In a recent order, Judge Richard Andrews granted a motion in limine to exclude at trial evidence of the PTAB’s denial of an inter partes review petition of a patent-in-suit. Judge Andrews explained that evidence of the IPR petition was inadmissible under Rule 403 because it was “of marginal relevance, . . . the probative value is greatly outweighed by the expenditure of time that would be required to give the jury the full context necessary to fairly evaluate the evidence . . . [and] because of the complexity involved in giving the full context, there would also be a significant risk of confusion of the issues.” Interdigital Commc’ns Inc., et al. v. Nokia Corp., et al., C.A. No. 13-10-RGA, Order at 1-2 (D. Del. Sept. 19, 2014).
Judge Andrews explained his reasoning: “I agree that the . . . IPR denial is a final decision. I do not agree that it is a decision on the merits, any more so than a grant of an IPR is a decision on the merits. It is akin to a ruling on a preliminary injunction, where the merits are assessed with less than a full record and with less than a full adversarial proceeding.” Id. at 1. Furthermore, although the IPR denial is part of the prosecution history, “it is a relatively unique part of the prosecution history. First, a patent examiner cannot allow a patent to issue saying there is a reasonable likelihood that it is not obvious . . . [instead] [t]he patent examiner has to come to a conclusion that it is not obvious, or not allow the issuance of the patent. Second, the patent examiner is a person of ordinary skill in the art, whereas the IPR decisions are made by lawyers who are not persons of ordinary skill in the art.” Id. Judge Andrews did, however, allow the defendants to “truthfully state [to the jury] that the PTO did not have [IPR] reference before issuing the patent.” Id. at 2 n.1.