By Kevin E. Noonan --
This is a time when the eternal verities are routinely called into question, particularly in patent law. For example, Judge Linn can state in a concurrence that, while there is no reason "in policy or statute" why the claims in Sequenom v. Ariosa are not patent eligible, he must rule that they are not based on binding Supreme Court precedent. And earlier this week, Judge Bryson, sitting by designation in the District Court for the Eastern District of Texas (Marshall Division) ruled in a motion in limine in Erfindergemeinschaft Uroprep GbR v. Eli Lilly & Co. that a jury need not receive an instruction regarding the presumption of validity enshrined in the patent statute at 35 U.S.C. § 282 (Memorandum Opinion and Order).
The basis for Eli Lilly's motion was that a jury might be confused by an instruction on the presumption, and Judge Bryson noted in his decision that district court cases have come down on "each side of the question." In this case he decided to exclude evidence regarding the presumption, stating:
In the Court's judgment, the use of the phrase "presumption of validity" would add little to the jury's understanding of the burden of proof on the validity issues. Moreover, the phrase might be confusing to the jury, to the extent that the jury is required to consider both that phrase and the Court's instructions on the burden of proof. At minimum, the use of the term "presumption" would require a further definitional instruction by the Court, without leading to any greater insight on the jury's part as to the nature of the burden of proof on the validity issues. 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.
The Court based its decision on Federal Circuit precedent, specifically Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1258-59 (Fed. Cir. 2004). In that case the issue was framed differently: in particular, the question was whether instructions on the burden of proof were error for not including an instruction on the presumption of validity. The Chiron court found no error because "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,'" citing Am. Hoist Derrick Co. v. Sowa Sons, Inc., 725 F.2d 1350, 1360 (Fed. Cir. 1984). Perhaps more germane to Judge Bryson's decision, the Chiron court went on to say that "the presumption is one of law, not fact, and does not constitute `evidence' to be weighed against the challenger's evidence," citing Avia Group Int'l Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1562 (Fed. Cir. 1988). The Chiron court's reasoning, however, was that the instruction that the jury should apply the "clear and convincing" standard to the evidence made exclusion of an instruction on the presumption of validity not to be error.
Judge Bryson's reasoning suggests that should Uroprep pursue an instruction on the proper evidentiary standard, his ruling should not affect the outcome. It seems curious, however, that such a fundamental principle regarding the implication of the patent grant -- that a patent is statutorily entitled to the presumption -- should be kept from the fact-finder. These are strange days indeed.