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SD Cal.: Evidence Relating to Reexamination Proceedings Excluded Fom Trial

By Peter Zura

Presidio  Components Inc., v. American Technical Ceramics Corp., No. 08-CV-335 (S.D. Cal., November 13, 2009, order)

During litigation, ATC submitted a request for reexamination to the USPTO, which was subsequently granted.  Soon thereafter, Presidio moved the court to exclude all evidence relating to the reexamination proceedings, arguing that the evidence is irrelevant and not probative of unpatentability.  The district court granted the motion:

Presidio argues persuasively that ?the grant by the examiner of a request for reexamination is not probative of unpatentability.? . . . ?The grant of a request for reexamination, although surely evidence that the criterion for reexamination has been met (i.e., that a ?substantial new question of patentability? has been raised, 35 U.S.C. § 303), does not establish a likelihood of patent invalidity.? . . . On the contrary, although it appears that the USPTO grants about 92% of the requests for reexamination, in only 12% of cases does that reexamination result in all claims being cancelled. . . . There is thus a ?substantial likelihood? that, despite the grant of reexamination, the USPTO will uphold the patentability of some or all of Presidio?s claims.

Moreover, even if the reexamination proceedings are somehow relevant on the issues of obviousness or willfulness, they are nevertheless unfairly prejudicial. See FED. R. EVID. 403. As noted above, because the reexamination proceedings before the USPTO are still incomplete and based solely on the evidence provided by ATC in its replacement request for reexamination, there is very little probative value to the grant of reexamination. On the other hand, the prejudicial effect as well as potential for jury confusion is great. Thus, because the prejudicial potential of the evidence ?substantially outweigh[s]? any probative value, it should be excluded.

Interestingly, the court granted ATC?s earlier motion to exclude from trial any reference to the ?presumption of validity?  based on the reexamination.  The court remarked that "[w]ith any reference of the 'presumption of validity' excluded, allowing the jury to hear about incomplete USPTO proceedings will be unfairly prejudicial to Presidio, and could potentially confuse the jury as to who has what burden throughout the trial."

Read/download a copy of the order here (link)

Full post as published by Two-Seventy-One Patent Blog on November 30, 2009 (boomark / email).