarding the prior art references that Apple intended to present to the jury in support of its invalidity defense.

Apple argued that WARF should be precluded from offering evidence or argument regarding the IPR proceeding given its minimal probative value, risk of causing unfair prejudice, and possibility of misleading and confusing the jury. WARF opposed the motion, arguing that the PTAB’s decision is highly probative of validity of the patent, particularly where Apple intends to present many of the same arguments.

The district court began its analysis by noting that “[t]here appears to be no controlling Federal Circuit law on the admissibility of evidence from an IPR proceeding. As WARF points out, the Federal Circuit has held that the Patent Office’s consideration of a prior art reference during prosecution of the patent may affect the weight given to that prior art during a subsequent invalidity challenge in court. See, e.g., Sciele Pharma Inc. v. Lupin Ltd., 684 F.3d 1253, 1260-61 (Fed. Cir. 2012) (“While the ultimate burden of proof [of proving invalidity] does not change, new evidence not considered by the PTO may carry more weight . . . than evidence previously considered by the PTO, and may go further toward sustaining the attacker’s unchanging burden.) (citation and internal quotation marks omitted).”

The district court stated that WARF’s “argument makes sense as far as it goes. After all, this would be true if prior art was presented to and reviewed by a patent examiner during prosecution who determined that it does not bar issuance of the patent as interpreted and approved by the examiner.” But the district court distinguished an IPR proceeding from an examination by a patent examiner during prosecution: However, an IPR proceeding is different. An IPR proceeding is not an examination by a patent examiner in which a decision is made about the scope and validity of a patent. It is an adjudicative proceeding during which PTAB, comprised of three administrative law judges, determine whether the challenger has shown “a reasonable likelihood” that it will prevail on its challenges.

The district court further explained that “Apple sought review of the ‘752 patent based on two pieces of prior art, and PTAB concluded that Apple had not shown a ‘reasonable likelihood’ of prevailing on its challenges. Even so, PTAB did not conclude that the patent was either ‘valid’ or ‘invalid.’ In other words, there was no explicit, or even implicit, decision on the validity of the patent as there is during the initial prosecution of the patent.”

The district court then examined the district court decisions that had considered whether to admit evidence from a completed IPR, nothing that several admitted the evidence in conjunction with an instruction on the different burdens in a litigation proceeding and in an IPR proceedings. See, e.g., StoneEagle Servs., Inc. v. Pay-Plus Solutions, Inc., No. 8:13-CV-2240-T-33MAP, 2015 WL 3824208, at *8 (M.D. Fla. June 19, 2015); Universal Electronics, Inc. v. Universal Remote Control, Inc., No. SACV 12-00329 AG, 2014 WL 8096334, at *7 (C.D. Cal. Apr. 21, 2014); Oracle America, Inc. v. Google, Inc., Civ. No. 10- 03561, 2012 WL 1189898, *3 (N.D. Cal. Jan. 4, 2012). The district court also noted that at least one court had concluded that the evidence should be excluded under Fed.R.Evid. 403. See, e.g., Interdigital Commc’ns Inc. v. Nokia Corp., No. CV 13-10-RGA, 2014 WL 8104167, at *1 (D. Del. Sept. 19, 2014).

The district court agreed with the courts that had declined to “admit evidence of non-dispositive IPR proceedings: any probative value of this evidence is substantially outweighed by the risk of unfair prejudice, as well as the risk of jury confusion. The IPR proceeding is subject to different standards, purposes and outcomes than both the original prosecution and this court proceeding. Not only is PTAB’s decision not binding in these proceedings, the law is not even clear on whether and how much the PTAB’s decision denying Apple’s request for review should affect the weight given to the two prior art references presented during the IPR proceedings. Although the court could attempt to provide instructions to the jury regarding the purpose and current standards applicable to the IPR proceeding, it would be difficult for a jury to understand, much less apply, the nuanced differences between the various proceedings and to determine how much weight should be given to PTAB’s decision, if any. Instead, there is a great risk that the jury would conclude, incorrectly, that the Patent Office has twice held the ‘752 patent is nonobvious over prior art. Such a conclusion would likely unfairly prejudice the jury against Apple before being asked to decide the same question.”

Accordingly, the district court granted the motion to exclude the evidence of the denial of the IPR.

Wisconsin Alumni Research Foundations v. Apple, Inc., case No. 14-cv-062-vmc (W.D. Wisc. Sept. 29, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or