Reprinted with Permission from Law360
What District Courts Are Saying About Admissibility Of IPR
Law360, New York (August 7, 2018) –
Six years after the America Invents Act created inter partes review proceedings, patent disputes
increasingly involve parallel litigation, with at least one inter partes review proceeding in tandem with
district court litigation(s) involving the same patent claims. Given the frequency with which IPRs are
utilized as parallel means of resolving patent disputes, rather than as an alternative to district court
litigation, the question that practitioners are starting to face with some regularity is whether, and to
what extent, IPR decisions are admissible in district court litigation.
In this article, we examine how district courts have analyzed that question, focusing on recent case law
addressing whether and to what extent IPR institution decisions and final written decisions are
admissible in district court cases.
Admissibility of Institution Decisions
The Patent Trial and Appeal Board may institute an IPR if there is a “reasonable likelihood” that the
petitioner will prevail with respect to at least one of the challenged claims.[1] Disputes may then arise
over whether the PTAB’s institution or non-institution decision is admissible evidence in a parallel
district court litigation.
Decisions Instituting Review
When a petition to institute IPR is granted, accused infringers may seek to admit the institution
decisions in parallel district court litigation for various purposes.
Invalidity
Some litigants have sought to introduce institution decisions as evidence of invalidity in district court litigation. District
courts in at least Wisconsin and California have rejected that approach, finding that institution decisions are overly
prejudicial and have little probative value.[2] For example, in Ultratec Inc. v. Sorenson Communications Inc. in the
Western District of Wisconsin, the defendants sought to admit evidence of institution of pending IPR proceedings in light
of the court’s ruling that it would instruct the jury on the presumption of validity and allow plaintiff’s counsel to refer to
the presumption during trial.[3] Finding the defendants’ position “not without merit,” the court nonetheless excluded the
evidence. It reasoned that because “different standards, procedures and presumptions” are ap plied, evidence of a pending
IPR is “irrelevant and highly prejudicial to the jury’s determination of the validity of the patents.”[4]
Good Faith Belief
David Cavanaugh
Omar Khan
Jeffrey Dennhardt
