May 18, 2016
Judge Uses Institution of IPR to “Bolster” Decision to Overturn Jury’s Finding of Willfulness
A Colorado district court has provided an example of how the decisions of the PTAB in an IPR proceeding can impact district court litigation. In XY, LLC v. Trans Ova Genetics, LLC, Case No. 1:13-cv-00876 (D. Colo.), Judge Martinez used the PTAB’s decision to institute IPR proceedings to “bolster” his decision to overturn the jury’s finding of willful infringement.
Plaintiff XY had asserted ten patents against Defendant Trans Ova Genetics. The patents were directed to systems and methods for selecting the sex of cattle and other livestock. Trans Ova challenged XY’s infringement assertion on the basis that the asserted claims were anticipated and/or obvious. The jury ultimately found that all of the asserted claims were valid and infringed. The jury also found that the infringement was willful.
Trans Ova filed a post-trial motion to overturn the jury’s finding of willfulness on the basis that Trans Ova’s evidence of invalidity as to all ten of the patents-in-suit presented a substantial question of invalidity. Noting that a district court reviews a jury’s finding of “objective recklessness” de novo, Judge Martinez agreed that Trans Ova’s evidence of invalidity presented a substantial question of invalidity and overturned the jury’s finding of willfulness.
The Court primarily relied upon the evidence of invalidity that Trans Ova had presented at trial to support its decision. However, the Court also noted that its opinion was “further supported” by the fact that the PTAB had instituted IPR proceedings with respect to two (out of ten) of the asserted patents and had found the claims of one of those patents unpatentable:
This finding is further supported by the proceedings brought with respect to the ‘920 and ‘425 patents before the Patent Trial and Appeal Board, which resulted in a finding of invalidity as to the ‘920 patent, and a hearing as to the possible invalidity of the ‘425 patent. While this evidence was not before the jury, it bolsters the Court’s present finding that Trans Ova’s invalidity defenses met the minimal standard of objective reasonableness, at least as to some of XY’s patents.
It is apparent that the Court was influenced to some degree – and at least felt more comfortable with his decision – by the fact that the PTAB had instituted IPRs on two of the patents, at least enough such that the Court mentioned it in its Opinion. It is logical that other courts, whether they explicitly say so or not, to be influenced by decisions of the PTAB to institute IPRs when it comes to assessing the objective recklessness of a defendant’s actions in connection with a willfulness evaluation.