Intellectual Property Law

Sue L. Robinson: Rexamination Record Inadmissible as Trial Evidence

By Karen E. Keller, Andrew A. Lundgren et al.

In a comprehensive opinion addressing a multitude of pretrial motions, district judge Sue L. Robinson offered a key insight into her practice admitting the PTO's reexamination record at trial.

As part of its analysis on a motion for summary judgment of invalidity, the Court explained why this record is inadmissible, at least when a jury is the factfinder:

"It is generally not the court's practice to admit the reexamination record as trial evidence. As the rejections on reexamination are not binding, they are generally not relevant to the issues to be tried. Almost always, such evidence is more prejudicial than probative, and creates jury confusion vis a vis the complex invalidity standards they are asked to apply - for example, that patents enjoy a statutory presumption of validity." (slip op. at 33, n.31)

It will be interesting to see whether the Court also follows this practice in non-jury trials.

Sigram Schindler Bet. mbH v. Cisco Sys. Inc., C.A. No. 09-72-SLR (D. Del. July 26, 2010) (Robinson, J.).

Full post as published by Delaware IP Law Blog on August 16, 2010 (boomark / email).