*1 Before the Court are eighteen motions in limine: fifteen filed by Plaintiff MicroVention, Inc. (“MVI”) and three filed by Defendant Balt USA, LLC (“Balt”). (Mots., Docs. 220, 223, 227, 230, 233.) Both Parties opposed and replied. (Opps., Docs. 260, 261, 262, 263, 269; Replies, Docs. 286, 289, 292, 296, 301.[1]) The Court heard oral argument on the motions during the parties' Final Pretrial Conference, held on November 18, 2022. For the reasons stated below, the Court GRANTS IN PART and DENIES IN PART the parties' motions.

I. PLAINTIFF'S MOTIONS IN LIMINE

A. MIL #1: All Testimony and References to the [redacted]

MVI's motion to exclude all testimony and references to the [redacted] is DENIED.

MVI contends that exclusion of references to the [redacted], including as a “comparable license” for determining a reasonable royalty in this case, is required because of Balt's failure to comply with the scheduling order and its disclosure obligations. (Mot., Doc. 247-1[2] at 6.) MVI argues that Balt failed to produce the [redacted] as a “comparable license” – despite being asked to produce any agreement that would be used as a “comparable license” for damages calculations multiple times throughout discovery – until it served the Expert Rebuttal Report of Jeffrey Kinrich, Balt's damages expert, and it never amended its damages contentions. (Id. at 11.) MVI argues that Balt's reliance on the [redacted] as a “comparable license” is a material shift in its damages theory which it therefore had a duty to disclose and that MVI is prejudiced by Balt's late disclosure because it did not have an opportunity to consult with its damages and technical expert or conduct discovery regarding the [redacted]. (Id. at 11-13.)

Balt argues that it did not receive the [redacted] in discovery until June 19, 2020, after it had served both its invalidity contentions and damages contentions. (Opp., Doc. 259-1 at 6.) Balt contends that there was no impropriety in its expert, Kinrich, relying on the Agreement in his rebuttal report, because he was responding to MVI's opening expert report by Patrick Kennedy, which addressed the agreement. (Id. at 6-7.) Balt argues it had no duty to supplement its damages contentions, the [redacted] is highly relevant, and there is no prejudice to MVI because it is a party to the Agreement and its own expert assessed it. (Id. at 9-10.)

The Court agrees that there was no prejudice here to MVI by any failure to supplement and it was therefore harmless. See Fed. R. Civ. P. 37(c)(1). The case that MVI primarily relies on in support of its argument involves a plaintiff who failed to produce a license to the defendant that it then relied on in supplemental damages contentions. See Netfuel, Inc. v. Cisco Sys. Inc., No. 18-2352, 2020 WL-4381768, at *1-2 (N.D. Cal. July 31, 2020). Here MVI is objecting to references to its own document, which its own expert addressed in his opening report. MVI states that it would have “had different discussions with its damages expert and its technical expert and would likely have conducted further and additional discovery in this case directed at the [redacted] and parties to the same” had Balt disclosed its anticipated use earlier. (Mot., Doc. 247-1 at 12-13 (emphasis omitted).) As Balt points out, these general references to further discussions and discovery do not here demonstrate prejudice, particularly where MVI is referring to a licensing agreement to which it is a party.

B. MIL #2: All Testimony, and Evidence Regarding Balt Modified Manufacturing Procedures J and K

*2 MVI's Motion to exclude all testimony and evidence regarding Balt's Modified Manufacturing Procedures, Rev. J and K, (“Modified MP”) is GRANTED.

MVI argues that the Modified MP should be excluded because (1) Balt did not timely disclose its intent to rely on products made pursuant to the Modified MP and (2) the products cannot serve as non-infringing alternatives because they did not exist at the time of the first infringement and should be excluded under Federal Rules of Evidence 401, 402, and 403. (Mot., Doc. 247-1 at 15-21.) Balt argues that it disclosed its redesigns promptly after they were adopted and that the redesigns were available at the beginning of the alleged infringement period even if they were not on the market. (Opp., Doc. 259-1 at 10-15.)

MVI seeks to recover damages under a “reasonable royalty” theory. Upon a finding of infringement, the patentee can recover damages under two alternate categories of infringement compensation: lost profits or the reasonable royalty the patentee would have received through arms-length bargaining. AstraZeneca AB v. Apotex Corp., 782 F.3d 1324, 1329-30 (Fed. Cir. 2015); see also 35 U.S.C. § 284. In a reasonable royalty case, injury must be assessed “according to what [MVI] could have insisted on as compensation for licensing its patents to [Balt] as of the beginning of [Balt]'s infringement.” AstraZeneca, 782 F.3d at 1334.

One way a defendant can show the reasonable royalty would be lower is by demonstrating the availability of a non-infringing alternative. Id. at 1340-41. In the context of a “lost profits” damages analysis, “[t]he critical time period for determining availability of an alternative is the period of infringement for which the patent owner claims damages, i.e., the ‘accounting period.’ ” Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d 1341, 1353 (Fed. Cir. 1999). “When an alleged alternative is not on the market during the accounting period, a trial court may reasonably infer that it was not available as a noninfringing substitute at that time.” Id. The burden to rebut this inference rests on the accused infringer, who must show that the substitute was available, with more than “[m]ere speculation or conclusory assertions.” Id.

It is not entirely clear whether a non-infringing alternative not on the market at the beginning of infringement can be considered “available” in a reasonable royalty case. See Micro Chem., Inc. v. Lextron, Inc. (“Micro Chem I”), 317 F.3d 1387, 1393 (Fed. Cir. 2003) (noting that “[t]his court has not had occasion to address whether the holding of Grain Processing has applicability in the reasonable royalty context” and not deciding the question). Because a reasonable royalty analysis focuses entirely on the point of hypothetical negotiation at the beginning of the infringement, there is some reason to think that the Grain Processing analysis would not apply or would be more stringent in reasonable royalty cases. However, if a non-infringing alternative could be quickly and easily implemented at the time of hypothetical negotiations, it stands to reason that bargained-for reasonable royalty would be reduced. The Court will thus assume that the Grain Processing standard is applicable here. See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1373 (Fed. Cir. 2008), mandate recalled and amended by Mars, Inc. v. Coin Acceptors, Inc., 557 F.3d 1377 (Fed. Cir. 2009) (affirming district court's reduction of a royalty rate where the defendant probably could have, but did not, design an acceptable alternative).

*3 In its Responsive Damages Contentions, served April 6, 2021, Balt asserted that any reasonable royalty it would have negotiated with MVI would have been “minimal,” in part because of the “non-infringing alternatives and potential design-arounds available to Balt at the time of the hypothetical negotiation.” (Damages Contentions, Doc. 247-3 at 9.) Though Balt indicated at several points that it would be relying on the availability of non-infringing alternatives, it never specified the products made pursuant to the Modified MP as the alternatives it would rely on, and Balt never amended or updated its damages contentions. Balt disclosed the Rev. J manufacturing procedure on June 11, 2021, and the Rev. K manufacturing procedure (the procedure Balt currently continues to use) on July 30, 2021, the last day of fact discovery. (Opp., Doc. 259-1 at 11.) It also served on the last day of discovery, July 30, 2021, its Response to Plaintiff's Seventh Set of Interrogatories, wherein Balt identified for the first time that its Optima Coil Products made pursuant to the Modified MP were non-infringing alternatives that were available at the time of a hypothetical reasonable royalty negotiation. (Doc. 247-7 at 4.) Balt stated that the Modified MP took about four months to implement (“beginning on or around April 7, 2021,” i.e., the day after Balt served its Responsive Damages Contentions that did not identify the redesigns) and “involved engineering and manufacturing expenditures of approximately $60,213.66.” (Id. at 5.)

The Federal Rules of Civil Procedure require parties to timely supplement damages contentions. See Fed. R. Civ. P. 26(e); see also Looksmart Grp. v. Microsoft Corp., 386 F. Supp. 3d 1222, 1227 (N.D. Cal. 2019). Balt argues that it fulfilled its duty to disclose by turning over the Modified MP either a few days before they were adopted, in the case of Rev. J., or a few days afterward, in the case of Rev. K. It further argues that MVI was not prejudiced by the timing of the disclosure. Balt is incorrect on both counts.

Balt gives no justification why it should be permitted to wait until it adopted the Modified MP before producing them. Balt itself argues that this is the “rare case” where the accused infringer has actually implemented a redesign. (Opp., Doc. 259-1 at 12.) Balt waited until the last day of fact discovery to disclose the Rev. K redesign and to disclose that the Modified MP would be relied on as non-infringing alternatives, which prejudiced MVI. The designs should have been disclosed as soon as they were conceived. Moreover, Balt intends to rely on a fact witness, whom MVI did not have a chance to depose regarding the issue of availability, to establish commercial acceptability in order to show that the non-infringing alternatives were available at the time of the hypothetical negotiation. (Id. at 16.)

It is doubtful that Balt would be able to show availability even if it had timely disclosed its redesigns. Balt did not develop and implement the alleged non-infringing alternatives until 2021. (Opp., Doc. 259-1 at 11.) The beginning of the alleged infringing period for two of the asserted patents was September 2017, nearly four years prior, and the instant lawsuit was filed in 2019. (Mot., Doc. 247-1 at 19); see Tyco Healthcare Grp. LP v. Applied Med. Res. Corp., No. 06-151, 2009 WL 10676782, at *3 (E.D. Tex. Mar. 31, 2009) (“[I]t is unlikely that products developed well after the date of the hypothetical negotiation are relevant to the question of whether acceptable, non-infringing alternatives existed at that time.”). Similarly, Balt's claimed inability to provide the Rev. K redesign any earlier than the final day of fact discovery cuts against any argument that the redesign could readily have been adopted in 2017. Finally, Balt states that its evidence of commercial acceptability will be testimony regarding sales of the redesign. (Opp., Doc. 259-1 at 16.) It is unlikely that this alone would demonstrate that Balt “would have known it would be acceptable to consumers at the time of infringement.” Micro Chem., Inc. v. Lextron, Inc. (“Micro Chem II”), 317 F.3d 1387, 1393 (Fed. Cir. 2003) (emphasis added).

C. MIL #3: Transfer Pricing Document and End User Sales Data Contained in Same

MVI's motion to exclude reference to or reliance on a document or data therefrom referred to as the “Annual End User Data for Optima in the EMEA Region 2018-2021” (“Transfer Pricing Document”) is DENIED.

*4 MVI argues that it was first served with the Transfer Pricing Document on September 30, 2021, six days after the service of Kinrich's Rebuttal Report and two months after the close of fact discovery. (Doc. 251-1 at 5.) Under Northern District of California Patent Local Rule 3-9 and Federal Rule of Civil Procedure 26(e)(1), MVI contends, Balt was obliged to disclose the document in discovery as factual support for its damages contentions. (Id. at 7.) Additionally, MVI argues, it made several requests in discovery that the document was responsive to. (Id. at 9-10.) MVI argues that it was prejudiced because it had no opportunity to conduct discovery or cross-examine witnesses about the preparation or accuracy of the document. (Id. at 6.)

Balt argues that it was not required under Rule 26 to produce the document in discovery, as it did not rely on the data therein for its damages calculations, but only to critique Kennedy's calculations of the average Optima sale price. (Opp., Doc. 259-2 at 7.) Moreover, Balt argues, it was not required to disclose the data under Local Rule 3-9, which requires a party to disclose “how and why it disagrees with” the opposing party's damages contentions, because MVI did not disclose that it intended to calculate the average sale price for the Optima using Balt France's average sale price rather than the transfer price Balt USA receives for the product in its damages contentions. (Id. at 8.)

The Court agrees with Balt that it may rely on the Transfer Pricing Document and the data therein to rebut Kennedy's damages contentions. Balt's expert reasonably sought this information in order to refute Kennedy's calculations of Balt France's average sale price in his expert report. (Opp., Doc. 259-2 at 6.) Balt did not rely on the document in its own damages contentions. Nor was Balt required to produce the document in response to MVI's discovery requests. MVI points to two requests for production that it made that it says the Transfer Pricing Document is responsive to: (1) a request for documents showing “revenue and gross profit and net profit from Accused Products ... manufactured in the United States ... but sold outside the United States” and (2) a request for “transaction-level sales by date, country, customer ... including ... sale price, cost of goods sold, and gross profit.” (Mot., Doc. 251-1 at 9-10 (emphasis omitted).) However, as Balt points out, neither of these requests requires Balt France's sale prices to end users be provided; Balt USA's revenue comes from its sales to Balt France, which it considers the “customer.” There was no impropriety in how this document came into the case and therefore no reason to exclude it.

D. MIL #4: Balt's In-House Tension Testing

MVI's motion to exclude use of or reference to Balt's in-house tension testing is GRANTED.

MVI argues that Balt should not be permitted to rely on its in-house tension testing because the testing was not timely disclosed and because Balt asserted attorney-client privilege in order to prevent MVI from conducting discovery regarding it. (Mot., Doc. 251-1 at 11.) Balt responds that its testing was disclosed during the fact discovery period, MVI's own in-house testing was disclosed much later, and MVI has suffered no prejudice. (Opp., Doc. 259-2 at 10.)

The Court agrees that Balt improperly shielded its in-house testing from disclosure during the discovery process, and admitting it would unfairly prejudice MVI. In the first instance, Balt is comparing apples to oranges in comparing its in-house testing to MVI's expert testing. Here, Balt's in-house engineers – not its experts – conducted testing regarding the relationship between the tension in the Balt Optima attachment tether and the device's performance during detachment, a central issue in the case. (Mot., Doc. 251-1 at 11-14.) This testing was being designed at least as early as February 2021. (See Lab Notebook Page, Doc. 251-10.) Moises Colin was Balt's 30(b)(6) witness regarding testing of the Accused Products, including testing regarding reliability of detachment. During his deposition on July 6, 2021, Colin claimed attorney client privilege multiple times when asked about testing. (Mot., Doc. 251-1 at 12-13; Colin Depo., Doc. 251-9 at 4-6.) Balt characterizes his repeated deflections as simply indicating that he had no knowledge of any tension testing. (Opp., Doc. 259-2 at 13.) However, the Court has reviewed the deposition transcript and has determined that Colin repeatedly refused to testify, not due to lack of knowledge, but based on an assertion of attorney-client privilege.[3] Testing was ongoing or had been completed, MVI sought to discover it, and Balt did not disclose it until the last day of fact discovery, July 30, 2021.

*5 Moreover, Balt did not disclose some of the testing materials until September 24, 2021, when Levine's rebuttal expert report was served. (Mot., Doc. 251-1 at 14; see also Opp., Doc. 259-2 at 11-12 n.4.) Balt argues that MVI was not prejudiced because it had the opportunity to depose Levine about the testing. (Opp., Doc. 259-2, at 12.) However, Levine did not conduct the testing. Rather, [redacted] (Levine Depo., Doc. 251-13 at 4.) Yet, by that time fact discovery had closed, and MVI had no opportunity to depose Black.

Balt's decision to not disclose the testing until the last day of fact discovery, and to not disclose all of the documents about the testing until months after the close of fact discovery, was neither substantially justified nor harmless. Balt may not invoke attorney-client privilege to avoid admitting to the existence of in-house tension testing and then rely on the in-house testing at trial. Accordingly, this evidence may not be used at trial.

E. MIL #5: Testimony of Aaron Black

MVI's motion to exclude the testimony of Aaron Black as a witness in this case is GRANTED.

MVI moves to prevent Aaron Black from testifying as a witness in this case because Black was never identified by Balt as a witness who may have knowledge regarding Balt's claims or defenses, and Balt never supplemented its disclosures to add him. (Mot., Doc. 251-1 at 17.) Balt argues that its expert, Levine, relied on Black to rebut MVI's late-disclosed infringement evidence, that MVI had notice of Black's involvement because Levine identified him in his rebuttal report and discussed his involvement during his deposition, and that Black would not be providing expert testimony. (Opp., Doc. 259-2 at 14-15.)

The Court agrees that Black may not testify, for many of the same reasons identified in the foregoing section. Though Balt characterizes Black's testimony as merely “context” for Levine's expert testimony, Black conducted the testing that Balt intends him to testify about. Black should have been disclosed to MVI earlier. This late disclosure appears to be an effort by Balt to delay disclosure of its in-house tension testing from MVI for as long as possible while maintaining the option to rely on it at trial.

F. MIL #6: Evidence or Argument on Indefiniteness

MVI's motion to exclude evidence or argument suggesting that the asserted claims of the asserted patents are indefinite is GRANTED IN PART.

Balt agrees it will not assert that any claim limitation is indefinite. (Opp., Doc. 259-3 at 4.) However, this does not preclude Balt from bringing in evidence or argument relevant to its properly disclosed defenses.

G. MIL #7: Evidence or Argument that Certain Claim Elements Are Not Met by the Accused Products

MVI's motion to preclude argument that certain claim elements are not met by the accused products is DENIED.

MVI seeks to exclude argument suggesting claim elements not identified as disputed in Balt's interrogatory responses are not met. (Mot., Doc. 246 at 9-10.) Balt agrees that it will only offer affirmative evidence of non-infringement as to limitations it identified as missing in its interrogatory responses. (Opp., Doc. 259-3 at 4-5.) As Balt points out, however, MVI as plaintiff “bears the burden of proof to show the presence of every element or its equivalent in the accused device.” See Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1301 (Fed. Cir. 2011). Balt must therefore be permitted to argue that MVI has failed to meet its burden as to any elements, though it is limited in the affirmative evidence that it can bring.

H. MIL #8: Argument or Evidence as to How Balt Selected the Amount of Displacement in the Accused Products

*6 MVI's motion to preclude argument or evidence as to how Balt selected the amount of displacement in the accused products is DENIED.

MVI argues that Balt should be precluded from presenting evidence or argument as to how it selected the [redacted] amount of displacement in the accused products in light of Brian Mitchell's deposition testimony [redacted] (See Mot., Doc. 246 at 11-12.) This does not provide a basis for exclusion; if witnesses at trial contradict their deposition testimony, MVI can cross-examine them about it.

I. MIL #9: Evidence and Argument of Any Design Around Effort by Balt

MVI's motion to exclude evidence and argument of any design around effort by Balt is DENIED.

MVI argues that because Balt's 30(b)(6) witness, Moises Colin, testified in his deposition that [redacted] Balt should be precluded from offering any evidence at trial of a design around. As above, this is not a proper use of a motion in limine. If witnesses contradict their deposition testimony, MVI may address it on cross-examination.

J. MIL #10: Evidence or argument that Balt Relied on Advice of Counsel

MVI's motion to preclude evidence or argument that Balt relied on the advice of counsel is GRANTED.

The Northern District of California Patent Local Rules, which the Court adopted for this case (see Order, Doc. 14 at 6), preclude parties from asserting reliance on advice of counsel as part of a claim or defense unless they, within 30 days after service by the Court of its Claim Construction Ruling:

N.D. Cal. Patent Loc. R. 3-7. The parties do not dispute that here Balt did not do so, and, for its part, Balt asserts that it does not intend to rely upon advice of counsel as a defense at trial. (Opp., Doc. 259-3 at 8.)

Balt seeks, through its opposition, to get assurances that “neither party will be permitted to comment on the existence or absence of opinions of counsel.” (Id.) This request was not presented in a properly-noticed motion in limine, and the Court does not rule on it.

K. MIL #11: Argument Regarding Unasserted Patents and Claims

MVI's motion to preclude argument regarding unasserted patents and claims is GRANTED IN PART.

MVI seeks to “preclude Balt from offering any argument, opinions, references, conclusions, testimony, and/or evidence of any kind regarding patents and claims that have been dismissed or dropped from this case.” (Mot., Doc. 246 at 17.) To the extent that MVI's motion is understood to preclude argument or evidence regarding MVI's dismissal of the ‘500 patent and claims that have been dismissed from the action, the motion is granted, as such evidence is not relevant and would be unfairly prejudicial. See TecSec v. Adobe Inc., No. 10-115, 2018 WL 11388472, at *6 (E.D. Va. Nov. 21, 2018). However, as Balt points out, MVI's motion is overbroad in that it could be understood to preclude argument regarding subject matter having to do with both the dismissed claims and the live claims. (Opp., Doc. 259-3 at 10-11.)

L. MIL #12: All Testimony and Evidence Regarding Alleged Foundational Nature or Economic Value of the [redacted]

*7 MVI's motion to exclude testimony and evidence regarding the foundational nature or economic value of the [redacted] is DENIED.

The [redacted] is a patent that is the subject of a licensing agreement between [redacted]. MVI contends this licensing agreement is comparable to the hypothetical negotiation that could have taken place over the asserted patents and intends to argue that the agreement should form the basis of the jury's calculation of reasonable royalty damages. (Mot., Doc. 250-1 at 6.) Balt's technical expert, Levine, opined that the [redacted] and the asserted patents are not technically comparable because the [redacted] is a “foundational patent to an entire segment of the medical device industry.” (Opp., Doc. 259-4 at 7.) Kinrich, Balt's damages expert, opined that, on the basis of Levine's opinion that the [redacted] is not technologically comparable to the asserted patents, the licensing agreement involving the [redacted] is not economically comparable. (Id. at 7-8.)

MVI seeks to preclude Balt's experts from describing the [redacted] as “foundational” under Rules 401, 402, and 403. (Mot., Doc. 250-1 at 6.) MVI argues that Balt's experts have not provided a definition for a “foundational patent” and the term will therefore be “unhelpful and confusing” to the jury. (Id. at 7.) Moreover, MVI argues, Kinrich should not be able to testify about the economic value of the [redacted] because he did not undertake an economic analysis of the patent. (Id. at 8-9.) Balt responds that the term “foundational” is neither inflammatory nor otherwise improper, and that Kinrich properly opined about the economic value of the licensing agreement on the basis of differences in the technological import of the patents and the availability of competitive alternatives to the patents MVI asserts. (Opp., Doc. 259-4 at 7-9.)

That MVI disagrees with Balt's characterization of the [redacted] and the licensing agreement's comparable worth to a hypothetical agreement between MVI and Balt is insufficient reason to exclude this evidence. MVI may cross-examine Balt's experts about their rationale for their various opinions.

M. MIL #13: Preclude Jeffrey Kinrich from Offering at Trial Undisclosed Expert Opinions or Additional Bases for Opinions Not Set Forth in His Expert Report

MVI's motion to preclude Jeffrey Kinrich from offering undisclosed expert opinions or additional bases for opinions not set forth in his expert report is DENIED.

Federal Rule of Evidence 26 requires an expert's report to contain “a complete statement of all opinions the witness will express and the basis and reasons for them.” Fed. R. Evid. 26(a)(2)(B)(i). MVI seeks to enforce this rule, in what Balt correctly terms a “follow the rules” motion in limine. (Opp., Doc. 259-4 at 9.) It is unnecessary for parties to file motions in limine for general instructions that the opposing party must follow the rules of civil procedure or the rules of evidence. Any concerns with testimony outside of the bounds of the expert report can be addressed through objection at trial.

N. MIL #14: Preclude Jeffrey Kinrich from Testifying to Conversations, Sources and Materials Not Identified in His Expert Report

*8 MVI's motion to preclude Jeffrey Kinrich from testifying to conversations, sources, and materials not identified in his expert report is DENIED on the same grounds as MIL #13.

O. MIL #15: Misleading Testimony and Evidence Regarding the Nature and Extent of Balt USA, LLC's Business

MVI's motion to exclude misleading testimony and evidence regarding the nature and extent of Balt USA, LLC's business is DENIED.

MVI seeks to exclude conflation of Balt USA, LLC with its parent company, Balt International, by attributing Balt International's decades of experience in the industry or its size to Balt USA. (Mot., Doc. 250-1 at 20.) Balt may offer evidence on the relationship between the parent and subsidiary companies. MVI has provided no valid basis for its exclusion.

II. DEFENDANT'S MOTIONS IN LIMINE

A. MIL #1: Reference to Trade Secret Case or Any Suggestion that Balt Stole MVI Documents

Balt's motion to preclude reference to the pending trade secret case between it and MVI or any suggestion that Balt or its employees stole MVI documents is GRANTED IN PART.

In the course of this action, it was discovered that former MVI employees now employed by Balt were in possession of more than fifty thousand MVI documents. (Mot., Doc. 248 at 9; Opp., Doc. 269-1 at 6-7.) MVI filed a second lawsuit for trade secret misappropriation against Balt. See MicroVention, Inc. v. Balt USA, LLC, Case No. 8:20-cv-02400-JLS-KES (C.D. Cal.). Balt moves to exclude any reference to the ongoing trade secrets case between it and MVI and to bar MVI from making any suggestion that Balt stole MVI documents, under Rules 402 and 403. (Mot., Doc. 248 at 6-11.)

MVI agrees that it will not mention the second lawsuit at trial, but states that it intends to introduce MVI documents found in Balt's possession relating to MVI's patented V-TRAK system as evidence of copying, in order to refute Balt's counterclaim of invalidity. (Opp., Doc. 268-1 at 7.) It further states that it “intends to elicit testimony to lay the foundation for Balt's possession of MVI documents, including the nature and scope of the documents found in Balt's possession and how Balt came to acquire them.” (Id.)

Copying is evidence of both non-obviousness and of willfulness for purposes of enhanced damages. See Apple Comput., Inc v. Articulate Sys., Inc., 234 F.3d 14, 26 (Fed. Cir. 2000) (non-obviousness); State Inds., Inc. v. Mor-Flo Inds., Inc., 883 F.2d 1573, 1582 (Fed. Cir. 1989) (willful infringement). As MVI points out, it is relevant to the copying argument that [redacted] (Opp., Doc. 268-1 at 13.) MVI must therefore be allowed to present argument regarding the V-TRAK documents which it alleges Balt copied from in making its designs. However, the non-V-TRAK documents are not necessarily relevant to copying. MVI will not be permitted to introduce evidence regarding the volume of documents or the contents of documents other than those relevant to copying unless Balt opens the door to such evidence by, for example, arguing that there were only a minimal number of documents, that retention was inadvertent, or that the ex-MVI employees were not aware that they were in possession of such documents.

B. MIL #2: Reference to Balt's IPR Petition on the ‘338 Patent

*9 Balt's motion to preclude reference to the denial of Balt's inter partes review (“IPR”) petition on the ‘338 patent is GRANTED IN PART.

Balt argues that evidence that it filed an IPR petition to invalidate the ‘338 patent, which was denied, should be excluded under Rule 403. Balt argues that such evidence would confuse the jury and unfairly prejudice Balt because (1) IPR proceedings are distinct from judicial proceedings in ways likely to confuse the jury; (2) the decision here was based on a procedural rule rather than the merits of Balt's invalidity arguments; and (3) it would take a lot of time and effort to explain IPR proceedings to the jury, and they are only minimally relevant to the matter at hand. (Mot., Doc. 248 at 12-14.) MVI argues that the jury “has a need and right to know” that Balt presented the same invalidity arguments using the same expert that it is using in the instant case, and had it rejected, in considering whether Balt reasonably believed the patent was invalid or was willful in its infringement. (Opp., Doc. 268-1 at 19.)

A decision denying institution of an IPR is not a decision on the merits but is rather “akin to a ruling on a preliminary injunction, where the merits are assessed with less than a full record and with less than a full adversarial proceeding.” Interdigital Commc'ns Inc. v. Nokia Corp., No. 13-10, 2014 WL 8104167, at *1 (D. Del. Sept. 19, 2014). The Federal Circuit has cautioned that “denials of institution provide limited probative value that is likely to be outweighed by the prejudice to the opposing party.” Chamberlain Grp., Inc. v. Techtronic Indus. Co., 935 F.3d 1341, 1351–52 (Fed. Cir. 2019). Nevertheless, the Federal Circuit upheld a district court's admission of evidence of a non-institution decision in Chamberlain where the court gave the jury an appropriate limiting instruction. Id. at 1351.

The IPR petition is plainly relevant to willfulness. See Contour IP Holding, LLC, No. 17-04738, 2021 WL 75666, at *8 (N.D. Cal. Jan. 8, 2021) (“IPR evidence is of much more probative value regarding willfulness than it is in other contexts.”). However, there is a substantial risk that the evidence would confuse the jury or the jury would substitute the PTO's judgment for its own. Accordingly, evidence regarding the IPR petition may be introduced for this limited purpose, and the parties should propose an appropriate limiting instruction explaining the significance of a denial of IPR. Further, MVI will not be permitted to present detailed evidence regarding what was argued in the IPR petition unless Balt opens the door to such evidence.

C. MIL #3: Reference to Frakes's Untimely Testing, Simulations, and Opinions

Balt's motion to preclude reference to data, documents, and opinions by MVI's expert, Frakes, is DENIED.

Balt argues that it was prejudiced by MVI's disclosure of “hundreds of new documents and gigabytes” of previously undisclosed testing data on October 10, 2021, the day before Frakes's deposition and several days before the close of expert discovery on October 15, 2021. (Mot., Doc. 248 at 17.) Balt requested, and MVI acquiesced, to move to the deposition to October 14 to have time to review the new data. (Id. at 17-18.) Balt argues that neither Frakes's opening report nor his rebuttal report relied on the testing data and he therefore should not be permitted to rely on the testing at trial. (Id. at 18.) Balt further argues that even though the deposition was moved, it had insufficient time to analyze the new data and did not have a written opinion from Frakes regarding the data, so it was prejudiced by the disclosure. Finally, Balt argues, the declaration by Frakes that MVI submitted in opposition to Balt's motion for summary judgment (after the close of discovery) was “replete with new testing and simulations and previously undisclosed opinions” that should be excluded as untimely, particularly because MVI did not make Frakes available for deposition regarding the summary judgment declaration. (Id. at 19-21.)

*10 MVI argues that the Frakes Declaration is permissible rebuttal testimony that does not contain new opinions, arguments, or evidence; that Balt made the strategic choice not to question Frakes regarding the newly disclosed data at his deposition; and that Balt was not prejudiced. (Opp., Doc. 268-1 at 26-30.) With regards to prejudice, MVI contends that it (1) disclosed the testing within the expert discovery window; (2) that that data produced was actually “173 photographs of the tests that were conducted, 30 simulation files, 2 user manuals for equipment/software, and 3 spreadsheets” and that 162.5 of the 163.1 gigabytes of data “are attributable to the size of the simulation files for use in the simulation program and [ ] are not intended to be separately viewed in their native state outside of the simulation program”; and (3) Balt had the opportunity to depose Frakes about the testing at his deposition but chose not to.

In its Reply, Balt argues that all of the MVI's arguments are beside the point because it does not refute Balt's contention that MVI disclosed the testing absent any explanation or supplemental report in violation of Rule 26, and therefore cannot rely on the testing at trial. (Reply, Doc. 286 at 10-11.)

Because (1) the data was disclosed in advance of Frakes's deposition, (2) the data does not appear to be voluminous, and appears related to rebuttal only; (3) Frakes's deposition was delayed to give Balt the opportunity to review the documents; and (4) Balt nonetheless chose not to ask any questions at the deposition that would shed light on what the testing showed or Frakes's opinions about it, the Court concludes that the timing of the disclosure was substantially justified and was not prejudicial. Accordingly, this evidence may be admitted.

III. CONCLUSION

For the foregoing reasons, the motions in limine are GRANTED IN PART and DENIED IN PART.