tag:blogger.com,1999:blog-6851300.post6950331709338595710..comments2023-11-05T06:06:12.057-06:00Comments on The 271 Patent Blog: SD Cal.: Evidence Relating to Reexamination Proceedings Excluded Fom TrialTwo-Seventy-One Patent Bloghttp://www.blogger.com/profile/02481083706071978817noreply@blogger.comBlogger3125tag:blogger.com,1999:blog-6851300.post-59296837306597683512009-12-03T10:43:02.403-06:002009-12-03T10:43:02.403-06:00Got it, that makes a lot of sense. Thanks for the...Got it, that makes a lot of sense. Thanks for the insight.Daniel Ballard, Esq.https://www.blogger.com/profile/03173838265543158040noreply@blogger.comtag:blogger.com,1999:blog-6851300.post-79147369073282729352009-11-30T20:42:02.655-06:002009-11-30T20:42:02.655-06:00Dan said:
"It would be interesting to know wh...Dan said:<br />"It would be interesting to know why the patent owner was (previously) precluded from admitting evidence that its patent is presumed valid."<br /><br />Not really when you look at the underlying motion papers. The defendant wasn't disputing that a presumption of validity attached to an issued patent. It was simply arguing that the plaintiff shouldn't be allowed to argue that the presumption carries actual weight as evidence at trial, because it obviously doesn't. The presumption of validity simply establishes the burden of proof and is not a piece of evidence the plaintiff can present to weigh against the defendant's evidence of invalidity. There's nothing to suggest that the jury wouldn't be properly instructed on the presumption of validity at closing arguments. <br /><br />A more interesting question is presented if the plaintiff "opens the door" to reexam evidence being admitted at trial. For example, if the plaintiff tries to argue about how great a job the USPTO did in examining the patent, how thorough it was in searching for prior art, or makes any argument beyond simply noting the existence of a presumption, a good argument can be made that the plaintiff opened the door to have reexamination evidence submitted to rebut those arguments.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6851300.post-64571139116379381112009-11-30T13:10:29.769-06:002009-11-30T13:10:29.769-06:00It would be interesting to know why the patent own...It would be interesting to know why the patent owner was (previously) precluded from admitting evidence that its patent is presumed valid.<br /><br />The overlap (if any) of concurrent inquiries into the validity of patents by way of reexamination and litigation confuses me. <br /><br />As for ex parte reexams, In re Etter is still good law which holds that the presumption of validity afforded to patents does NOT apply during reexamination. <br /><br />If you marry that with 37 CFR 1.555(b)(2) which states that "[a] prima facie case of unpatentability of a claim pending in a reexamination proceeding is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence ... and BEFORE any consideration is given to evidence which may be submitted ..." that should go a long way toward convincing a court that the Patent Office's finding of a “substantial new question of patentability” is enough to burst the presumption of validity.<br /><br />Smarter folks than I discussed a similar situation at http://bit.ly/8NA3H4Daniel Ballard, Esq.https://www.blogger.com/profile/03173838265543158040noreply@blogger.com