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District Court Grants Motion to Exclude Proceeding before PTAB during IPR But Allows Admissions and Arguments Made to PTAB to go before the Jury

The plaintiff, Magna, filed a motion in limine to exclude references to Inter Partes Review (“IPR”) proceedings. The defendant, TRW, filed a response, arguing that evidence was relevant to multiple issues at trial, including, but not limited to, the history of the asserted patents, prosecution history estoppel, the scope of the claims and prior art, and willfulness.

TRW explained that while it did not intend to argue that the mere fact that the PTO instituted IPR proceedings is conclusive evidence that the asserted patents are invalid, TRW did plan to seek to admit evidence in the IPRs which constitutes the file histories of the patents, while avoiding the undue prejudice, confusion, and irrelevance of informing the jury about details about the IPR proceedings including outcomes.

The district court, however, expressed concern that TRW’s representation did not comport with one of TRW’s examples “of how discovery and factual findings from the IPR proceedings here are relevant to the issues of invalidity of the asserted patents in this case.” For example, TRW stated: “In this case, Magna’s expert, Dr. Heeger states that a person of ordinary skill in the art would not find it obvious to replace the camera in the Yanagawa prior art reference with a CCD camera or a CMOS camera. Yet, in the Board’s final decision in the IPR proceedings for U.S. Patent No. 7,339,149, the Board cited to the 2015 In re Magna Elec. Fed. Cir. Case and held that such substitutions of the Yanagawa camera would be obvious.”

The district court concluded that “the Board’s final decision . . . h[o]ld[ing] . . . such substitutions . . . [as] obvious” fell within the category of “details about the IPR proceedings including outcomes.”

Accordingly, “[o]n balance, the Court finds that Magna’s blanket ban is a bit too broad, but will, as TRW suggests, adopt the approach of the District of Delaware: ‘[t]he parties may . . . use as evidence statements made or evidence proffered during the [inter partes review] so long as this is done without referencing either the [inter partes review] or the outcomes.’ Personalized User Model, L.L.P., 2014 WL 807736, at *3. The Court cautions TRW, however, that ‘findings of fact’ made, including the first example that TRW offers, will not be admissible, just as those findings are not ‘statements made or evidence proffered’ in the District of Delaware’s approach. This is because such ‘findings’ would needlessly confuse the jury and waste time, in return for minimal probative value. More specifically, taking the time to explain to the jury the difference between the proceedings and how the standards differ with respect to invalidity, and so forth, would cause needless jury confusion and waste time. To the extent that such findings are minimally relevant to the ‘file histories of the patents,’ that relevance does not outweigh the other two factors the Court just discussed.”

With respect to arguments made by Magna, the district court reached a different conclusion. “On the other hand, again, TRW would be unfairly prejudiced if it cannot submit evidence from the IPR proceedings where Magna, for example, makes inconsistent arguments. In fact, it is the same type of evidence Magna agrees is acceptable to use from the related ITC proceedings. The introduction of limited evidence proffered or statements made in other proceedings that are inconsistent with parties’ positions in this case are relevant for limited purposes, as the Court noted on the record concerning a similar prior motion.”

Accordingly, the district court granted and denied the motion in part.

Magna Electronics, Inc. v. TRW Automotive Holdings Corp., Case No. 1:12-cv-654 (W.D. Mich. Jan. 28, 2016)

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