Law School Canons: FRE 403

Editor’s Note: Avery Welker is a rising 3L at Mizzou and likely a future patent attorney. He authors a series linking law school canonical cases with intellectual property counterparts, and the views expressed are his own. You can email ideas for future posts to  – Dennis Crouch

By Avery Welker

TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020) [decision link]

Last semester, I took a class on the Federal Rules of Evidence. We began the course by learning about relevance. As we progressed through the semester, relevance continued to stay, well, relevant! Many evidentiary analyses ended with the great gatekeeper of Federal Rule of Evidence 403, and our professor said that Rule 403 requires the dangers listed in Rule 403 to substantially outweigh the probative value of the evidence.[1] Our professor taught us that the Rule can limit relevant evidence but doesn’t always result in a sweeping exclusion, much to TecSec, Inc.’s delight during a 2020 appeal to the Federal Circuit.[2]

In 2010, TecSec asserted several patents against Adobe covering file-encryption methods transmitted over a data network.[3] The district court construed several terms in the patents on March 3, 2011, resulting in a judgment of noninfringement for Adobe.[4] However, the Federal Circuit reversed the judgment and construction of a term, remanding for further proceedings under the new term construction.[5] The case bounced up and down from the district court to the Federal Circuit.[6]

In October 2018, before trial, Adobe submitted a motion in limine to exclude any evidence of Adobe’s intent or willfulness to infringe TecSec’s patents between March 3, 2011 and October 18, 2013 unless TecSec agreed to allow the March 3, 2011 stipulation of noninfringement, order, and judgment, which Adobe argued were relevant to determining an infringer’s state of mind.[7] The district court granted Adobe’s motion and barred the evidence, stating that allowing TecSec to argue inducement of infringement is too prejudicial to Adobe without allowing Adobe to introduce the three documents it requested, and, if the court admitted the evidence, it would prejudice TecSec and confuse the jury.[8] Finally, the dispute went to a jury trial in late 2018.[9] After entering final judgment for Adobe (see a previous Patently-O post regarding this judgment here), TecSec (among other issues) appealed Adobe’s previous motion in limine.[10]

On appeal, Adobe attempted to protect the district court’s ruling on the motion in limine by arguing that the court was permitted to exclude the evidence because Rule 403 allowed the court to prevent unfair prejudice and avoid confusing the jury.[11] However, the Federal Circuit noted that Adobe’s presented applications of the Rule did not support such a sweeping exclusion of evidence.[12] The district court erroneously excluded an entire class of evidence (evidence of induced infringement after March 3, 2011) instead of excluding a piece or fixed set of evidence that would allow TecSec to present any other relevant and admissible evidence on the issue of induced infringement.[13]

Adobe’s motion scope addressed only whether Adobe could admit the March 3, 2011 claim construction results and TecSec’s stipulation; it did not bring up TecSec finding all evidence of inducement intent to determine a triable issue of infringement inducement after March 3, 2011.[14] The Federal Circuit found that Adobe’s motion in limine did not give the district court the basis to take the extreme measure of preventing the admission of all evidence of infringement inducement after March 3, 2011.[15]

Additionally, the Federal Circuit found that the district court determined that admitting the documents Adobe requested would unduly prejudice TecSec, but TecSec never indicated that it would drop its inducement claim after March 3, 2011 if the documents were introduced into evidence.[16] The Federal Circuit noted that the district court should have listened to whether TecSec would drop its inducement suit for the post–March 3, 2011 time frame before determining that the evidence would be too prejudicial to TecSec.[17] The Federal Circuit reversed the district court’s decision to exclude evidence of infringement inducement post–March 3, 2011.[18]

[1] Fed. R. Evid. 403.

[2] TecSec, Inc. v. Adobe Inc., 978 F.3d 1278 (Fed. Cir. 2020).

[3] Id. at 1282–83.

[4] Id. at 1283.

[5] Id.

[6] Id. at 1283–85.

[7] Id. at 1284.

[8] Id. at 1284–85.

[9] Id. at 1283–85.

[10] Id. at 1286. The motion in limine resulted in the court excluding TecSec’s expert witness deposition testimony of Adobe’s alleged induced infringement after March 3, 2011. Id.

[11] Id. at 1288.

[12] Id.

[13] Id.

[14] Id.

[15] Id. at 1288–89.

[16] Id. at 1289.

[17] Id.

[18] Id.

15 thoughts on “Law School Canons: FRE 403

  1. 4

    Looks like my Pal Shifty has finally obtained a “last word” with the editorial timing , as even thought the “reply” tags are open in the preceding thread, no further processing is occurring.

    (The message below was entered from my side, but let’s see what the editors do):

    Plenty have been said about your “tactics” — so (again), thank$$$ for that.

  2. 3

    This morning’s Thaler opinion is short, sweet, and to the point. I admire the elegance of its brevity.

    1. 3.1

      This leading part of today’s Fed. Cir. Thaler decision is indeed “short and sweet:”
      “In resolving disputes of statutory interpretation, we ‘begin[] with the statutory text, and end[] there as well if the text is unambiguous.’ BedRoc Ltd. v. United States, 541 U.S. 176, 183 (2004). Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.”
      But, the decision does go on at some length to demolish the Appellant’s arguments that AI or other non-persons can be a statutory inventor.

      1. 3.1.1

        But no sanctions against Thaler because facially disgusting and wrong “arguments” that are “interesting” to the world’s worst and most ignorant people and their equally depraved lawyers must be treated very seriously!

        Because reasons.

      2. 3.1.2

        “At length”? The whole thing is only 11 pages long. As I said, admirably brevity. I was expected a 50 page gut-buster, given the significance of the case.


          Seems to me that this was more of a ripple on pop science/pop law blogs than in any actual science or law. The far more interesting questions would have been to delve into whether Thaler was eligible to apply for the patents, whether DABUS was capable of assigning its rights in the invention to Thaler, and whether Thaler was the appropriate party to vindicate DABUS’s rights as an inventor.


            Agreed. The Fed. Cir. treated this with more legal respect than it deserved, since 103 was not in issue. Yes, other questions could be added, such as questioning proper patent attorney representation of the alleged AI inventor, legal incompetence of the alleged inventor to sign or assign anything thus needing legal guardianship appointment for the alleged inventor, who has Rule 56 duties, etc.

    2. 3.2

      The only questions now are: (1) Will the inevitable cert petition present a fresh take on the arguments, or just end up as a rehash of what’s come before? and (2) Will any amici take interest aside from that random Israeli guy?

  3. 2

    “Many evidentiary analyses ended with the great gatekeeper of Federal Rule of Evidence 403, and our professor said that Rule 403 requires the probative value of the evidence to substantially outweigh the negative effects of Rule 403.”

    Don’t you have this backwards?

      1. 2.1.2

        It’s still backwards. The rule considers if the probative value “is substantially outweighed“. Right now, you have the probative value outweighing. Please fix, thanks!

  4. 1

    Surprised to see a case from ED VA still dragging on not fully decided after 12 years and three prior trips to the Fed. Cir.
    Not exactly a “rocket docket” case.

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