The Federal Circuit’s recent opinion in Pacific Biosciences of California, Inc. v Oxford Nanopore Technologies, Inc. et al. reminds us that new trial motions are hard to win, even when the adversary violates a pretrial motion in limine (MIL) order. Rather, the district court judge’s curative instructions and procedures to avoid future violations of a MIL may be sufficient to enable a jury render a just verdict. Moreover, because the district judge’s evidentiary rulings are subject to the deferential abuse of discretion standard of appellate review, overturning the denial of a motion for a new trial in such circumstances will be difficult to overturn.

District Court Trial

In March 2020, just as the COVID-19 pandemic led to wide-scale shutdowns across the nation, an infringement trial began in the District of Delaware between plaintiff Pacific Biosciences of California (“PacBio”) and defendants Oxford Nanopore Technologies Inc. and Limited (collectively “Oxford Nanopore”). The trial involved patents claiming methods for sequencing nucleic acids such as DNA.

Before trial, the district judge granted PacBio’s MIL to prevent Oxford Nanopore from presenting argument or evidence about the potential consequences of the litigation. Still, the night before opening statements in the trial, Oxford Nanopore informed PacBio that it intended to mention the relevance of the DNA-sequencing technology at issue to dealings with COVID-19 and other viruses. PacBio did not object to Oxford Nanopore’s intended statements before trial started.

During opening statements, both parties acknowledged COVID-19 and the relevance of the claimed DNA-sequencing technology in dealing with such viruses. In its opening statement, Oxford Nanopore also asserted that PacBio was seeking to exclude Oxford Nanopore’s products from the market. Immediately after opening statements, PacBio then objected to Oxford Nanopore’s opening for violating the MIL Order, moved for curative instructions, and sought to prohibit further statements claiming that PacBio was attempting to take “coronavirus technology off the market.”

After a hearing on the motion, the district court found that Oxford Nanopore had violated the MIL Order with its statements regarding COVID-19. The district judge agreed to give the curative instructions to the jury requested by PacBio. In addition, the judge ordered the parties that they were to disclose to each other “any reference, any evidence, any suggestion” that they planned to make concerning coronavirus. The court also ordered the parties to bring any disputes arising from these disclosures to the court’s attention “before the witnesses take the stand.” For the remainder of the trial, neither party violated the MIL Order or the procedure instituted by the district court.

At the end of trial, the jury returned a verdict finding all the asserted claims infringed by Oxford Nanopore, but also finding all the claims invalid for lack of enablement under 35 U.S.C. §112. PacBio moved for a new trial under Fed. R. Civ. P. 59 arguing that Oxford Nanopore’s references to COVID-19 in its opening that violated the MIL Order were so prejudicial that the case should be retried. The district court denied PacBio’s motion finding that there was no indication that the jury was inflamed, not careful, or otherwise failed to properly consider the evidence because of the mentions of COVID-19.

Federal Circuit Appeal

On appeal, PacBio challenged the district court’s denial of its motion, arguing that a new trial was indeed warranted because of Oxford Nanopore’s references in its opening to COVID-19 and the possible consequences that a verdict against Oxford Nanopore would have in combating its spread.

In reviewing the denial of a new trial, the Federal Circuit follows the law of the district court’s regional circuit, in this case, the Third Circuit. In the Third Circuit, a new trial should only be granted when “the jury’s verdict is against the great weight of evidence and either is a miscarriage of justice or cries out to be overturned.” In cases involving improper remarks made by a party, a new trial is considered proper if “it is reasonably probable those prejudicial remarks influenced the jury’s verdict.” On appeal, denials of motions for a new trial are reviewed under the abuse of discretion standard because “the trial judge was present and able to judge the impact of counsel’s remarks” at trial.

Following these standards, the Federal Circuit affirmed the district court’s denial of PacBio’s new trial motion. The district court denied the motion because “there was an insufficient likelihood that the improper opening remarks had an adverse impact on the ultimate verdict to justify a new trial in this case.” On appeal, the Court concluded that, given all the circumstances, it did not see a basis for disturbing this determination. To support its conclusion, the Federal Circuit set forth several reasons why the district court’s actions taken after opening statements mitigated any risk of unfair prejudice. In addition, the Court compared this situation to past Third Circuit precedents.

Circumstances Supporting the Decisions

The Federal Circuit recognized that Oxford Nanopore had notified PacBio of its intention to mention COVID-19 in its opening the night before opening statements. Rather than object to the mention of COVID-19 before openings statements began, PacBio had instead gone forward with its opening first, mentioning the possible connection between COVID-19 and the technology at issue, and then let Oxford give its opening statement. It was only after Oxford Nanopore had made its opening statement that PacBio raised its objection. The Court noted that the district court had sustained PacBio’s objections and granted its requested curing instructions. The Federal Circuit also noted that after opening statements, Oxford Nanopore did not refer to COVID-19 again or violate the MIL Order.

The Federal Circuit also gave weight to the district court’s mitigating procedure requiring the parties to disclose “any reference, any evidence, any suggestion that” they might make in the future concerning COVID-19 and to bring any disputes to the court’s attention for resolution before the subject was mentioned to the jury. The Court recognized that the district court used this procedure during trial to prevent evidence from reaching the jury that it deemed prejudicial.

Finally, the Federal Circuit noted the care the district court took with regards to PacBio’s motion for a new trial. Although PacBio waited until after the verdict to request a new trial, the district court did not deny the motion as forfeited, but, rather, addressed and rejected PacBio’s request on its merits after considering the relevant circumstances. The Federal Circuit found the district court conclusions that there was “no indication of any sort that the jury did anything other than what it was supposed to do” to be reasonable.

Factors Distinguishing Certain Precedents

The Federal Circuit also distinguished the district court’s decision from three Third Circuit opinions relied on by PacBio. In so doing, the court illustrated the high level of misconduct needed to raise sufficient concerns of prejudice that warrant a new trial. The timing and isolated character of the improper statements, along with mitigating and corrective procedures, were important factors that distinguished the present case from the circumstances in the following cases cited by PacBio:

(i) Fineman v. Armstrong World Industries, Inc. In Fineman, during closing arguments, plaintiff’s counsel testified as to his own truthfulness and trustworthiness, made up unsupported facts that were not in evidence about the credibility of defendant’s witnesses and accused them of being “liars” and “perjurers,” and levied “an unadorned, disparaging attack” upon defense counsel throughout his summation. The Federal Circuit pointed out that this behavior was an example of the level of egregious conduct that supported a district court’s assessment of prejudice warranting a new trial.

(ii) Blanche Road Corp. v. Bensalem Township. In Blanche Road, the Third Circuit affirmed a district court’s assessment that a retrial was needed. In this case, counsel had accused the trial judge, in front of the jury, of not treating him fairly, vouched for the credibility of witness testimony, and referred to documents not in the record during closing arguments.

(iii) Draper v. Airco, Inc. In Draper, the Third Circuit reversed a district court’s denial of a new-trial motion based on an exceptional combination of improper actions by plaintiff’s counsel during closing. The actions included: (1) attempting to prejudice the jurors through repeated inappropriate references to the defendants’ wealth; (2) asserting his personal opinion of the justness of his client’s cause; (3) prejudicially referring to facts not in evidence; and (4) without provocation or basis in fact, making several unprovoked and unfounded “prejudicial, vituperative, and insulting references to opposing counsel.” The court found that counsel’s “closing address to the jury contains such numerous and serious violations of so many rules of proper argument” that the curative instructions by the district court were not enough.


The bar for a new trial motion is a high one, and the bar for overturning the denial of a new trial motion is even higher. The circumstances justifying a new trial are quite extreme, as demonstrated by the case law analysis above. This behooves trial counsel to be aggressive in trying to prevent prejudicial information from ever reaching the jury. It is not enough to obtain a ruling that bars prejudicial argument and evidence from reaching the jury. Trial counsel must be alert to violations of those rulings and make timely objections, even during openings and closings. While such objections are exceptional, they must be made to avoid a waiver and the negative impact of failing to object on a subsequent new trial motion.