Order Of Proof Did Not Change Burden Of Persuasion

In patent infringement action, while the trial court could restructure the presentation of proof (to “require patentees to present their objective evidence during their case in chief to make an efficient use of time and resources during trial”) under FRE 611(a), the party challenging the validity of the patent still bore the ultimate burden of persuasion, in In re Cyclobenzaprine Hydrochloride Extended Release Casule Patent Litigation, __ F.3d __ (Fed. Cir. April 16, 2012) (Nos. 2011-1408, , 2011-1409, 2011-1399, 2011-1402, 2011-1405, 2011-1400, 2011-1403, 2011-1406, 2011-1401, 2011-1404, 2011-1407)

FRE 611(a) provides the trial judge with discretion to control the order of proof: Under this rule, the trial court may “exercise reasonable control over the mode and order of examining witnesses and presenting evidence so as to: (1) make those procedures effective for determining the truth; (2) avoid wasting time; and (3) protect witnesses from harassment or undue embarrassment.” Case have recognized that this rule provides the judge with discretion to vary the order of proof in appropriate circumstances. See, e.g., FRE 611(a) And Judicial Short-Cuts To Proof. The Federal Circuit recently considered the application of this rule in a patent infringement action.

In the case, three defendant companies filed abbreviated new drug applications with the Food and Drug Administration and “alleged that their generic products would not infringe” the plaintiff’s patent (regarding skeletal muscle relaxants and a method for relieving muscle spasms), “or that the patent was invalid or unenforceable.” The FDA granted approval. The exclusive licensee of the patents filed a patent infringement action. At a bench trial, the defendants claimed the patent was invalid because it was “obvious” under 35 U.S.C. § 103 (invalidating a patent claim "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art"). In a bench trial, the district court invalidated the patent as obvious. The Federal Circuit disagreed on appeal and reversed.

On appeal, the circuit noted that district courts often restructure or alter the presentation of evidence on the validity of patents:

It is true that, in most cases, it is a patentee who chooses to offer proof of objective considerations as evidence of nonobviousness. It is also true that district courts will often impose a discovery obligation on patentees to be the first to produce evidence relating to objective considerations. And, it is true that district courts also often require patentees to present their objective evidence during their case in chief to make an efficient use of time and resources during trial, relying on their authority under Federal Rule of Evidence 611(a) to structure the presentation of evidence. Those realities do not change the fact that the party challenging validity bears the burden of persuasion throughout the litigation.
In re Cyclobenzaprine, _ F.3d at _ n.5 (citing Microsoft Corp. v. i4i Ltd., 564 U.S. _, 131 S. Ct. 2238 (2011) (holding that a claim asserting a defense that a patent is invalid requires proof by clear and convincing evidence)).


Thus, while FRE 611(a) provides the trial court with discretion on the manner of proof, it does not change the ultimate burden of proof and persuasion in the case. See generally i4i Ltd., 564 U.S. _, 131 S. Ct. at 2245 & n.4 (Explaining that “the term ‘standard of proof’ specifies how difficult it will be for the party bearing the burden of persuasion to convince the jury of the facts in its favor. Various standards of proof are familiar — beyond a reasonable doubt, by clear and convincing evidence, and by a preponderance of the evidence.”) (citation omitted).

For another case example in which FRE 611(a) allowed the trial court to alter the order of proof, see Mays v. Springborn, 575 F.3d 643, 649 (7th Cir. 2009) (per curiam) (in prisoner civil rights action alleging, in part, that officials unreasonably censored plaintiff prisoner’s copy of a magazine containing an article on a prison riot, trial judge did not err under Rule 611(a) by interrupting the plaintiff’s presentation of evidence, then directing the defense to present evidence outside the presence of the jury, providing the plaintiff the chance to present further evidence, and finally granting judgment as a matter of law for the defense without allowing the jury to consider the claim after concluding the defense “had presented a legitimate penological reason for censoring the pages, had removed no more pages than necessary, and the plaintiff “had failed to present any evidence to show that the censorship was an exaggerated response”).

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