MGI Dig. Tech. S.A. v. Duplo U.S.A. Corp.
MGI Dig. Tech. S.A. v. Duplo U.S.A. Corp.
2024 WL 655481 (C.D. Cal. 2024)
January 26, 2024
Carter, David O., United States District Judge
Summary
The court granted the plaintiff's motion to exclude certain evidence, including a book and LinkedIn profile belonging to a former employee of the plaintiff, Mr. Thienard. The court also granted the defendant's motion to exclude evidence of cease-and-desist letters sent by the plaintiff to non-parties, as well as a letter sent by the plaintiff to the defendant in 2017. The court also addressed other motions related to evidence and testimony, including the defendant's motion to exclude any discussion of discovery disputes or motion practice.
Additional Decisions
MGI DIGITAL TECHNOLOGY S.A., Plaintiff,
v.
DUPLO U.S.A. CORPORATION, Defendant
v.
DUPLO U.S.A. CORPORATION, Defendant
Case No. SA CV 22-00979-DOC-KES
United States District Court, C.D. California, Southern Division
Filed January 26, 2024
Counsel
Don J. Mizerk, Husch Blackwell LLP, Sacramento, CA, Jennifer E. Hoekel, Pro Hac Vice, Kara R. Fussner, Pro Hac Vice, Husch Blackwell LLP, St. Louis, MO, John A. Carnahan, Pro Hac Vice, Philip D. Segrest, Jr., Pro Hac Vice, Husch Blackwell LLP, Chicago, IL, Mhare Ohan Mouradian, Husch Blackwell LLP, Los Angeles, CA, for Plaintiff.John T. Johnson, Christopher S. Marchese, Tyler Richard Train, Fish and Richardson PC, Los Angeles, CA, Jacqueline Tio, Pro Hac Vice, Fish and Richardson PC, Atlanta, GA, Jeffrey Mok, Pro Hac Vice, Mohammad Reza Kameli, Pro Hac Vice, Fish and Richardson PC, New York, NY, for Defendant.
Carter, David O., United States District Judge
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTIONS IN LIMINE [326] AND GRANTING IN PART AND DENYING IN PART PLAINTIFF'S MOTIONS IN LIMINE [328]
*1 Before the Court are Plaintiff's Motions in Limine (Dkt. 328) (“Pl. MIL”), Defendant's response thereto (Dkt. 331) (“Def. Opp'n”), Defendant's Motions in Limine (Dkt. 326) (“Def. MIL”), and Plaintiff's response thereto (Dkt. 332) (“Pl. Opp'n”). The Court heard argument on these motions in limine during the Final Pretrial Conference on January 24, 2024. The Court herein summarizes its rulings on the record during the hearing and also herein resolves the motions in limine that were taken under submission.
I. BACKGROUND
Plaintiff MGI Digital Technology S.A. (“Plaintiff” or “MGI”) has two remaining asserted patents for trial against Defendant Duplo USA Corporation (“Defendant” or “Duplo”), namely United States Patent No. 8,506,031 (“the '031 Patent”) and United States Patent No. 8,783,806 (“the '806 Patent”). Trial is set for February 6, 2024. The Court held a Final Pretrial Conference on January 23–24, 2025.
II. PLAINTIFF'S MOTIONS IN LIMINE
The Court herein discusses certain of Plaintiff's motions in limine that the Court took under submission or that warrant additional discussion. Otherwise, the Court's rulings were set forth during the Final Pretrial Conference on January 24, 2024, and the Court's rulings on all of these motions in limine are summarized in the chart in Section IV, herein.
A. Plaintiff's MIL #1
Plaintiff argues that the equitable defenses (such as double patenting, prosecution history estoppel, ensnarement, lack of standing, and unclean hands) are for the Court to decide and should not be presented to the jury.
Defendant responds that evidence regarding prosecution of the patents-in-suit will cause no unfair prejudice to Plaintiff and is necessary to develop factual issues underlying Defendant's assertions of prosecution history estoppel and ensnarement. (Def. Opp'n at 1.)
Defendant also responds that the Court has already found that disputes regarding inventorship and derivation will be presented to the jury. (Id. at 1–2.)
Defendant further argues that although it will not argue unclean hands to the jury, the following evidence overlaps with other issues in the case:
(1) whether Mr. Baneat's credibility based on whispering that occurred during his deposition on September 19, 2023 impacts (a) MGI, because someone from the company must have whispered to him since the deposition occurred at MGI's facilities, (b) Mr. Baneat, who MGI has identified as a trial witness (Dkt. 313 at 3), and (c) other MGI witnesses who rely on Mr. Baneat's testimony (including MGI's experts Dr. Ma and Mr. Reading);
(2) the fact that MGI and its alleged inventor, Mr. Edmond Abergel, possessed certain Konica Minolta documents at the time of the alleged invention;
(3) the fact that Konica Minolta is an affiliate of MGI, thereby resulting in underpaid maintenance fees of the asserted patents;
(4) the fact that MGI delayed in filing the present lawsuit;
(5) the fact that the asserted patents fail to name Mr. Thienard as inventor; and
(6) the fact that the alleged inventions were derived from Konica Minolta.
*2 (Id. at 2.)
Because evidence regarding patent prosecution and Defendant's equitable defenses may also be relevant to other issues that are for the jury, Plaintiff's blanket request to exclude all such evidence is denied.
Nonetheless, Plaintiff's motion is granted as to above-listed item numbers (1), (3), and (4). Any probative value of such evidence would be substantially outweighed by the dangers of unfair prejudice and waste of time. As to (1), although the Court noted the Special Master's concern that some amount of misconduct may have occurred during a portion of Mr. Baneat's original deposition, any prejudice to Defendant has been mitigated by the Court requesting, and Plaintiff providing, an additional 3.5-hour deposition of Mr. Baneat under supervision by the Special Master. (See Dkts. 261, 310.)
Defendant argues that “as Mr. Baneat's credibility is squarely at issue (both for his own testimony and for [Plaintiff's experts'] reliance on that testimony), Duplo USA asks that it be allowed to show Mr. Baneat's video that includes whispering, Mr. Baneat's reactions to that whispering, and the translations of the whispering, as well as certain testimony that bears on substantive issues in the case.” (Def. Opp'n at 11–12.)
Defendant's argument is rejected. Allowing Defendant to present the jury with video of whispering during Mr. Baneat's deposition would upset the balance of fairness that the Court struck by requesting an additional deposition. To whatever extent any misconduct had “impede[d], delay[ed], or frustrate[d] the fair examination of the deponent” (Fed. R. Civ. P. 30(d)(2)), any prejudice has been substantially mitigated by the additional deposition that occurred on January 9, 2024, with the Special Master present in person.
Moreover, the portion of Mr. Baneat's original deposition as to which the Special Master expressed the greatest concern (see Dkt. 261 at 3 (discussing September 19, 2023 deposition at timestamps 3:44:52 – 3:46:39 PM)) pertained to the '067 Patent, and the Court has already granted summary judgment of non-infringement as to that patent (see Dkt. 317 at 25–26 & 55). Any probative value of presenting the whispering to the jury would therefore be minimal and would be substantially outweighed by the dangers of unfair prejudice and waste of time by requiring extensive discussion of discovery proceedings and thereby distracting the jury from the merits of the case.
It would also be practically impossible to put this testimony in context without discussing the '067 Patent and the Court's grant of summary judgment on that patent. As the Court noted in Pinn v. Apple: “[E]vidence that the Court granted summary judgment as to certain claims would introduce substantial risks of confusion and unfair prejudice. Perhaps the jury might find Defendant more credible because the Court granted Defendant's motion. Or, perhaps, the jury might conclude that the Court has already disposed of any non-meritorious claims and therefore the remaining claims must be valuable. This unpredictability of the effect of such evidence simply underscores the importance of excluding it under Rule 403 because such inferences would ... employ the Court's pre-trial rulings to ‘put a thumb on the scale’ of the jury's weighing of the evidence regarding, for example, infringement and validity (regardless of which side of the scale this ‘thumb’ might end up landing on).” Pinn, Inc. v. Apple Inc., No. 8:19-CV-01805, Dkt. 411 at 47, adopted, Dkt. 459 at 9.
*3 As to (3) and (4), the payment of maintenance fees and the timing of Plaintiff filing suit do not appear to bear upon any issue that the jury will be asked to decide and would only cause unnecessary confusion.
As to (2), (5), and (6), these categories of evidence relate to issues of inventorship and derivation that can be submitted to the jury.
Plaintiff's motion in limine is therefore GRANTED-IN-PART and DENIED-IN-PART: The motion is denied as to patent prosecution, Mr. Thienard, and Konica Minolta; and the motion is otherwise GRANTED (including so as to exclude any evidence or discussion of whispering during Mr. Baneat's deposition, any purported underpayment of patent maintenance fees, and Plaintiff's purported delay in filing suit).
B. Plaintiff's MIL #4
As to evidence that Defendant has listed on its trial exhibit list regarding purportedly unnamed inventor Mr. Régis Thienard, Plaintiff argues that this evidence (such as his LinkedIn profile, as well as a translation of a book that he wrote) is hearsay. Plaintiff also argues that there is no witness who could authenticate these documents, and proceedings in France are unlikely to obtain Mr. Thienard's deposition prior to the February 6, 2024 trial setting. Plaintiff argues that the delay in obtaining Mr. Thienard's deposition has been caused by Defendant because whereas Plaintiff identified Mr. Thienard in its initial disclosures in December 2022, Defendant did not approach the Court for assistance until July 2023 (near the close of fact discovery). (Pl. MIL at 11.)
Finally, Plaintiff asserts that, because under French law “MGI would own any resulting patent rights even if Mr. Thienard was an inventor,” and because an error in inventorship can be corrected by the patent owner, excluding the evidence regarding Mr. Thienard would cause no possible prejudice. (Id. at 12.)
Defendant responds that evidence regarding Mr. Thienard is relevant to the inventorship defense that the Court has already ruled can proceed to trial.
Mr. Thienard's book and his LinkedIn profile page are hearsay, and presenting them at trial would unfairly prejudice Plaintiff unless Mr. Thienard testifies.
The “Abstract” document that lists Mr. Thienard as an inventor (Pl. MIL, Exs. C & D) was discussed at length at the Final Pretrial Conference on January 24, 2024. This document was submitted by Plaintiff to the European Patent Office (“EPO”), and the Court tentatively finds that this document is an official record and a statement by a party opponent. Also, as the parties explained at the January 24, 2024 hearing, the relevant EPO patent applications are distinct from the related French patent application, but the EPO patent applications claim priority to the same French patent application to which the patents-in-suit claim priority (FR 08 07500). Plaintiff's motion is denied as to this document.
Plaintiff's motion in limine is GRANTED-IN-PART and DENIED-IN-PART: Plaintiff's motion is GRANTED so as to exclude Mr. Thienard's book and Mr. Thienard's LinkedIn profile, and Plaintiff's motion is otherwise denied.
Nonetheless, at the Final Pretrial Conference on January 24, 2024, the Court put Plaintiff on notice that, if Mr. Thienard does not appear at trial, the Court is tentatively inclined to give the jury the following adverse instruction:
*4 You have heard evidence regarding Mr. Régis Thienard, such as “Abstracts” that include his name and that were submitted by Plaintiff to a foreign patent office. Mr. Thienard is a former employee of Plaintiff, and he has chosen not to appear at trial. The Court has found that Mr. Thienard is available to testify but is beyond the reach of this Court's jurisdiction, such that Defendant is not able to compel Mr. Thienard to be here. Mr. Thienard's testimony would be relevant to this case and cannot be replaced by any other evidence. Although Mr. Thienard is a former employee rather than a current employee, the Court is aware of no reason that Mr. Thienard could not travel to be here for this trial.
You are therefore free to presume that Mr. Thienard's testimony, if he were here to testify, would be unfavorable to Plaintiff. You are not required to make this presumption, but the law allows you to do so if you so choose.
If Mr. Thienard appears and testifies at trial, then the Court can revisit at that time whether Mr. Thienard's book and LinkedIn profile might become admissible.
C. Plaintiff's MIL #5
Mr. Baneat's original deposition is discussed as to Plaintiff's Motion in Limine #1, above. Plaintiff's motion is GRANTED AS MODIFIED as follows: As to whether Mr. Baneat will be permitted to testify at trial, the Court explained on the record at the Final Pretrial Conference on January 24, 2024, that the Court anticipates not allowing any playing of deposition designations but that, in view of the Court accepting Plaintiff's representations regarding the illness of Mr. Baneat's mother (which is further supported by Mr. Baneat's testimony at his additional deposition on January 9, 2024), the Court anticipates allowing Mr. Baneat to testify at trial remotely from France by videoconference. The parties shall make arrangements to facilitate this testimony, including each party having a representative physically present with Mr. Baneat in France while he testifies. The Court hereby REFERS to the Special Master for resolution of any logistical disputes regarding Mr. Baneat's remote testimony.
D. Plaintiff's MIL #7
Plaintiff argues that Mr. Shuhei Yamamoto (an employee of Duplo Corporation, a Japanese entity for which Defendant is a distributor) should be excluded from trial because Duplo Corporation produced no documents in response to Plaintiff's request or in response to the Special Master's request (set forth in the September 12, 2023 Special Master Order No. SM-14 (Dkt. 155-1)).
Defendant responds that it did indeed produce technical documents regarding the development and operation of the accused products, including some documents that had originated from Duplo Corporation. (Def. Opp'n at 16.) Defendant also submits that neither Defendant nor Duplo Corporation has the other documents sought by Plaintiff, such as Kyocera source code for the Kyocera printheads used in the accused products. (Id. at 17.)
The September 12, 2023 Special Master Order No. SM-14 requested as follows:
[T]he Special Master hereby REQUESTS that by October 6, 2023, non-parties Mr. Shuhei Yamamoto and Duplo Corporation produce all documents in their possession, custody, or control that are reasonably related to the topics for which Defendant has listed Mr. Yamamoto as likely to have discoverable information and/or reasonably related to Mr. Yamamoto's testimony in his August 10–11, 2023 deposition.
(Dkt. 155-1 at 6.) This request by the Special Master referred to Defendant's broad disclosure of topics for Mr. Yamamoto as follows: “Design, development, conception of the DDC-810 and DDC-8000 printer products; and accused varnish products.” (Id. at 36 (citing Def.'s Sept. 10, 2023 Ltr. Br., Ex. 4, Def.'s July 5, 2023 First Suppl. Initial Disclosures at 3).)
*5 Plaintiff submits that Duplo Corporation produced no documents whatsoever in response to the Special Master's request. (Pl. MIL at 18–19.)
At the Final Pretrial Conference on January 24, 2024, Defendant asserted that it was not feasible for Duplo Corporation to produce such documents in the short amount of time set forth by the Special Master's request, but Defendant submits no evidence that Defendant or Duplo Corporation ever requested additional time, narrower scope, or otherwise communicated with the Special Master about the request at all.
The lack of production of documents by Duplo Corporation, despite the Special Master's explicit request (based on Duplo Corporation providing Mr. Yamamoto as a witness to assist Defendant in its defense of this case), deprives Plaintiff of a fair opportunity to cross-examine Mr. Yamamoto at trial. This implicates the Court's concern at the June 26, 2023 hearing regarding “the sword and the shield” (June 26, 2023 Transcript at 5:4–9) because non-party Duplo Corporation is attempting to provide a witness to assist its related company, Defendant, while simultaneously declining to produce any underlying documents.
Plaintiff's motion to preclude Defendant from calling Mr. Yamamoto as a trial witness is therefore GRANTED AS MODIFIED such that the Court will permit Mr. Yamamoto to testify only if Duplo Corporation and Mr. Yamamoto produce the documents requested by the Special Master in Special Master Order No. SM-14 (see Dkt. 155-1 at 6) prior to trial.
III. DEFENDANT'S MOTIONS IN LIMINE
The Court herein discusses certain of Defendant's motions in limine that the Court took under submission or that warrant additional discussion. Otherwise, the Court's rulings were set forth during the Final Pretrial Conference on January 24, 2024, and the Court's rulings on all of these motions in limine are summarized in the chart in Section IV, herein.
A. Defendant's MIL #1
Defendant submits that this Court has already recognized that the French litigation “involved different patents and different laws,” and Defendant moves to exclude all evidence regarding the French litigation under Rule 403, including the French court's finding of infringement as to a French patent. (Def. MIL at 2.) Defendant argues that the French court judgment is hearsay as to the matters asserted in the judgment. (Id. at 5.)
Defendant also moves to exclude French “bailiff reports” because a French “bailiff” is akin to a Notary Public and is neither a judge nor a technical expert, and the bailiffs here at issue were hired and paid for by Plaintiff. (Id. at 5–6.) Defendant argues that “[t]here is a substantial risk that the jury will abdicate its responsibility to independently determine disputed factual issues regarding the accused products and give undue weight to evidence with an imprimatur of a French court or French bailiff, which are about European patents.” (Id. at 7.)
Plaintiff responds that, as part of the French litigation, one of Plaintiff's employees (Mr. Baneat) disassembled a Kyocera printhead in the presence of a French bailiff, and Plaintiff argues that the French bailiff's report is contemporaneous evidence of this disassembly. (Pl. Opp'n at 1–2.) Plaintiff also argues that “the fact that litigation in France with Duplo Corporation was ongoing[,] and [the] exchanges that took place during that case[,] highlight the continuous risks Duplo USA ignored when continuing to sell in the United States.” (Id. at 3.) Further, Plaintiff argues that Duplo Corporation's statements to the French court are admissible under the Rule 807 residual exception to the hearsay rule. (Id. at 5.)
*6 Particularly given that the French court found infringement of a French counterpart patent of the '067 Patent, as to which this Court has already granted summary judgment of non-infringement, evidence of the French court's findings lacks probative value and would be highly confusing. Also, such evidence is not probative as to willfulness because this evidence relates to French patents, not the patents-in-suit. Cf. Waddington N. Am., Inc. v. Sabert Corp., No. 09-4883 (GEB), 2011 WL 3444150, at *8 (D.N.J. Aug. 5, 2011) (“U.S. patent law is distinct from foreign patent law, and the patent itself is ... different from its foreign counterparts”). Whatever probative value might exist is substantially outweighed by the risks of confusion and waste of time and therefore is excluded under Rule 403.
As to the report of a French bailiff documenting the disassembly of a Kyocera printhead (the type of printhead used in the accused products) by one of Plaintiff's employees (Mr. Baneat), this report is probative of the technical details of the accused products, but any references to the French litigation must be redacted.
Defendant's motion in limine is GRANTED-IN-PART and DENIED-IN-PART: Defendant's motion is denied as to the French bailiff's report (but the report must be redacted to remove any references to the French litigation). Defendant's motion is otherwise GRANTED.
B. Defendant's MIL #4
Defendant moves to exclude evidence of Plaintiff's cease-and-desist letters sent to various non-parties. (Def. MIL at 11.) Defendant argues that such evidence is irrelevant because Defendant “does not challenge MGI's policing efforts” and because those infringement allegations involve different products. (Id. at 12.)
Defendant also moves to exclude the March 3, 2017 cease-and-desist letter sent by Plaintiff to Defendant because it is hearsay and because it involved other patents that are not asserted at the trial (including the '067 Patent, as to which the Court granted summary judgment of noninfringement, and the '449 Patent, which the Court dismissed without prejudice because Plaintiff no longer asserts it in this case). (Id. at 13.)
Alternatively, Defendant proposes that “the parties could stipulate to the essential facts surrounding these 2017 letters and read those stipulations to the jury” without presenting the letters to the jury. (Def. MIL Opp'n at 24.)
Finally, Defendant argues that Plaintiff's cease-and-desist letter should be excluded because it shows that it was authored by Plaintiff's trial counsel, Mr. Aron Carnahan, which Defendant argues would require Defendant to call Mr. Carnahan as a witness at trial.
The Court already noted the relevance of the 2017 cease-and-desist letter when the Court denied summary judgment as to willfulness, noting that the letter is being offered to show notice to Defendant regarding the patents-in-suit. (Pl. Opp'n at 11; Dkt. 317 at 44–46.)
Although Defendant's responses to the Plaintiff's 2017 cease-and-desist letter are labeled as being subject to Rule 408, this labeling is not dispositive. The Court plans to submit the willfulness issue to the jury, and the fact that the parties exchanged letters in 2017, as well as the content and attachments to those letters, are not offered to prove the validity or amount of any claim but rather are important for the jury to consider as to Defendant's awareness of the patents-in-suit. To whatever extent those communications included offers to compromise or responses thereto, if any, such portions can be redacted for trial. Also, the Court will require Plaintiff to redact the 2017 cease-and-desist letter to remove references to patents other than the patents that are being asserted at trial, as well as to remove the name of its author (Mr. Aron Carnahan, who is also Plaintiff's trial counsel).
*7 As to cease-and-desist letters sent to other parties, such letters could be probative as to Plaintiff's claim for lost profits, in which Plaintiff argues that, in the absence of Defendant's infringement, Plaintiff would have made the sales that Defendant made. Plaintiff's enforcement of its exclusivity is relevant to reconstructing the market and showing that Plaintiff would have made any sales that were not made by Defendant. This is also relevant to the Georgia-Pacific reasonable royalty analysis. Although the Court has excluded the reasonably royalty opinions of Plaintiff's damages expert, Mr. Marcus Reading, the Court is tentatively inclined to allow Mr. Reading to criticize the methodology and analysis of Defendant's damages expert, Ms. Carrie Distler, at trial. (See Dkt. 342, Jan. 24, 2024 Order at 3.)
Defendant's motion in limine is therefore CONDITIONALLY DENIED subject to Plaintiff laying a foundation at trial for the relevance of these documents and submitting proposed redactions to remove any offers to compromise (or responses thereto), to remove references to patents other than the patents that are being asserted at trial, and to remove the name of Mr. Aron Carnahan (who is also Plaintiff's trial counsel).
C. Defendant's MIL #5
Defendant submits that “Mr. [Edmond] Abergel's deposition suggests that MGI may try to elicit trial testimony that Duplo's products infringe, that MGI's products practice the patents, and that the patents are valid.” (Def. MIL at 14.) Defendant argues that because none of Plaintiff's employees has been offered as an expert, any such testimony should be excluded under Rule 701. (Id.)
Plaintiff responds that “expert opinions are not the only evidence admissible on infringement and validity” and that any person can testify regarding facts underlying infringement and validity. (Pl. Opp'n at 13.) Plaintiff argues that “the Court should allow testimony, from the inventor and others, on all matters in their personal knowledge including the patents they invented, the challenges in developing the technology, and the operation of Duplo devices that MGI witnesses have inspected.” (Id. at 14.)
Plaintiff's arguments are persuasive that Defendant's motion in limine should be denied as to named inventor Edmond Abergel because of his direct involvement in both developing and commercializing the claimed technology. But as the Court expressed during the Final Pretrial Conference on January 24, 2024, the Court is concerned that other witnesses might improperly stray into attempting to offer expert opinions.
Defendant's motion in limine is therefore GRANTED-IN-PART and DENIED-IN-PART: the motion is denied as to Mr. Edmond Abergel; and the motion is CONDITIONALLY GRANTED as to other witnesses. The Court DIRECTS the parties to meet with the Special Master such that Plaintiff can attempt to proffer other witnesses and associated lines of questioning that Plaintiff believes would be permissible, and the Special Master can report the results of such conferences informally to assist the Court in addressing this issue before or during trial.
D. Defendant's MIL #6
During the Final Pretrial Conference on January 24, 2024, the parties reached agreement that neither party will refer to any entity as a “parent,” “child,” or “sister” or use any other familial terms to describe corporate relationships. The parties also agreed that either party can discuss that Duplo Corporation has a ~28% ownership interest in Defendant and that Konica Minolta has a ~48% ownership interest in Plaintiff.
The parties continued to dispute whether a purported statement by Victor Abergel to representatives of Duplo Corporation and Duplo France (regarding Plaintiff's purported intent to bring suit against Defendant after concluding the French litigation) can be presented to the jury. Plaintiff argues that this statement is highly relevant to willfulness. (Pl. Opp'n at 15.) The Court took this dispute under submission.
*8 This evidence regarding Victor Abergel was relied upon by Plaintiff in its motion for summary judgment of no equitable estoppel, and the Court has already granted that motion. (See Dkt. 317 at 43–47 & 56.) Also, Duplo Corporation was already well aware of the French litigation, and Victor Abergel's statement of intent to bring suit in the United States was therefore related to an adversarial relationship that already existed between Plaintiff and Duplo Corporation. The additional probative value of this evidence, if any, is substantially outweighed by the dangers of confusion and waste of time that would arise if this evidence regarding the French litigation were introduced (as discussed by the Court in granting Defendant's MIL #1, above).
This relief is already subsumed within the Court's ruling as to Defendant's MIL #1, but out of an abundance of caution Defendant's MIL #6 is GRANTED-IN-PART and DENIED-IN-PART: GRANTED so as to exclude any evidence or discussion of the French litigation, including Victor Abergel's purported communication with Duplo Corporation or related entities during the French litigation; and otherwise denied (including as to Duplo Corporation's ownership interest in Defendant).
E. Defendant's MIL #7
Defendant moves to exclude any evidence of litigation funding or fee agreements as being irrelevant and unfairly prejudicial. The parties discussed this issue at the Final Pretrial Conference on January 24, 2024, and the Court took this issue under submission. Because the balancing of probative value and unfair prejudice regarding this evidence in this particular case will be highly dependent on precisely how Plaintiff attempts to use this evidence during trial, Defendant's motion in limine is GRANTED, but Plaintiff can attempt to establish the relevance of this evidence at trial and seek leave of Court.
F. Defendant's MIL #10
Defendant moves to exclude any discussion of discovery disputes or motion practice. In particular, Defendant moves to exclude any suggestion that Defendant allegedly did not allow Plaintiff to inspect the accused products. (Def. MIL at 20–21.) Defendant submits that Plaintiff never requested any inspection of the accused products during discovery. (Id. at 21.)
Plaintiff responds that it does not intend to present any such evidence, but Plaintiff argues that Defendant might open the door to such evidence by eliciting testimony that Plaintiff's witnesses did not examine the accused devices in person or did not review technical development documents. (Pl. Opp'n at 21.)
At the Final Pretrial Conference on January 24, 2024, Plaintiff confirmed that it does not intend to discuss any discovery matters unless Defendant elicits testimony that involves discovery. This motion in limine is therefore denied as moot, subject to re-urging during trial if appropriate.
IV. DISPOSITIONS
The Court rules on the parties' motions in limine as set forth in the following chart:
Plaintiff MGI's Motions in Limine (Dkt. 328) Motion Pl.'s MIL #1: “Duplo shall not introduce evidence, testimony or argument on issues solely for the Court, which issues are: double patenting; prosecution history estoppel; ensnarement; lack of standing; and unclean hands (which entails alleged whispering during the deposition of Mr. Baneat; MGI's alleged withholding of documents during discovery; MGI's alleged misconduct during the prosecution of patents; MGI's alleged failure to pay proper maintenance fees; MGI's alleged destruction of documents in connection with the dissolution of MGI U.S.A.; MGI's alleged delay in bringing this suit; and MGI's alleged lack of standing to bring this suit).” Pl.'s MIL #2: “Duplo shall not introduce evidence, testimony or argument referencing patents or claims that are not before the jury for determination of infringement, including U.S. Patent Nos. RE 45,067 and 9,422,449.” Pl.'s MIL #3: “Duplo shall not introduce evidence, testimony or argument of patent invalidity on any grounds not previously disclosed by Duplo or its witnesses, or prior art exhibits not included in those grounds, namely, the Trial Exhibit numbers listed in Attachment 1 hereto.” Pl.'s MIL #4: “Duplo shall not introduce hearsay evidence, testimony, or argument concerning Régis Thienard, namely, his LinkedIn profile (Trial Exhibit 1524), his book (Trial Exhibit 1027), and an alleged abstract submitted with [a French] patent application, with its English translation (Trial Exhibits 1523, 1526 and 1762).” Pl.'s MIL #5: “The testimony of Mr. Benoit Baneat shall be allowed at trial.” Pl.'s MIL #6: “Duplo shall not introduce evidence, testimony or argument concerning inventorship theories for which Duplo has not identified the required natural person that Duplo alleges to be an inventor, namely, Duplo shall not introduce evidence, testimony or argument that the corporate entity Konica Minolta was an inventor of the Patents-in-Suit.” Pl.'s MIL #7: “Duplo shall not introduce testimony of Shuhei Yamamoto.” Pl.'s MIL #8: “[S]elect evidence, testimony and argument relating to the French lawsuit between MGI and Duplo Corporation involving the DDC-810 and MGI's counterparts in France shall be allowed at trial, namely, Victor Abergel's statement to Duplo Corporation that after the French litigation MGI was going to sue Duplo USA in the United States for patent infringement of the corresponding U.S. patents based on Duplo's sales of the DDC-810 device in the United States; and Duplo Corporation's statements to the French court concerning how the DDC-810 functioned” Pl.'s MIL #9: “[E]vidence, testimony, and argument concerning cease and desist correspondence between the parties in 2017, along with the attachments to those letters, shall be allowed at trial.” Disposition GRANTED-IN-PART and DENIED-IN-PART: denied so as to allow evidence regarding patent prosecution, Mr. Régis Thienard, and Konica Minolta; and otherwise GRANTED (including so as to exclude any evidence or discussion of whispering during Mr. Baneat's deposition, any purported underpayment of patent maintenance fees, and Plaintiff's purported delay in filing suit) GRANTED AS MODIFIED so as to exclude any evidence or argument regarding the '067 Patent and the '449 Patent and any other patents previously asserted by Plaintiff against Defendant (Plaintiff shall redact mentions of such other patents from the March 2017 cease-and-desist letter and related correspondence) GRANTED-IN-PART AND DENIED-IN-PART: GRANTED so as to exclude Defendant's additional prior art references (although Defendant can present so-called “state of the art” references so long as Defendant does not present more than 20 total references at trial); and otherwise denied (including so as to allow Dr. Reinholtz's opinions on enablement) GRANTED-IN-PART and DENIED-IN-PART: GRANTED so as to exclude Mr. Thienard's book and Mr. Thienard's LinkedIn profile; and otherwise denied, but as the Court indicated at the Final Pretrial Conference on January 24, 2024, the Court is tentatively inclined to give the jury an adverse instruction if Mr. Thienard does not appear at trial. GRANTED AS MODIFIED as follows: The Court anticipates allowing Mr. Baneat to testify at trial remotely from France by videoconference. The parties shall make arrangements to facilitate this testimony, including each party having a representative physically present with Mr. Baneat in France while he testifies. The Court hereby REFERS to the Special Master any logistical disputes regarding Mr. Baneat's remote testimony. Denied GRANTED AS MODIFIED such that the Court will permit Mr. Yamamoto to testify only if Duplo Corporation and Mr. Yamamoto produce the documents requested by the Special Master in Special Master Order No. SM-14 (see Dkt. 155-1 at 6) Denied (addressed as to Defendant's Motion in Limine #1) GRANTED based on Court's analysis of Defendant's Motion in Limine #4
*9 Defendant Duplo's Motions in Limine (Dkt. 326) Motion Def.'s MIL #1: “MGI shall not introduce evidence, testimony, or argument regarding MGI's litigation in France.” Def.'s MIL #2: “MGI shall not introduce evidence, testimony, or argument concerning the Patent Trial and Appeal Board and inter partes review.” Def.'s MIL #3: “MGI shall not refer to Duplo USA counsel's absence at trial.” Def.'s MIL #4: “MGI shall not introduce evidence, testimony, or argument concerning MGI's infringement accusations against third parties and its 2017 accusations against Duplo USA.” Def.'s MIL #5: “MGI shall not introduce opinion testimony regarding infringement or validity from any current or former MGI or MGI USA employee.” Def.'s MIL #6: “MGI shall not introduce evidence or testimony concerning MGI's purported communications with non-party Duplo entities or Duplo USA's corporate relationship with those entities.” Def.'s MIL #7: “MGI shall not introduce evidence, testimony, or argument regarding funding of the litigation.” Def.'s MIL #8: “MGI shall not introduce evidence, testimony, or argument that Duplo USA copied, stole, misappropriated, or pirated MGI's product.” Def.'s MIL #9: “MGI shall not present evidence, testimony, or argument relating to the Special Master's or Court's rulings in this case, other than the Court's actual adopted claim constructions.” Def.'s MIL #10: “MGI shall not introduce evidence, testimony, or argument regarding pretrial proceedings or issues including discovery disputes, motion practice, and/or allegations of any denied discovery.” Def.'s MIL #11: “MGI shall not introduce evidence, testimony, or argument that MGI's products practice the asserted patents.” Def.'s MIL #12: “MGI shall not introduce evidence, testimony, or argument from MGI on Konica Minolta pricing, bundling, or customers.” Def.'s MIL #13: “MGI shall not make comparisons of burden of proof standards to other areas of law.” Disposition GRANTED-IN-PART and DENIED-IN-PART: denied so as to allow the French bailiff's report (regarding disassembly of a Kyocera printhead) so long as the report is redacted to remove any references to the French litigation; and otherwise GRANTED GRANTED Denied as moot CONDITIONALLY DENIED subject to Plaintiff laying a foundation at trial for the relevance of these documents and submitting proposed redactions to remove any offers to compromise (or responses thereto), to remove references to patents other than the patents that are being asserted at trial, and to remove the name of Mr. Aron Carnahan (who is also Plaintiff's trial counsel) GRANTED-IN-PART and DENIED-IN-PART: the motion is denied so as to allow such testimony by Mr. Edmond Abergel; and the motion is CONDITIONALLY GRANTED so as to exclude such testimony by other witnesses. The Court DIRECTS the parties to meet with the Special Master such that Plaintiff can attempt to proffer other witnesses and associated lines of questioning that Plaintiff believes would be permissible, and the Special Master can report the results of such conferences informally to assist the Court in addressing this issue before or during trial. GRANTED-IN-PART and DENIED-IN-PART: GRANTED so as to exclude any evidence or discussion of the French litigation, including Victor Abergel's purported communication with Duplo Corporation or related entities during the French litigation; and otherwise denied (including so as to allow evidence regarding Duplo Corporation's ownership interest in Defendant). GRANTED (Plaintiff can attempt to establish the relevance of this evidence at trial and seek leave of Court) Denied based on Plaintiff's counsel's representation that Plaintiff will not use the word “pirated” GRANTED Denied as moot, subject to re-urging during trial if appropriate Denied Denied Denied as moot based on good faith representations of counsel for both parties that there will be no inappropriate comparisons, such as comparing to child custody proceedings.
Plaintiff's Motions in Limine (Dkt. 328) and Defendant's Motions in Limine (Dkt. 326) are hereby GRANTED-IN-PART and DENIED-IN-PART as set forth above.
IT IS SO ORDERED.