Patents Post Grant Blog

Admissibility in Litigation?

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I, II and III)”, we discussed using pending reexamination proceedings to support invalidity contentions, prove inequitable conduct, and rebut allegations of willful infringement.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to support and oppose motions for preliminary injunction.

Reexamination Evidence Used to Support or Oppose Motions for Preliminary Injunction

When deciding to grant or deny a preliminary injunction, the courts consider four factors: (1) the likelihood of success on the merits; (2) the irreparable harm if the injunction is not granted; (3) the balance of hardships between the parties; and (4) the public interest.  Procter & Gamble Co. v. Kraft Foods Global Inc., 459 F.3d 842, 847 (Fed. Cir. 2008).  To defeat a showing of likelihood of success on the merits, alleged infringers will attempt to attack the infringement, validity, or enforceability of the patent at issue.  Specifically, to diminish likelihood of success on the merits with regard to a patent’s validity, accused infringers have attempted to introduce evidence that the patent is undergoing parallel reexamination proceedings. Read the rest of this entry »

Admissibility in Litigation?

As a result of the popularity of reexamination, courts are frequently faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our previous posts, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Parts I and II),” we discussed using pending reexamination proceedings to support invalidity contentions and prove inequitable conduct.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to rebut allegations of willful infringement.

Reexamination Evidence Used to Rebut Willfulness

Willful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent” and the “objectively defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.”  In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).  Thus in order for willful infringement to be found, the accused infringer must have known or should have known that the relevant patent was valid.  Willfulness is to be evaluated “under the totality of the circumstances.” Id. at 1369.  Thus, alleged infringers accused of willful infringement have asked the court to consider the existence of pending reexamination proceedings.  The theory asserted by alleged infringers is typically a variant of the following: where the PTO has granted a request for reexamination, and thus concluded that substantial questions of patentability exist, an alleged infringer could not have acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.”  In other words, where the PTO has called into question the validity of the patent by granting reexamination, any infringement thereafter could not have been willful. Read the rest of this entry »

Admissibility in Litigation?

 

Courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be considered at trial.  In our prior post, “Is Evidence of Parallel Reexamination Proceedings Admissible at Trial? (Part I of IV)”, we discussed using pending reexamination proceedings to support invalidity contentions.  Accused infringers have also attempted to use evidence of parallel reexamination proceedings to prove inequitable conduct on the part of the patentee. Read the rest of this entry »

Admissibility in Litigation?

Several courts have recently been faced with the issue of whether evidence of parallel reexamination proceedings should be admissible at trial. Parties in these cases have attempted to use the existence of pending reexamination proceedings to prove or disprove invalidity, inequitable conduct, and willful infringement. Opponents generally argue that evidence of parallel reexamination proceedings is irrelevant, unfairly prejudicial, and/or contrary to the statutory presumption of validity under 35 U.S.C. § 282.

Presented with both points of view, the rulings of courts vary, and whether this evidence is allowed tends to depend on the circumstances of the case. Many courts quickly reject Read the rest of this entry »