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8/9/2019 txed-2-07-cv-00262-663
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
TYCO HEALTHCARE GROUP LP,
MALLINCKRODT INC. and LIEBEL-FLARSHEIM COMPANY,Plaintiffs,
v.
E-Z-EM, INC. and ACIST MEDICAL
SYSTEMS, INC.,
Defendants.
CIVIL ACTION NO. 2:07-CV-262 (TJW)
ORDER
Before the Court are the parties Motions in Limine. [Dkt. Nos. 586, 601, 605] The Court
conducted a pretrial hearing on May 28, 2010 during which the Court heard arguments about
these motions. The Court ruled from the bench as follows:
I. Plaintiffs Motions in limine1. Preclude defendants from calling Innovasafe, Inc. as a witness at
trial
If a party fails to provide information or identify a witness as required by Rule 26(a) or
(e), the party is not allowed to use that information or witness to supply evidence . . . at a trial,
unless the failure was substantially justified or harmless. Fed. R. Civ. P. 37(c)(1). This motion
is GRANTED.
2. Preclude testimony from Lyn DriskillThe parties have AGREED to this motion. This motion is GRANTED.
3. Preclude examination of third party witnesses based upon documentsthat defendants marked Confidential or Highly Confidential
Mallinckrodt argues that E-Z-EM revealed to third-party witnesses documents that were
marked Confidential but then would not allow Mallinckrodt to cross-examine those witnesses
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with other similarly marked documents. For example, during the deposition of Stephen
Bellofatto who is a product developer by an outside company that implements the use-related
features of E-Z-EMs Empower injectors, Mr. Ruttenberg attempted to question Mr. Bellofatto
about a design document. Mr. Bennett allegedly refused to allow Mr. Bellofatto look at the
document.
To the extent that either party hindered the cross-examination of a witness on a topic, the
Court will not allow that party to present the witness testimony on that topic at trial. The Court
GRANTS this motion in part.
4.
Preclude admission of the dollar amounts in settlement agreementsmade under the threat of litigation
Mallinckrodt argues that the evidence of the amounts of prior settlements made under the
threat of litigation raises an unreasonable risk of unfair prejudice under Fed. R. Evid. 403. The
general rule is that royalties paid to avoid litigation are not a reliable indicator of the value of a
patent. See Automation Corp. v. Microsoft Corp., 587 F.Supp.2d 794, 801 (E.D. Tex. 2007).
However, where a settlement agreement involves the same patent or technology, they may be
highly relevant, notwithstanding their origins. SeeResQNet.com, Inc. v. Lansa, Inc., 594 F.3d
860 (Fed.Cir.2010); Datatreasury Corp. v. Wells Fargo & Co., 2010 WL 903259 (E.D. Tex.
2010).
This motion is GRANTED as to all licenses except those that are sufficiently similar.
5. Preclude evidence and argument concerning product liability lawsuitsand judgments
This motion is GRANTED per Rule 403.
6. Preclude evidence of reexamination proceedings of the patent-in-suitThe fact that there are reexamination proceedings and a decision has been made by the
PTO is not probative of any element regarding any claim of invalidity. Procter & Gamble Co. v.
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Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed.Cir. 2008) (a requestor's burden to show that
a reexamination order should issue from the PTO is unrelated to a defendant's burden to prove
invalidity by clear and convincing evidence at trial). This motion is GRANTED.
7. Preclude evidence and argument concerning Tycos former CEOThe parties have AGREED to this motion. This motion is GRANTED.
8. Preclude evidence or testimony regarding any design-around of thepatent-in-suit or claim that such design-around is a non-infringing
alternative
Mallinckrodt sought and E-Z-EM obstructed discovery regarding E-Z-EMs design-around
efforts. E-Z-EM is not permitted to introduce evidence that it declined to produce as requested.
See Fed. R. Civ. P. 37(c)(1). This motion is GRANTED as to actual design-around efforts. This
motion is denied as to possible non-infringing alternatives.
9. Preclude testimony or evidence regarding alleged spoliationThis motion is DENIED. The parties are permitted to present evidence of spoliation.
10.Preclude testimony or evidence to the jury relating to the defenses oflaches, equitable estoppel, and inequitable conduct
This motion is GRANTED with a narrow exception. E-Z-EM is entitled to present
evidence for the purpose of overcoming the presumption of validity and to rebut the claim of
willfulness.
11.Preclude reference to Kirklands representation of high-profile clientsThe parties have AGREED to this motion.
12.Preclude defendants experts from testifying beyond the scope of theirexpert reportsThe parties have AGREED to this motion.
13.Preclude defendants from presenting evidence or argumentcomparing their accused devices with plaintiffs products
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This motion is GRANTED with a narrow exception for limited comparison. Mallinckrodt
is seeking lost profits. The parties may present evidence comparing the accused products to the
embodying product for the limited purpose of demonstrating (or rebutting) their similarity. The
parties may not engage in a claim element-by-claim element comparison of the products.
Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, 2010 WL
1644062, at * 1518 (Fed. Cir. 2010) (allowing product-to-product comparison for the limited
purpose of demonstrating lost profits). E-Z-EM is also permitted to show that Plaintiffs
products do not practice the invention for the purpose of showing the value of the patent.
14.Preclude any experts beyond the maximum number permitted in theCourts discovery order
This motion is GRANTED. The parties are permitted to rely upon the opinions of the first
five designated experts.
II. E-Z-EMs Motions in Limine1. Preclude infringement theories beyond the scope of Mallinckrodts
infringement contentions
This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1).
2. Preclude expert testimony beyond the expert reports or aboutdocuments or materials that would not otherwise be admissible
This motion is GRANTED in part. See Fed. R. Evid. 703 (Facts or data that are otherwise
inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless
the court determines that their probative value is assisting the jury to evaluate the experts
opinion substantially outweighs their prejudicial effect.); 803 (not excluded from the hearsay
rule are statements contained in published treatises, periodicals, or pamphlets on a subject of . . .
science . . . , established as a reliable authority by the testimony or admission of the witness or by
other expert testimony).
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3. Preclude testimony about jury consultants and other trial consultantsThis motion is AGREED and GRANTED.
4. Preclude testimony about counsels clients.This motion is AGREED and GRANTED.
5. Preclude testimony about counsel for E-Z-EM and counsel for third-party witnesses
This motion is GRANTED in PART. To the extent that parties are seeking to introduce
evidence tending to show bias, the motion is DENIED.
6. Preclude testimony about counsels clients.This motion is AGREED.
7. Preclude testimony about motions in limine, pretrial objections, andobjections during depositions
This motion is GRANTED per rule 402. The Court refers this motion to Judge
Everingham for case-by-case ruling.
8. Preclude evidence not previously produced or disclosed pursuant todiscovery obligations
This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1). The Court refers this motion to
Judge Everingham for case-by-case ruling.
9. Preclude questions calculated to invoke assertion of theattorney/client privilege or the work-product doctrine in the presence
of the jury
This motion should be DENIED. It is unclear how E-Z-EM would establish that suspect
questions were calculated to achieve an inappropriate result.
10.Preclude testimony about claim constructions that are different fromor contrary to the Courts rulings
This motion is GRANTED per the Courts claim construction order.
11.Preclude testimony about prior legal positions and arguments takenby the parties
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As to briefs, pleadings, infringement or invalidity questions and the like, this motion is
GRANTED. As to prior depositions, requests for admissions, interrogatories, et cetera, this
motion is DENIED.
12.Preclude evidence regarding claims or contentions previously assertedby a party but have been dropped
This motion is GRANTED per rule 402 and 403. To allow such evidence would
discourage parties from streamlining issues for trial purposes.
13.Preclude evidence regarding E-Z-EMs reliance on any opinion ofcounsel to rebut willful infringement
This motion is DENIED per the Courts order of May 25, 2010. Even if E-Z-EM elects
not to pursue the advice-of-counsel defense to the willful infringement claims, it has already
waived privilege.
14.Preclude evidence that E-Z-EM is owned by a foreign companyThis motion is GRANTED with a limited exception. The parties are entitled to voir dire on
whether jurors own stock in publicly-traded companies.
15.Preclude evidence regarding fee arrangements of the partiesThis motion is GRANTED pursuant to rule 402.
16.Preclude evidence regarding correspondence between or amongcounsel
This is GRANTED as it relates to improper evidence of offers of settlement under rule 408.
17.Preclude evidence of E-Z-EMs knowledge of the patent prior to thelawsuit
This motion is DENIED.
18.Preclude evidence that the named inventors advised Plaintiffs patentprosecution counsel about the existence and relevance of prior art to
the 710 patent application
This motion is GREANTED. To the extent a witness asserted a claim of privilege during a
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deposition, the witness is not entitled to testify about the withheld topic on the stand. To allow
the witness to testify on those subjects would be allowing a party to use privilege as a sword and
shield. See Cunningham v. Chapel Hill, ISD, 438 F.Supp.2d 718, 724 (E.D. Tex. 2006)
([Defendant] should not be allowed to prevent Mosely or other trustees from being deposed
with regard to the Boards motivations for denying Cunningham's Level III grievance and then
call a trustee at trial to testify about these motivations.).
19.Preclude testimony that Mr. Humphrey asked the inventors of theirawareness of prior art.
This motion is GRANTED as to Mr. Humphrey. This motion is DENIED as to all others.
20.Preclude testimony regarding diligence in reduction to practiceThis motion is GRANTED as to Mr. Humphrey and DENIED as to all others, except to the
extent it is covered by a previous ruling.
21.Preclude testimony that draft documents represent the accusedproducts
This motion is DENIED. To the extent that a document introduced does not reflect the
accused product, E-Z-EM can demonstrate as much during cross-examination. This testimony
shows product development and would be relevant to infringement and potentially damages.
22.Exclude deposition testimony of any witness who is to give livetestimony at trial except for the limited purpose of impeachment
This motion is DENIED provided that the deposition use conforms with the requirements
of Fed. R. Civ. P. 32. Permissible uses include: impeachment, deposition of a 30(b)(6) witness,
and to present testimony of an unavailable witness. See Fed. R. Civ. P. 32(2)(4).
23.Preclude reference to prior claims of infringement against E-Z-EMThis motion is GRANTED pursuant to rule 402.
24.Preclude evidence of unsigned agreements
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The Court refers this motion to Judge Everingham for a case-by-case ruling.
25.Exclude the rebuttal report of Arthur J. Helmicki regarding validityThis motion is DENIED.
26.Preclude objections to introduction of metadataThis motion is DENIED. The Court refers this to Judge Everingham for a case-by-case
ruling.
SIGNED this day of
__________________________________________
T. JOHN WARD
UNITED STATES DISTRICT JUDGE
7th June, 2010.