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Shh. They're not
Shh. They're not "invalid," they're "canceled" and "in the public domain" Kristina Flour, Unsplash

Yesterday Nate wrote about Judge Bryson's opinion that a plaintiff was not bound by its prior allegation that a product infringed two claims, because plaintiff's statement deals with an issue of law, not fact.

Today, I think it's worth discussing another aspect of the same decision, where Judge Bryson addressed a motion by plaintiff to preclude the defendant from discussing the same two invalid claims, claims 9 & 9 of the two asserted patents.

The the PTAB canceled claims 9 and 9 in an IPR, and plaintiff now asserts only claims that depend on those two canceled claims. It moved to prevent defendant from referring to the independent claims as "invalid," and asked the Court to order that they instead only refer to them as "not asserted":

Defendant ScentAir Technologies, LLC, has urged that the fact that the claims were canceled for invalidity should be allowed into evidence. In its Motion in Limine No. 1, plaintiff Prolitec Inc. argues that ScentAir should be barred from introducing evidence that those claims have been canceled for invalidity. Instead, Prolitec argues, the jury should simply be told that those claims are not asserted in this case. Dkt. No. 258.

Prolitec Inc. v. ScentAir Technologies, LLC, C.A. No. 20-984-WCB, at 1 (D. Del. Jan 12, 2024).

The Court agreed, at least as far as the word "invalid" is concerned:

Prolitec is correct that it is unnecessary to inform the jury that the canceled claims were found invalid and canceled. . . . The invalidity of the unasserted claims is irrelevant to the issues in this case. And any effort to mitigate the risk of prejudice to Prolitec from disclosing that those claims have been held invalid would require excessive digression into the nature of inter partes review proceedings and the different standard of proof applied to invalidity inquires in inter partes review proceedings, as compared to district court proceedings. Accordingly, the jury will not be told that those claims have been held invalid.

The Court often limits discussion of prior proceedings, including IPRs. This holding makes sense in that context, even if it might present some mechanical problems for the defendant when arguing invalidity.

It didn't go entirely plaintiff's way, however. The Court permitted the defendant to admit the certificates of cancellation, to show that the cancelled claims don't add value to the patents:

Prolitec argues that the two patents should be introduced into evidence without reference to the inter partes review certificates indicating that particular claims, including claim 9 of the ’004 patent and claim 9 of the ’976 patent have been canceled. ScentAir responds that introducing the patents by themselves could give the jury the mistaken impression that those two independent claims, although not being directly asserted, can nonetheless be treated as adding value to the claims that depend from them. I will therefore allow ScentAir to introduce evidence (in the form of the inter partes review certificates) that certain claims of the two patents have been canceled, but not to offer evidence or argument that the reason those claims have been canceled is that they have been held invalid.

Id. at 2.

Beyond that, the Court held that it would instruct the jury that claims 9 & 9 are in the public domain:

In addition, to ensure that the jury does not attribute value to the features of the independent claims for purposes of assessing damages, I intend to instruct the jury that the inventions of the two claim 9s are in the public domain and that damages stemming from any infringement of the dependent claims must be confined to the value added by those claims, excluding the value associated with the independent claims. That is, Prolitec will be permitted to base its claim of damages only on the value contributed by the novel features set forth in the asserted dependent claims.

Id. at 3.

All told, that's not a terrible result for the defendant. Being able to say that the claims are "canceled" and "in the public domain" sounds nearly as good as, or maybe better than, "invalid."

Of course, the Court's instruction is in the context of damages, and I expect defendant's main concern will be arguing invalidity. I imagine there could be some objections at trial if one of the main themes of defendant's case is "they didn't really invent anything, the Court will instruct you that most of plaintiff's invention was already in the public domain."

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