The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition.

The parties to the lawsuit are in the business of manufacturing and selling theater rigging equipment and winch systems. Olaf Sööt Design (“Plaintiff”) brought an action against Daktronics (“Defendant”) alleging infringement of U.S. Patent No. 6,520,485 (the “’485 patent”), which covers a winch system that is designed to move large theater scenes on and off the stage quickly. Notably, although the Defendant initially alleged that the ’485 patent was invalid, it withdrew its invalidity defense during the course of litigation.

Leading up to trial, each party filed motions in limine seeking to exclude evidence related to the validity of the ’485 patent. Specifically, Plaintiff moved to exclude prior art references and related testimony as irrelevant and unduly prejudicial. Defendant moved to exclude evidence of its failed IPR and its decision to withdraw its invalidity defense. In granting the motions, the court concluded that these pieces of evidence were irrelevant and prejudicial because validity was no longer at issue in the case. In opposing Defendant’s motion, Plaintiff argued that the purpose of introducing the failed IPR evidence was to discredit Defendant’s witnesses. In precluding evidence of the failed IPR, the court determined that the likelihood that such evidence would confuse the jury and prejudice the Defendant was high. In reaching its conclusion, the court stated that “the jury could confuse Defendant’s failure before the PTAB as evidence of infringement.” 

Practice Tip: In cases where validity is no longer an issue for trial, evidence of an IPR may be deemed confusing and prejudicial, thus providing a basis for exclusion under Federal Rule of Evidence 403.

Olaf Sööt Design, LLC v. Daktronics, Inc., 15 Civ. 5024, Doc. No. 304 (Dec. 4, 2018).