On November 13, 2009, Judge Irma E. Gonzalez granted Plaintiff Presidio’s motion in limine to exclude from trial evidence relating to the pending reexamination of the patent-at-issue in the United States District Court for the Southern District of California matter of Presidio Components, Inc. v. American Technical Ceramics Corp.

Read the full motion here: Court Grants Motion In Limine to Exclude from Trial Evidence Relating to Pending Reexamination

In Presidio, the USPTO granted Defendant American Technical Ceramics’ (ATC) replacement request for reexamination of the patent-at-issue on October 20, 2009.  ATC intended to offer specific determinations and findings made by the USPTO in its order granting the reexamination as evidence at trial, although it did not intend to argue that the patent-at-issue was invalid because of the grant of reexamination.  ATC argued that the specific USPTO findings it sought to introduce as evidence “are directly relevant and highly probative of specific issues underlying ATC’s inequitable conduct and invalidity defenses.”  These include: (1) “non-cumulativeness of the reexamination references in the prior art in the original prosecution” and (2) “importance of their consideration to a reasonable examiner, i.e., their materiality to patentability.”

Plaintiff Presidio moved to exclude from trial evidence relating to that reexamination on the ground that it was unfairly prejudicial and not relevant to the lawsuit, citing Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1584 (Fed. Cir. 1996) (”the grant by the examiner of a request for reexamination is not probative of unpatentability.”)

The court distinguished between pending reexaminations and concluded reexaminations, suggesting that concluded reexaminations may have probative value, citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1179 (Fed. Cir. 1995) (”the result of a USPTO proceeding that assesses patentability in light of information not originally disclosed can be of strong probative value in determining whether the undisclosed information was material.”) (emphasis added).   In this case, however, since the reexamination had only just been granted by the PTO, the court did not view the grant as having much probative value.  The court also relied on the USPTO’s 2007 ex parte reexamination statistics, stating “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.”   It is unclear why the court relied on 2007 statistics, rather than the current PTO statistics.  Although the statistics are similar in this instance, the reliance on old data has the potential for decisions to be based on faulty premises.  That statistic led the court to conclude, “[t]here 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.’”  Despite ATC’s stated intention to use the USPTO’s determinations and findings for limited purposes, the court still excluded any reference of the reexamination from trial.