Thursday, March 16, 2017

The text "presumption of validity" can be excluded from patent trial proceedings [!]

From the decision of Judge Bryson (sitting by designation in ED Texas in Uropep v. Lilly) as to excluding use of the term "presumption of validity" before a patent jury [note text: Lilly contends that the phrase “presumption of validity” is potentially confusing to the jury and should not be used at trial. UroPep disagrees. ]:

What is clear from the case law, however, is that prohibiting the use of that
phrase is not error. See Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258-59 (Fed. Cir. 2004).


Accordingly, the Court will exclude the use of the phrase “presumption of validity” and instead will address the burden of proof in its instructions to the jury.

Of the Chiron case, the Finnegan law firm wrote:

First, Chiron argued that the district court had erred by instructing the jury on Genentech’s burden of proof without adding a jury instruction on the presumption of validity of the ‘561 patent. The Federal Circuit disagreed, stating that the presumption of validity and heightened burden of proving invalidity are different expressions of the same thing.

The Chiron case was an appeal made (and lost) by Chiron of a denial of JMOL. A JMOL is a based upon a lack of factual evidence ["A trial court should grant a motion for JMOL if substantial evidence does not
support the jury’s factual findings, presumed or express, or if those factual findings
cannot support the legal conclusions implied from the jury’s verdict. " ]. The portion of Chiron relevant to UroPep was about a jury instruction, with the lack of error based upon redundancy. [ First, Chiron argues that the district court erred by instructing the jury on Genentech’s burden of proof without also adding an instruction on the presumption of the ’561 patent’s validity. (...) the presumption of validity and
heightened burden of proving invalidity “are static and in reality different expressions of
the same thing – a single hurdle to be cleared.” (...) “[T]he presumption is one of law, not fact, and does not constitute ‘evidence’ to be weighed against the challenger’s evidence.” ] The issue in Chiron was not about the exclusion of a term before the jury.

One notes that Judge Bryson used the term "error" rather than referring to "abuse of discretion."

In cases related to FRE 403, the usual standard of review is "abuse of discretion."

In the CA11 case Bhogaita v. Altamonte Heights Condominium Ass'n, Inc. (involving the presence of an emotional support dog at trial, and thus more related to Uropep than is the Chiron case), a trial court's discretion to include or exclude material rests within

the nature of the broad discretion granted to trial courts determining evidentiary matters. Gray ex rel. Alexander v. Bostic, 720 F.3d 887, 893 (11th Cir. 2013) (explaining that the abuse of discretion standard implies a range of choices). And this discretion is particularly broad with respect to Rule 403 determinations. Sprint/United Management Co. v. Mendelsohn, 552 U.S. 379, 384–85, 128 S. Ct. 1140, 1145 (2008). A district court abuses its discretion to admit relevant evidence when its decision rests on [1] a clearly erroneous fact-finding, “an [2] errant conclusion of law, or [3] an improper application of law to fact.” Fid. Interior Constr., Inc. [v. Se. Carpenters Reg’l Council of the United Bhd. of Carpenters & Joiners of Am.], 675 F.3d 1250, 1258 (11th Cir. 2012) (internal quotation marks omitted). Nothing suggests that the district court’s decision allowing the dog to remain present as a demonstrative exhibit rested on any of the three.

In Uropep, the excluded material was a statement of law. In Bhogaita, the included material was the presence of a dog.

From CA6, in Louzon v. Ford:

Generally appellate review of a trial judge's evidentiary decision accords the trial court considerable discretion under the abuse of discretion standard of review.

But also:

a motion in limine is designed to narrow the evidentiary issues for trial and to eliminate unnecessary trial interruptions.” Louzon, __ F.3d at __ (citing Luce v. United States, 469 U.S. 38, 40 n.2 (1984);

**As to standards of review, see Upon Further Review, the Ruling on the Field Stands: Standards of Appellate Review , which includes (relevant to Chiron):

The standard of review for jury instructions depends on the type of error being claimed. The Ninth Circuit has explained that it reviews de novo whether the instruction is wrong on the law, but reviews the formulation of the instructions in a civil case for an abuse of discretion. The First Circuit has labeled this as a split standard. “We review de novo questions as to whether jury instructions capture the essence of the applicable law, while reviewing for abuse of discretion questions as to whether the court’s choice of phraseology in crafting its jury instructions is unfairly prejudicial.”


Post a Comment

<< Home