Open Question: Use of IPR and CBM Institution Decisions in District Court

摘要

The issue of the admissibility and use of institution decisions will continue to be closely watched by both plaintiffs and defendants alike given the limited case law on the subject. To date and without Federal Circuit guidance, it appears that the determination of admissibility may require a case-by-case approach for decisions denying institution, given the varying factors such as different prior art, evidence, and reasons that a petition was denied, although at least one court appears to deny their use in any situation. The potential basis for the admissibility of instituted IPR or CBM petitions will be particularly noteworthy, including the use of such decisions to rebut any intent requirement for indirect infringement or willfulness allegations.