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The Intellectual Property StrategistFeaturesIntellectual PropertyPatent Litigation

Admissibility of Evidence from Post-Grant Proceedings In District Court Trials

By Richard S.J. Hung, Alex S. Yap and Stephen J.H. Liu
June 01, 2021

District courts generally have broad discretion in determining what materials may be presented during trial, with evidentiary rulings reviewed for abuse of discretion. Consistent with this principle, the Federal Circuit has repeatedly confirmed that district courts' discretion extends to the admissibility of evidence relating to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). See, e.g., K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1376 (Fed. Cir. 2012) (affirming district court's decision to allow parties to discuss the extent to which Patent Office had considered a reference as within "the province of the district court"); Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1342–43 (Fed. Cir. 2009) (affirming district court's exclusion of evidence of non-final reexamination determinations based on risk of jury confusion).

Theoretically, this allows for wide variations between — and even within — districts on what evidence relating to post-grant review proceedings is admissible. Although these variations have in fact existed, they are disappearing gradually. Courts are increasingly excluding all evidence relating to post-grant proceedings before the PTAB, except when it is used for impeachment.

Below, we review recent decisions on this issue from some of the nation's busiest patent districts. (We do not include the Western District of Texas, a busy forum in recent times, as relatively few patent actions have progressed to the in limine stage.)

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