In our February series on the use of reexamination evidence in concurrent litigation, specifically “Is Evidence of a Concurrent Reexamination Admissible in Litigation? (Part III of IV),” we observed that some courts are, at best, ambivalent about the presentation of evidence pertaining to a related patent reexamination for rebutting a charge of willful infringement. Those courts typically express concern that juries may become prejudiced or confused if they learn that the same agency that originally issued the patent — the PTO — has declared that a substantial new question patentability exists or has rejected the patent’s claims.

Notwithstanding those potential problems, a jury in the Eastern District of Texas may soon hear that three claims of the patent-in-suit currently stand rejected in reexamination proceedings. In an Order dated June 8, 2010, Judge T. John Ward (Tyco Healthcare Group LP v. E-Z-EM, Inc., No. 2:07-cv-262) granted a motion for reconsideration that will permit the jury to hear evidence that the patent-in-suit is under reexamination, and that the PTO has rejected patent claims 9-11. The defendants may only introduce the evidence for the limited purpose of rebutting the plaintiffs’ claim for willful infringement, but the practical impact of that limitation on jury deliberations on other issues (e.g., validity) remains to be seen. The plaintiffs are now in the position of having to decide whether they want to prevent the jury from learning that some claims of their patent stand rejected at the cost of dropping their willful infringement allegations.

Additionally, this result demonstrates the desirability of filing for reexamination sooner rather than later when the target patent is involved in concurrent litigation. A judge is more likely to allow a jury to hear evidence of reexamination when the proceedings have matured to the point where the PTO has actually rejected the claims of the patent in an office action.