Abbott Point of Care Inc. v. Epocal, Inc.
MEMORANDUM OPINION and ORDER that Abbott's motion to exclude evidence and argument related to invalidity, and its motion to preclude Epocal from offering any evidence or argument regarding Abbott's request for injunctive relief, are GRANTED , Abbott's motion to exclude evidence or argument regarding its alleged litigation misconduct and motion to preclude Epocal from presenting its equitable defenses of unclean hands and equitable estoppel to the jury are DENIED, the parties are OR DERED to file by 4/25/2012, proposed special interrogatories and verdict forms for submission to the jury with regard to the equitable defenses, Abbott's motion to bar Epocal from making pleas to the jury's pecuniary interests, motion to ex clude evidence regarding corporate size or assets, motion to exclude evidence regarding Epocal's patents, and motion to preclude Epocal's cumulative expert testimony all are GRANTED in part and DENIED in part, and the parties are ORDERED to comply with all the limitations and directives set forth in the body of this opinion; as more fully set out in order. Signed by Judge C Lynwood Smith, Jr on 4/18/2012. (AHI)
2012 Apr-18 PM 03:12
U.S. DISTRICT COURT
N.D. OF ALABAMA
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ALABAMA
ABBOTT POINT OF CARE,
Civil Action No. CV-08-S-543-NE
MEMORANDUM OPINION AND ORDER ON MOTIONS IN LIMINE BY
PLAINTIFF ABBOTT POINT OF CARE, INC.
This opinion addresses eight motions in limine filed by plaintiff, Abbott Point
of Care, Inc., an entity that plaintiff’s counsel refer to by the acronym “APOC” for
reasons that are discussed in Part IV, infra, but one which this court prefers to
reference by the simple, descriptive term “Abbott.” Abbott’s motions are listed here
in the order in which they were filed, but not the arrangement in which they are
discussed below: i.e., (1) motion to bar defendant, Epocal, Inc. (“Epocal”), from
making pleas to the jury’s pecuniary interests;1 (2) motion to exclude evidence and
argument relating to invalidity;2 (3) motion to exclude evidence regarding corporate
size or assets;3 (4) motion to preclude Epocal from offering evidence or argument
Doc. no. 237.
Doc. no. 238.
Doc. no. 239.
regarding Abbott’s alleged litigation misconduct;4 (5) motion to exclude evidence
regarding Epocal’s patents;5 (6) motion to preclude Epocal from presenting its
equitable defenses of unclean hands and equitable estoppel to the jury;6 (7) motion
to preclude Epocal from offering any evidence or argument regarding Abbott’s
request for injunctive relief;7 and (8) motion to exclude Epocal’s cumulative expert
Epocal has conceded Abbott’s motion to exclude evidence and argument
relating to invalidity (# 2 above), and its motion to preclude Epocal from offering any
evidence or argument regarding Abbott’s request for injunctive relief (# 7 above).9
I. ABBOTT’S MOTION TO PRECLUDE EPOCAL FROM PRESENTING
ITS EQUITABLE DEFENSES OF UNCLEAN HANDS
AND EQUITABLE ESTOPPEL TO THE JURY
Doc. no. 240.
Doc. no. 241.
Doc. no. 242.
Doc. no. 243.
Doc. no. 251.
Doc. no. 264 (Epocal’s Response to Abbott’s Motion In Limine to Exclude Evidence and
Argument Relating to Invalidity), at 1 (acknowledging that Epocal “has not raised any invalidity
defense for trial and does not expect or intend to argue any such defense”); doc. no. 263 (Epocal’s
Response to Abbott’s Motion In Limine to Preclude Epocal from Offering Any Evidence or
Argument Regarding Abbott’s Request for Injunctive Relief), at 1 (“Epocal does not intend to make
such an argument to the jury.”). In its objections to Epocal’s trial exhibit list and witness list, Abbott
states that it objects to Epocal’s Exhibit 263 on the grounds stated in its Motion In Limine to
Preclude Epocal from Offering Evidence or Argument Regarding Abbott’s Request for Injunctive
Relief. Doc. no. 272 (Abbott’s Objections to Epocal’s Trial Exhibit List and Witness List), at 5 n.5.
Abbott did not specify any exhibits to which it objected on the grounds stated in its Motion In Limine
to Exclude Evidence and Argument Relating to Invalidity.
This case presents both legal and equitable issues. Abbott’s claims for patent
infringement and tortious interference with contractual relations are legal claims that
must be decided by a jury. Epocal’s defenses of estoppel and unclean hands, on the
other hand, are equitable in nature, and must ultimately be decided by this court. The
dual nature of the claims presented has raised complex questions as to the order in
which the issues should be tried.
The court presented the parties three options at the pre-trial conference. The
first was to conduct separate trials, with evidence on all legal issues being presented
to a jury during the first trial, and evidence on all equitable matters presented to the
court, outside the hearing of the jury, during the second. See Fed. R. Civ. P. 42(b)
(“For convenience, to avoid prejudice, or to expedite and economize, the court may
order a separate trial of one or more separate issues, claims, crossclaims,
counterclaims, or third-party claims. When ordering a separate trial, the court must
preserve any federal right to a jury trial.”). The second option was to conduct parallel
trials, divided between morning and afternoon sessions, with legal issues tried before
a jury during the morning, and equitable issues tried to the court during the afternoon.
The third option was to simultaneously try legal and equitable issues before the same
jury, and to require the jurors to return advisory verdicts on the factual matters related
to the equitable claims, with the final decision on the equitable issues being reserved
to the court. See Fed. R. Civ. P. 39(c) (“In an action not triable of right by a jury, the
court, on motion or on its own: (1) may try any issue with an advisory jury; or (2)
may, with the parties’ consent, try any issue by a jury whose verdict has the same
effect as if a jury trial had been a matter of right, unless the action is against the
United States and a federal statute provides for an nonjury trial.”).
Abbott’s motion in limine promotes an approach that falls somewhere between
the court’s first and second options:10
The jury would be instructed about and would decide only the
legal issues in the case — patent infringement (including
willfulness) and tortious interference.
To the extent that the evidence Epocal wishes to offer in support
of its equitable estoppel defense is also relevant to the issue of
willfulness, Epocal would be permitted to present that evidence
(subject, obviously, to the Court’s rulings on admissibility) to the
jury and argue to them how that evidence bears on the willfulness
issue. Outside the presence of the jury, Epocal could then
summarize that same evidence for the Court, who will already
have heard it, and argue how it supports equitable estoppel.
At the separate hearing the Court already has set to consider
APOC’s request for a permanent injunction, the parties could
present evidence relating to Epocal’s unclean hands defense.
See doc. no. 242, at 2 (“APOC is not suggesting that the Court has to hold two separate
trials (Option 1) or even that the Court split its trial days in half to handle legal issues in the morning
and equitable in the afternoon (Option 2). Instead, APOC proposes an alternative procedure that will
reasonably balance the interests of all parties, while conserving to the greatest extent possible the
resources of the jury and the Court.”).
Airing such evidence in the context of the injunctive proceeding
makes sense, since the law recognizes that unclean hands is not
a defense to infringement, but only to the relief that the patent
Abbott is opposed to having evidence relating to Epocal’s defenses of unclean
hands and equitable estoppel presented to the jury, even in an advisory capacity,
because it believes such evidence will unduly prejudice the jury against Abbott and
will divert attention from Epocal’s own, allegedly-infringing conduct.12 There is
authority to support Abbott’s position.
For example, in Pioneer Hi-Bred
International, Inc. v. Ottawa Plant Food, Inc., 219 F.R.D. 135 (N.D. Iowa 2003), The
defendant asked for the jury to serve in an advisory capacity on its affirmative
defenses of laches, waiver, and estoppel, and “to render an advisory verdict through
special interrogatories and verdict forms with respect to those issues.” Id. at 149.
The defendant also argued that
its equitable defenses are factually very closely related to its defense to
Pioneer’s case-in-chief and that it would be a waste of judicial
Id. at 3 (emphasis in original). In its objections to Epocal’s trial exhibit list and witness
list, Abbott states that it objects to the following exhibits on the grounds discussed in its Motion In
Limine to Preclude Epocal from Presenting its Equitable Defenses of Unclean Hands and Equitable
Estoppel to the Jury: DTX 17-18, 53-56, 63, 65-68, 70-71, 74, 84-85, 90, 102-03, 148-60, 162, 24344, 269-74, 287, 290, 292, 304-41, 350, 352-55, 360, 2013-14, 2016-18, and 2042. Doc. no. 272
(Abbott’s Objections to Epocal’s Trial Exhibit List and Witness List), at 4 n.4.
See, e.g., doc. no. 242, at 8 (“There can be no basis for Epocal to introduce its equitable
estoppel defense to the jury except to confuse the jury regarding the issues before it by focusing the
jury on APOC’s actions during and after negotiations in an attempt to divert attention from its own
resources, as well as confusing and prejudicial to Ottowa, to force
Ottowa to segregate its proofs into two separate and largely duplicative
proceedings, one to a jury, and one to the court.
Id. The district court rejected the defendant’s arguments in favor of the plaintiff’s
argument that allowing the jury to hear evidence on the defendant’s equitable
defenses would be unfairly prejudicial and confusing to the jury. According to the
court, “admission of such evidence or reference to such [equitable] defenses might
invite the jury to make a determination on the basis of ‘equitable’ considerations that
do not properly enter into any determination that the jury must make.” Id. at 149-50.
Therefore, the court held that the equitable defenses of defendant Ottawa Plant Food
would be tried in a non-jury proceeding separate from Pioneer’s infringement claim.
Id. at 150.
Similarly, in THK America v. NSK, Ltd., No. 90 C 6049, 1996 WL 33398071
(N.D. Ill. Jan. 9, 1996), the court noted that evidence relating to the defendant’s
affirmative defense of inequitable conduct was, in essence, evidence of fraud. Id. at
*1. The trial judge concluded that a high risk of prejudice and confusion of the issues
would result if that evidence was presented to the jury, because then “the inventor and
not the invention” might be put on trial. Id. After commenting that “a patent case is
complex and confusing enough for a jury without infusing evidence which has no
relevance to the issues to be decided by the jury,” the court held that, to the extent
possible, all evidence of fraud on the part of the inventor should be presented outside
the presence of the jury. Id. at *1-2. See also Dekalb Genetics Corp. v. Syngenta
Seeds, Inc., No. 4:06CV01191, 2008 WL 382385, at *2 (E.D. Mo. Feb. 12, 2008)
(“There is no need to burden the jury with evidence of equitable misconduct that is
to be decided by the Court.”).
On the other hand, there also is authority to support Epocal’s contrary position.
Epocal asserts that
the evidence concerning the affirmative defenses [of equitable estoppel
and unclean hands] overlaps considerably with Epocal’s defense against
Abbott’s jury-trial claim of willful infringement. Both the case law and
judicial efficiency strongly favor in such a situation having all the
evidence presented to the jury and having the jury’s verdict on the
affirmative defenses advise the Court with respect to its ultimate
decision on those defenses.13
It is true that, when there are factual questions common to both legal and equitable
claims, those facts must be tried to the jury in order to preserve the constitutional
right to a trial by jury. See Cabinet Vision v. Cabnetware, 129 F.3d 595, 600 (Fed.
Cir. 1997) (quoting Beacon Theatres, Inc. v. Westover, 359 U.S. 500, 503 (1959) (in
turn quoting Scott v. Neely, 140 U.S. 106, 109-10 (1891))).
Moreover, the court agrees with Epocal that there is substantial overlap
Doc. no. 267 (Epocal’s Opposition to Abbott’s Motion In Limine to Preclude Epocal from
Presenting its Equitable Defenses of Unclean Hands and Equitable Estoppel to the Jury), at 1
between the evidence to be presented on Abbott’s claim for willfulness and the
evidence to be presented on Epocal’s affirmative defenses of equitable estoppel and
unclean hands. To establish willfulness, Abbott
must show by clear and convincing evidence that the infringer acted
despite an objectively high likelihood that its actions constituted
infringement of a valid patent. See [Safeco Insurance Co. of America v.
Burr, 551 U.S. 47, 68-69 (2007)] (“It is [a] high risk of harm,
objectively assessed, that is the essence of recklessness at common
law.”). The state of mind of the accused infringer is not relevant to this
objective inquiry. If this threshold objective standard is satisfied, the
patentee must also demonstrate that this objectively-defined risk
(determined by the record developed in the infringement proceeding)
was either known or so obvious that it should have been known to the
In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (first bracketed
alteration supplied, second bracketed alteration in original).
To succeed on its affirmative defense of unclean hands, Epocal must
demonstrate that “the doors of a court of equity” should be closed to Abbott because
it is “tainted with inequitableness or bad faith relative to the matter in which [it] seeks
relief, however improper may have been the behavior of [Epocal].” Precision
Instrument Manufacturing Co. v. Automotive Maintenance Machinery, 324 U.S. 806,
814-15 (1945) (bracketed alterations supplied).
To succeed on its affirmative defense of equitable estoppel, Epocal must
establish the following three elements.
The first is that the patentee, through misleading conduct, leads the
alleged infringer to reasonably infer that he does not intend to enforce
the patent against the alleged infringer. The conduct may include
specific statements, action, inaction, or silence where there was an
obligation to speak. The second element is that the alleged infringer
relies on the patentee’s conduct. The final element is that due to the
reliance, the alleged infringer will be materially prejudiced if the
patentee is permitted to proceed with its infringement suit. Being an
equitable doctrine, estoppel is committed to the sound discretion of the
trial judge whose decision we review under the abuse of discretion
ABB Robotics, Inc. v. GMFanuc Robotics Corp., 52 F.3d 1062, 1063-64 (Fed. Cir.
1995) (emphasis supplied) (citing A.C. Aukerman Co. v. R.L. Chaides Construction
Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992)).
Epocal states that it intends to prove its defense of equitable estoppel by
demonstrating that Abbott
knew about Epocal’s technology since Abbott gained control of the
Asserted Patents in 2004, Abbott had intermittent negotiations with
Epocal from 2003 to 2007, and Abbott did not express any concern that
Epocal would infringe the Asserted Patents by selling its product in the
United States until Abbott filed this lawsuit in March of 2008. If Epocal
proves such facts to the jury, then Abbott’s silence in the face of its
control of the Asserted Patents and its knowledge of Epocal’s device
and technology for years before filing the lawsuit is very probative of
lack of willfulness.14
Epocal also states that it
intends to prove that Abbott’s hands are unclean because it brought this
Id. at 7.
case for improper business reasons, to drain the limited resources of a
small, start-up competitor, and not because Epocal infringes the patents.
As support, Epocal will show that Abbott completely revised its
infringement positions during this litigation. . . . Abbott’s changing
position is relevant not only to support the evidence that Abbott initiated
this case to drain Epocal’s resources, rather than out of genuine concern
over patent infringement, but also is probative of the lack of an
objectively high likelihood of infringement.15
In light of these overlapping factual issues, the court concludes that Epocal’s
affirmative defenses should not be tried separately from Abbott’s infringement
claims, especially Abbott’s assertion that Epocal’s infringement was willful. See
Haworth, Inc. v. Herman Miller, Inc., No. 1:92 CV 877, 1993 WL 761974, at *4
(W.D. Mich. July 20, 1993) (noting that “the issues of laches, estoppel, and
willfulness are intertwined with common factual determinations”). The court
recognizes the potential for Abbott to suffer some prejudice as a result of the jury
hearing evidence of its own misconduct; nevertheless, the court concludes that the
risk of prejudice is outweighed by Epocal’s interest in preserving its right to a jury
trial on its defenses to Abbott’s claim of willfulness, as well as by considerations of
judicial efficiency. Due to the substantial overlap in underlying facts, it will be
extremely difficult to determine precisely what testimony should be presented to the
jury, and what testimony should only be heard by the court. Attempting to make that
Id. at 8-9.
determination likely will require frequent objections, numerous sidebar conferences,
and other discussions outside the hearing of the jury. Such continual interruptions of
proceedings not only will unnecessarily prolong the trial, but it also will distract the
jury’s focus. Furthermore, many of the same witnesses likely will be called to present
evidence on both the legal issue of willfulness and the equitable issues of estoppel
and unclean hands. Those witnesses may be required to return to court several days
after testifying before the jury in order to present testimony to the court on the
equitable issues, resulting in inconvenience to the witnesses and unnecessary
repetition of their testimony.
Other district courts have reached the same decision under similar
circumstances. In Kemin Foods, L.C. v. Pigmentos Vegetales Del Centro S.A., No.
4:02-cv-40327, 2004 WL 5508752 (S.D. Iowa Sept. 9, 2004), the court held, over the
plaintiff’s objection of unfair prejudice, that the affirmative defense of inequitable
conduct should be presented to the jury for an advisory verdict. Id. at *3-4. The
court found that
the evidence of inequitable conduct will be overlapping and intertwined
with the evidence necessary on other issues in the case; and to the extent
it is not, the Court is confident that the jury, with direction from counsel
and the Court, will be able to discriminate as to questions to be decided
by the jury and issues to be decided by the Court. Under the unique
circumstances of this case, the Court finds that bifurcation of the trial on
the issue of inequitable conduct is both unnecessary and an undue
burden on the parties and the Court.
Id. at *4. See also Cornell University v. Hewlett-Packard Co., No. 01-CV-1974,
2006 WL 2739678, at *6-7 (N.D. N.Y. Sept. 25, 2006) (choosing to submit equitable
defenses to an advisory jury rather than bifurcating the trial based on considerations
of conservation of judicial resources and convenience of witnesses); Medtronic
Xomed, Inc. v. Gyrus ENT, LLC, 440 F. Supp. 2d 1333, 1336 (M.D. Fla. 2006)
(finding, when there was substantial factual overlap between legal defense of patent
invalidity and equitable defense of inequitable conduct, that holding a separate bench
trial on the equitable issues after the jury had heard the remainder of the evidence
“would not be the most efficient use of judicial resources, and could require re-calling
witnesses who will or had testified at the jury trial”).
In conclusion, the court will exercise its discretion to deny Abbott’s motion to
preclude Epocal from presenting its equitable defenses of unclean hands and
equitable estoppel to the jury. See, e.g., Cedarapids, Inc. v. CMI Corp., No. C980110 MJM, 1999 WL 33656876, at *1 (N.D. Iowa Oct. 26, 1999) (“Whether or not
to bifurcate a trial is left to the sound discretion of the trial court.”) (citing O’Dell v.
Hercules, Inc., 904 F.2d 1194, 1200 (8th Cir. 1990)) (other citations omitted). The
same jury empaneled to decide Abbott’s infringement claims (and Epocal’s legal
defenses thereto) also will render an advisory decision on Epocal’s equitable defenses
of equitable estoppel and unclean hands. The parties will be required to submit
proposed interrogatories and verdict forms for the equitable issues in accordance with
the instructions at the end of this opinion.
II. ABBOTT’S MOTION TO PRECLUDE EPOCAL FROM OFFERING
EVIDENCE OR ARGUMENT REGARDING ABBOTT’S ALLEGED
Abbott also asks the court to exclude all evidence of its alleged litigation
misconduct, which Epocal proposes to offer in support of its affirmative defense of
unclean hands.16 More specifically, Abbott states that, as part of its unclean hands
Epocal intends to argue to the jury at trial that APOC has engaged in
misconduct in this litigation, specifically that (i) APOC did not conduct
a reasonable pre-suit inquiry because it did not run independent
scientific tests on Epocal’s device before filing suit; and (ii) APOC,
through its attorneys, supplemented and refined its infringement
contentions in this matter between the time it served preliminary
infringement contentions on June 17, 2008 (early on in the case) and the
time it served final infringement contentions on July 30, 2010 (after
extensive fact discovery, but before expert reports were due).18
In its objections to Epocal’s trial exhibit list and witness list, Abbott states that it objects
to the following of Epocal’s exhibits on the grounds stated in its Motion In Limine to Preclude
Epocal from Offering Evidence or Argument Regarding Abbott’s Alleged Litigation Misconduct:
i.e., DTX 21-22, 35-47, 62-68, 70-71, 74, 85, 90, 102-03, 148, 243-44, 269-74, 287, 290, 292, 201314, 2016-18, and 2020. Doc. no. 272 (Abbott’s Objections to Epocal’s Trial Exhibit List and
Witness List), at 5 n.6.
As noted on the first page of this opinion, the attorneys for plaintiff, Abbott Point of Care,
Inc., prefer to refer to their client by the acronym “APOC,” for reasons that are discussed in Part IV
of this opinion, infra.
Doc. no. 240, at 2 (bracketed alteration enclosing footnote 17 supplied).
Abbott asserts that any such evidence should be barred for the following reasons:
(i) a challenge to APOC’s pre-suit investigation and litigation conduct
should have been made, if it all, pursuant to a timely Rule 11 motion,
which Epocal did not pursue; it is too late now; (ii) APOC’s decision not
to perform scientific tests before filing suit, and its later decision to
supplement its infringement contentions under Rule 26, cannot, as a
matter of law, constitute unclean hands; (iii) APOC’s infringement
claims have now survived Epocal’s comprehensive summary judgment
challenge, negating any possible argument that APOC lacked the
minimal basis required to file suit in the first instance; (iv) no matter
when advanced, Epocal cannot challenge privileged decisions made by
APOC in consultation with counsel; and finally (v) even if evidence of
APOC’s litigation conduct had any relevance (and it does not), it is far
outweighed by the prejudice that such evidence would cause to APOC,
and thus it fails under Federal Rule 403.19
The pertinent parts of Federal Rule of Civil Procedure 11 read as follows:
By presenting to the court a pleading, written motion, or other
paper — whether by signing, filing, submitting, or later advocating it —
an attorney or unrepresented party certifies that to the best of the
person’s knowledge, information, and belief, formed after an inquiry
reasonable under the circumstances:
(1) it is not being presented for any improper purpose, such as to
harass, cause unnecessary delay, or needlessly increase the cost of
(2) the claims, defenses, and other legal contentions are warranted
by existing law or by a nonfrivolous argument for extending, modifying,
or reversing existing law or for establishing new law;
Id. at 2-3.
(3) the factual contentions have evidentiary support or, if
specifically so identified, will likely have evidentiary support after a
reasonable opportunity for further investigation or discovery; and
(4) the denials of factual contentions are warranted on the
evidence or, if specifically so identified, are reasonably based on belief
or a lack of information.
Fed. R. Civ. P. 11(b). If a party or attorney violates any of these rules, the court may
impose sanctions, including nonmonetary directives, monetary payments to the court,
or payment of the opposing party’s attorney’s fees and expenses. Fed. R. Civ. P.
Abbott asserts that Rule 11 is an exclusive remedy, in this sense: if a party fails
to file a motion for Rule 11 sanctions during the course of litigation, that party is
precluded from relying upon any of the facts that might have supported such a motion
in pursuing any other course of relief (like an unclean hands defense). Abbott cites
two district court decisions in support of its theory. First, in X-It Products, LLC v.
Walter Kidde Portable Equipment, Inc., 155 F. Supp. 2d 577 (E.D. Va. 2001), the
defendant argued that the plaintiff had unclean hands due to material
misrepresentations it made during the course of pre-litigation business negotiations
between the two companies, as well as unspecified other misconduct during the
litigation. Id. at 600. The court held:
With respect to Kidde’s allegation that X-IT has engaged in
litigation misconduct, including numerous discovery failures and frauds,
the Court finds that the appropriate remedy is for Kidde to file a motion
to compel and/or a motion for sanctions in this Court. Indeed, Kidde has
already filed both such motions with the Court. Not surprisingly, X-IT
likewise has filed a motion to compel and a motion for sanctions with
the Court. The procedures and remedies available in the Federal Rules
of Civil Procedure were specifically designed to apply to a case such as
this in which the parties dispute anything and everything. As Kidde has
alternative remedies available to it with regard to X-IT’s alleged
litigation conduct, the Court STRIKES Kidde’s unclean hands argument
in so far as it relates to alleged litigation misconduct only.
Id. at 601. With respect to Kidde’s allegation that X-IT engaged in pre-litigation
misconduct that should bar its recovery of equitable relief, the court held that there
were disputed issues of material fact with regard to whether X-IT had made material
misrepresentations to Kidde prior to the commencement of the lawsuit. Accordingly,
the court denied summary judgment on the remaining aspects of the equitable defense
of unclean hands and allowed the claim to proceed to an evidentiary hearing. Id.
The X-IT court did not mention Rule 11, much less hold that Rule 11 was an
exclusive remedy when an opponent has engaged in misconduct like that alleged by
Epocal here. Further, the “litigation misconduct” in X-IT consisted of “discovery
failures and frauds,” which is nothing like the inequitable behavior alleged by Epocal
here, i.e., filing suit for an improper purpose. Moreover, the X-IT court actually
denied summary judgment with regard to the defendant’s allegations of the plaintiff’s
pre-suit misconduct, which are much more like the allegations advanced by Epocal
in this case. Therefore, the X-IT case does not lend support to Abbott’s argument.
Abbott also cites Mag Instrument, Inc. v. JS Products, Inc., 595 F. Supp. 2d
1102 (C.D. Cal. 2008), in support of its motion. In that case, the defendant asserted
an affirmative defense of unclean hands based upon the plaintiff’s attachment of two
inaccurate pictures of the defendant’s product to its complaint.
Id. at 1110.
Importantly, the court actually denied the plaintiff’s motion to strike the affirmative
defense of unclean hands, in which plaintiff had asserted that the defendant’s
allegations “‘fail to provide a legally recognized basis for an unclean hands defense.’”
Id. The court went on to grant the plaintiff’s motion for judgment on the pleadings
with regard to the unclean hands defense, holding that the defendant had not
presented sufficiently “clear evidence of wrongdoing by the plaintiff during the
course of the litigation.” Id. Thus, if anything, the Mag Instrument case supports the
proposition that allegations of inequitable conduct in association with the filing of a
complaint can support an affirmative defense of unclean hands, as long as the
allegations are sufficiently severe. While the plaintiff in Mag Instrument argued that
the defendant’s allegations of pleading inaccuracies should have been presented to
the court in the form of a Rule 11 or other motion, the court apparently rejected that
argument, as it moved on to consider the merits of the defense.
In summary, Abbott has presented no persuasive authority to support its theory
that the failure to file a Rule 11 motion for sanctions based on litigation misconduct
bars the later assertion of the affirmative defense of unclean hands based on the same
Supplementation of Infringement Contentions and Failure to Perform PreSuit Testing as Bases for Unclean Hands Defense
Abbott also asserts that neither its decision not to conduct scientific testing on
Epocal’s product prior to filing suit, nor its decision to supplement its infringement
contentions through the course of the litigation can, as a matter of law, form the basis
of Epocal’s affirmative defense of unclean hands.
Pre-suit scientific testing
Abbott asserts that the fact that it, “in consultation with its counsel, made a
determination not to run independent scientific tests on Epocal’s products prior to
filing suit cannot support Epocal’s unclean hands defense and so should be barred.”20
Abbott’s primary argument is based on this court’s memorandum opinion and order
addressing Epocal’s Daubert motion to exclude portions of the testimony of Abbott’s
expert witness, Dr. James Tusa.21 In that opinion, this court held that Dr. Tusa was
qualified to testify as an expert witness despite never having actually conducted a
scientific examination of Epocal’s device, because Dr. Tusa had based his testimony
Id. at 5.
Doc. no. 215.
on other reliable information, including Epocal’s own test data.22 Abbott extrapolates
from that holding the conclusion that scientific testing of an accused device prior to
filing a patent infringement action is not necessary and, therefore, evidence of failure
to conduct testing cannot form the basis of an unclean hands defense. That is too
much of a stretch. Even if Dr. Tusa is permitted to testify as an expert despite his
failure to perform testing — and even if, as Abbott asserts, a patent infringement
plaintiff is not necessarily required to always perform pre-suit scientific testing of the
accused product — evidence of Abbott’s failure to conduct pre-suit testing still could
be relevant to the unclean hands affirmative defense.23
Supplementation of infringement contentions
Abbott served Epocal with Preliminary Infringement Contentions on June 17,
In those preliminary disclosures, Abbott identified five distinct “gas
equilibration reservoirs” in the Epocal device, including:
1) rectangular volumes that extend along the length of the conduit
at the sensor region, but are distinct from the sensor region[;]
Id. at 25-26.
Abbott also baldly asserts that allowing Epocal to present evidence of its failure to conduct
pre-litigation scientific testing would result in “clear prejudice” to it. Doc. no. 240, at 5. As Abbott
does not explain the nature of this prejudice, the court does not find it to be so “clear,” and in any
event, it does not outweigh the probative value of the evidence to Epocal’s affirmative defense.
See doc. no. 260 (Epocal’s Opposition to Abbott’s Motion In Limine to Preclude Epocal
from Offering Evidence or Argument Regarding Abbott’s Alleged Litigation Misconduct), at Exhibit
1 (Preliminary Infringement Contentions).
2) a volume of ambient air that interfaces the calibrant fluid
within the chamber and forms a gas/liquid interface near the sensor
3) a volume of air between the sensor substrate module and lower
heating block, separated by a gas permeable material[;]
4) electrode and/or sensor membranes include gas permeable
materials that house volumes of gas to create gas equilibration
5) “L”-shaped volume connected to the valve that fluidically
connects the sensor region to the calibrant fluid chamber[.]
All reservoir forms [described] above contain a predetermined
composition of calibrant gases, e.g., ambient air and/or a known
composition of gases introduced at manufacture.
All reservoir forms [described] above are positioned in the
An important component of Epocal’s argument is the fact that Abbott did not identify
the conduit walls of Epocal’s card as an alleged “gas equilibration reservoir” in its
preliminary disclosures serve on June 17, 2008.
Abbott submitted its Final Infringement Contentions on July 30, 2010, after
conducting discovery and receiving the court’s claim construction rulings. In its final
disclosures, Abbott identified the alleged “gas equilibration reservoir” in Epocal’s
device as the “plastic material abutting the conduit”; in other words, the conduit
Id. at 5-7 (bracketed alterations supplied).
Epocal asserts that Abbott’s Final Infringement Contentions are evidence that
it didn’t just supplement its infringement theory, but, instead, that Abbott “changed
the theory completely.”27 According to Epocal, this evidence supports the claim that
Abbott did not have a good faith basis for filing suit. In response, Abbott argues that
the supplementation of its infringement contentions cannot form the basis for
Epocal’s unclean hands defense, because Abbott was required by Federal Rule of
Civil Procedure 26(e) to supplement its preliminary disclosures.
The court agrees that the mere fact that Abbott supplemented its infringement
contentions does not necessarily mean that it lacked a good faith basis for asserting
its original contentions. Even so, the supplemental contentions still could be relevant
to Epocal’s unclean hands defense. As discussed in PartI, supra, this court will make
the final decision on Epocal’s equitable defenses, including the defense of unclean
hands. The court can determine the appropriate weight to give to any evidence
regarding Abbott’s decision to alter its infringement theories during the course of the
litigation. There is no reason to completely exclude that evidence.
Effect of Abbott’s Survival of Summary Judgment
Doc. no. 171, Exhibit 34 (Final Infringement Contentions), at 32-33 (bracketed alterations
Doc. no. 268, at 8.
This court entered an order on February 9, 2012, denying Epocal’s motion for
summary judgment on all of Abbott’s infringement claims, because there were
“genuine issues of material fact precluding the entry of judgment as a matter of law
in defendant’s favor.”28 Abbott now asserts that the court’s denial of summary
judgment “ends any potential inquiry into whether [it] had a good faith basis to sue.”29
Abbott relies on the Advisory Committee Notes to the 1993 amendments of Federal
Rule of Civil Procedure 11, which state, in pertinent part:
The certification is that there is (or likely will be) “evidentiary
support” for the allegation, not that the party will prevail with respect to
its contention regarding the fact. That summary judgment is rendered
against a party does not necessarily mean, for purposes of this
certification, that it had no evidentiary support for its position. On the
other hand, if a party has evidence with respect to a contention that
would suffice to defeat a motion for summary judgment based thereon,
it would have sufficient “evidentiary support” for purposes of Rule 11.30
Even so, the Rule 11 inquiry is not identical to the unclean hands inquiry.
Thus, while the court agrees that its denial of Epocal’s motion for summary judgment
is a relevant consideration in the analysis of Epocal’s defense of unclean hands based
on Abbott’s alleged failure to conduct a proper pre-filing investigation, it does not
necessarily mean that the defense is preordained to failure. Indeed, the court also
Doc. no. 216, at 1.
Doc. no. 240, at 8.
Adv. Comm. Notes to Fed. R. Civ. P. 11 (1993 Amends.).
denied Abbott’s motion for summary judgment on the unclean hands affirmative
defense, stating that there was sufficient evidence of Abbott’s unclean hands to
warrant submitting the defense to the jury.31
In summary, the court concludes that the denial of Epocal’s motion for
summary judgment does not warrant exclusion of any evidence regarding its unclean
Abbott also asserts that it should not be forced to divulge privileged
communications in order to explain its litigation conduct. It points to Epocal’s claims
that it only decided not to conduct pre-litigation testing of the Epocal device after it
consulted with counsel. According to Abbott, “[t]his argument, and others like it, are
improper and should not be allowed, for they call directly into question the
consultations Abbott had with its lawyers prior to filing suit.”32
Abbott once again cites only cases arising in the Rule 11 context. To the extent
those cases also apply in the context of an unclean hands defense, the most important
lessons to be learned from the cases also can be gleaned from an examination of the
Advisory Committee’s notes on the 1983 revisions to Rule 11:
Doc. no. 217 (Memorandum Opinion and Order on Abbott’s Motion for Summary
Judgment on Certain Epocal Affirmative Defenses), at 21.
Doc. no. 240, at 9.
The rule does not require a party or an attorney to disclose privileged
communications or work product in order to show that the signing of the
pleading, motion, or other paper is substantially justified. The
provisions of Rule 26(c), including appropriate orders after in camera
inspection by the court, remain available to protect a party claiming
privilege or work product protection.33
Ten years later, during the 1993 amendments to Rule 11, the Committee noted that
motions based upon Rule 11 should not be prepared in order to “seek disclosure of
matters otherwise protected by the attorney-client privilege or the work-product
The court agrees that similar principles should apply here. Abbott should not
be forced to disclose information otherwise protected by the attorney-client privilege
or the work-product doctrine, simply because Epocal has raised the issue of Abbott’s
pre-filing investigations as part of its unclean hands defense. That does not mean,
however, that Epocal should not be allowed to present any evidence of Abbott’s prefiling investigations, or lack thereof, in support of its defense.
The first case cited by Abbott actually is instructive of a balanced approach.
In Highmark, Inc. v. Allcare Health Management Systems, Inc., 732 F. Supp. 2d 653
(N.D. Tex. 2010), the court considered a motion for sanctions under Rule 11 based
on the defendant’s alleged failure to conduct an adequate investigation before filing
Adv. Comm. Notes to Fed. R. Civ. P. 11 (1983 Amends.).
Adv. Comm. Notes to Fed. R. Civ. P. 11 (1993 Amends.).
a counterclaim. Id. at 654-55. The court did state, in passing, that a party “is not
required to disclose privileged information in defense of its pre-filing efforts.” Id. at
660. But that was not the end of the discussion, and the result was not that the court
excluded all evidence regarding the alleged failure to conduct an adequate pre-filing
Instead, the court went on to note that, “privilege issues
notwithstanding,” all parties “must comply with the law.” Id. When faced with the
accusation that it had failed to conduct an adequate pre-filing investigation, the
defendant/counter-claim plaintiff “was not entitled to at once rely on the opinion of
counsel to justify its filing of counterclaims but withhold the details of counsel’s
pre-filing efforts — the sort of details that would allow the Court to verify the
adequacy of counsel’s efforts — based on privilege.” Id.35
Similarly, here, Abbott is free to decide how it wants to defend against
Epocal’s unclean hands allegations. If it chooses to rely upon an “advice of counsel”
defense to the allegations of unclean hands, that would “open the door” for Epocal
to question it about otherwise protected communications. If Abbott prefers for
attorney communications to remain protected by the privilege, it should rely upon
some other defense. See In re EchoStar Communications Corp., 448 F.3d 1294, 1299
The other cases cited by Abbott are not very helpful, except to quote the above language
from the Advisory Committee Notes to Rule 11. See TEGG Corp. v. Beckstrom Electronic Co., No.
08-435, 2008 WL 5216169, at *3 (W.D. Pa. Dec. 10, 2008); Watson v. Poore, No. 05-4047-JLF,
2006 WL 2349968, at *2 (Aug. 11, 2006).
(Fed. Cir. 2006) (“[W]hen EchoStar chose to rely on the advice of in-house counsel,
it waived the attorney-client privilege with regard to any attorney-client
communications relating to the same subject matter.”). In any event, the possibility
that responding to Epocal’s allegations of unclean hands may require Abbott to
disclose some otherwise protected information should not prevent Epocal from
asserting the defense altogether. Epocal will be permitted to present evidence to
support its claim that Abbott had unclean hands when filing this lawsuit, including
evidence regarding Abbott’s pre-suit investigations. Even so, Abbott will not be
required to disclose any information protected by the attorney-client privilege, unless
there has been a waiver of the privilege. The best way to determine whether evidence
should be allowed is to await the context in which it is presented at trial.
Finally, Abbott asserts that the probative value of evidence of its alleged
litigation misconduct is outweighed by the potential for prejudice and confusion of
the jury. See Fed. R. Evid. 403.36 Abbott’s arguments about jury confusion are
addressed by the court’s decision that the jury, in an advisory capacity, will hear
evidence supporting defendant’s affirmative defenses of equitable estoppel and
Abbott asserts that evidence of its alleged litigation misconduct is irrelevant to the issue
of whether Epocal infringed its patents. That argument completely misses the point, because Epocal
is not offering the evidence of alleged misconduct to refute Abbott’s infringement claim; it is
offering the evidence to support its own defense of unclean hands.
unclean hands, but that the ultimate decision on those issues will be reserved to the
court. Abbott also asserts that it will be prejudiced if the jury begins to disfavor its
infringement case because Epocal has “sow[n] doubt in their minds with irrelevant
evidence about whether Abbott ran pre-filing tests three years ago and whether its
preliminary infringement contentions were refined as the case progressed through
The court disagrees, and concludes that any such prejudice is
outweighed by Epocal’s need to present the evidence in support of its equitable
In conclusion, Abbott’s motion to exclude all evidence and argument of its
alleged litigation misconduct is due to be denied.
III. ABBOTT’S MOTION TO BAR EPOCAL FROM MAKING PLEAS
TO THE JURY’S PECUNIARY INTERESTS
Abbott next asks the court to prevent Epocal from appealing to the jurors’
“pecuniary interests” by arguing that Epocal is the manufacturer of lower-cost
medical equipment, or that Epocal’s product is a lower-cost alternative to Abbott’s
device. Abbott asserts, in a general manner, that any such evidence would be
irrelevant, prejudicial, and confusing to the jury.38
Doc. no. 240, at 11 (bracketed alteration supplied, emphasis in original).
See doc. no. 237, at 1-3. In its objections to Epocal’s trial witness and exhibit lists, Abbott
In response, Epocal offers the explanation that “it does not intend to appeal to
the jury’s pecuniary interest” by arguing that the jurors’ medical costs will increase
if the jury returns a verdict finding that Epocal infringes Abbott’s patents.39 Such an
argument would be analogous to an insurance company presenting evidence or
argument that insurance premiums will increase if a judgment is entered against it,
and courts consistently reject such appeals. See, e.g., Bourg v. Fireman’s Fund
Insurance Co., No. Civ.A. 99-1066, 2000 WL 14681, at *2 (E.D. La. Jan. 6, 2000)
(holding that it would be prejudicial to allow an insurance company to present
evidence that insurance rates would increase if the plaintiff was awarded damages).
Even so, Epocal does oppose Abbott’s motion “to the extent that it would
prevent Epocal from presenting evidence that Epocal set out to and did design a less
expensive product.”40 Epocal asserts, for example, that the jury will need to hear
background information about the development of its company, including the
business model aimed at providing a lower cost product, and that Epocal’s intent to
produce a lower cost alternative to Abbott’s device (as distinguished from an intent
to copy Abbott’s device) is necessary for Epocal’s defenses to Abbott’s claims for
states that it objects to Exhibits 69 and 357-59 on the grounds stated in its Motion In Limine to Bar
Epocal from Making Pleas to the Jury’s Pecuniary Interests. Doc. no. 272 (Abbott’s Objections to
Epocal’s Trial Exhibit List and Witness List), at 6 n.7.
Doc. no. 269 (Epocal’s response to Abbott’s Motion In Limine to Bar Epocal from Making
Pleas to the Jury’s Pecuniary Interests), at 1.
Id. at 2.
The court is persuaded by Epocal’s argument. Abbott’s motion will be granted
in part and denied in part. Epocal will not be permitted to appeal to the jury’s
pecuniary interests by directly arguing, or even suggesting, that the jurors’ medical
costs will increase if they find infringement. That does not mean, however, that
Epocal will not be permitted to present any evidence about the relative cost of its
products, if that evidence is relevant to another issue in the case.41 In order to ensure
that Epocal does not attempt to take unfair advantage of this ruling, defense counsel
must approach the bench and request a side-bar conference before offering any
evidence bearing upon defendant’s “business model,” make an offer of proof, and
persuade the court that the line of questioning upon which they propose to embark is
relevant to some other issue in the case.
IV. ABBOTT’S MOTION TO EXCLUDE EVIDENCE REGARDING
CORPORATE SIZE OR ASSETS
Abbott “anticipates that Epocal may seek to use information about APOC’s
This court is respectfully aware of the decision of the United States District Court for the
Northern District of Illinois in Abbott Laboratories v. Torpharm, Inc., No. 97 C 7515, 2003 WL
22462614 (N.D. Ill. Oct. 29, 2003). There, the court held that evidence of the lower cost of the
defendant’s drug should be excluded as irrelevant to the plaintiff’s claims for infringement because
it “does not make it more or less probable that the drug infringes Abbott’s patents.” Id. at *15. Even
though the Torpharm case, cited by Abbott, is only persuasive authority, the court concludes that the
decision in the present case is not inconsistent with the decision in Torpharm. Just as the court
concluded in Torpham, Epocal’s attempts, in this case, to develop a potentially lower-cost alternative
to Abbott’s device likely will not inform the decision whether Epocal’s device infringes Abbott’s
patents, but it still may be relevant to other issues.
size and assets — or those of its parent, Abbott Laboratories — to bias the jury
against APOC by portraying this case as a ‘David v. Goliath’ struggle,” and asserts
that this allegedly “irrelevant and misleading information will have no purpose other
than to ignite the jury’s emotions and create an improper bias in the minds of the
jurors.”42 Therefore, Abbott requests the court to exclude any such information as
irrelevant, misleading, and unfairly prejudicial.
The court agrees with Abbott that the relative sizes and assets of the two parties
is not relevant to the primary issue at the heart of Abbott’s claims — i.e., whether
Epocal infringed Abbott’s patents. Even so, as Epocal points out, such evidence may
be relevant to its affirmative defenses of unclean hands and equitable estoppel, as
well as to its defenses to Abbott’s claim for tortious interference with contractual
relationships. As part of its unclean hands defense, Epocal asserts that Abbott
brought this lawsuit for improper reasons, such as draining Epocal’s limited resources
and preventing it from competing with Abbott in the marketplace. As part of its
equitable estoppel defense, Epocal will assert that both Abbott and its parent, Abbott
Laboratories, were involved in negotiations to acquire Epocal. The relative corporate
sizes of the parties will be necessary background information to support those
Doc. no. 239, at 1. In its objections to Epocal’s trial exhibit list and witness list, Abbott
states that it objects to Epocal’s exhibits 107 and 2043 on the grounds stated in its Motion In Limine
to Exclude Evidence Regarding Corporate Size or Assets. Doc. no. 272 (Abbott’s Objections to
Epocal’s Trial Exhibit List and Witness List), at 5 n.6.
theories. In defense of Abbott’s tortious interference claim, Epocal will argue that
some of the Abbott employees who left to work for Epocal did so because they were
excited about the idea of working for a small start-up company, not because they were
wrongfully enticed to do so by Epocal. Finally, the fact that Abbot Laboratories is
Abbott’s parent company also may be relevant to Epocal’s defense of Abbott’s
tortious interference claims, because some of the employment contracts that allegedly
were interfered with by Epocal actually were executed by the employee and Abbott
Laboratories, and not the corporate entity that instituted this action, Abbott Point of
Abbott alternatively argues that, even if evidence of the relative sizes and
assets of Abbott Laboratories, Abbott Point of Care, Inc., and Epocal is relevant to
some issue in the case, the evidence still should be excluded because it would be
misleading or unduly prejudicial. Abbott asserts that “such evidence creates a
dangerous risk of unfair prejudice among the jury, who may be motivated to
sympathize with Epocal because of Abbott’s and Abbott Laboratories’ position and
strength in the marketplace.”44 The court disagrees, and concludes that any risk of
such prejudice lies only in the minds of plaintiff’s attorneys; but that, even if such risk
See doc. no. 265 (Epocal’s Opposition to Abbott’s Motion In Limine to Exclude Evidence
Regarding Corporate Size or Assets), at Exhibits 4-8 (employment contracts).
Doc. no. 239, at 2.
actually exists, it is outweighed by Epocal’s need to present evidence relevant to its
Abbott also asserts that mentioning the name of its parent company, Abbott
Laboratories, would mislead the jury because of the name similarity between Abbott
Laboratories, which is a large, wealthy company, and the entity known as “Abbott
Point of Care, Inc.,” which is smaller and possesses more limited resources. While
the court recognizes some minimal risk of confusion, that risk does not warrant
excluding all mention of the parent company, especially considering that the
existence of the parent company is relevant to Epocal’s affirmative defenses and its
defenses to Abbott’s affirmative claims of tortious interference, as discussed more
fully above. Of course, counsel for Abbott is free to take steps to distinguish the
entity they directly represent from its parent company in the minds of the jury. Quite
obviously, plaintiff’s counsel already have taken one such step, by referring to the
plaintiff in all pre-trial submissions by the acronym “APOC,” rather than the
descriptive term employed by this court and Epocal, “Abbott.”
Finally, Abbott asserts that allowing Epocal to introduce evidence of its
relatively small size would be misleading, because Epocal may not be as small as it
would like the jury to believe. According to Abbott, “Epocal has partnered with a
large and established pharmaceutical company, Alere Inc., to handle marketing and
distribution of its infringing EPOC System.”45 The court agrees that, if Epocal is
allowed to present evidence of its relatively small size, then Abbott also should be
allowed the opportunity, in rebuttal, to produce evidence of Alere’s financial support
and partnership with Epocal. That does not mean, however, that all evidence of the
relative sizes and assets of Abbott Laboratories, Abbott Point of Care, Inc., and
Epocal should be excluded.
In summary, Abbott’s motion will be granted in part and denied in part. The
parties will be allowed to present evidence regarding the relative sizes and assets of
Abbott and Epocal, as well as the existence of Abbott’s parent company, Abbott
Laboratories, insofar as that evidence is relevant to one of Epocal’s defenses, or to
any other issue in the case. Even so, the court will not permit either party to misuse
such evidence by arguing, or even suggesting, that Epocal cannot afford to pay
damages to Abbott if a verdict of infringement is returned, or that Abbott and its
parent company, Abbott Laboratories, are so large and wealthy that they have no need
for Epocal’s money.
V. ABBOTT’S MOTION TO EXCLUDE EVIDENCE REGARDING
Abbott asserts that Epocal should not be permitted to introduce evidence that
Doc. no. 239, at 3.
it holds its own patents to cover all or part of the accused device.46 According to
[t]hese patents are not asserted in this matter, were never relied upon by
Epocal’s fact or expert witnesses, and are wholly irrelevant to the
infringement issues presented. The only purpose these patents could
serve would be to suggest to the jury that Epocal’s accused EPOC
product cannot infringe Abbott’s patents-in-suit because it is covered by
the other patents issued to Epocal. Such an inference is highly
prejudicial and, more to the point, is flat wrong as a matter of patent law
and can only mislead the jury.47
Abbott correctly points out that “a defendant cannot use its own patent as a
defense to patent infringement.”48 Indeed, the Federal Circuit has explicitly held that
“the existence of one’s own patent does not constitute a defense to infringement of
someone else’s patent. It is elementary that a patent grants only the right to exclude
others and confers no right on its holder to make, use, or sell.” Bio-Technology
General Corp. v. Genentech, Inc., 80 F.3d 1553, 1559 (Fed. Cir. 1996) (quoting
Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 879 n.
4 (Fed. Cir.1991) (internal quotation marks omitted). Therefore, evidence that a
Abbott asserts that “Epocal has included on its exhibit list the following patents that are
assigned to Epocal and/or on which Dr. Imants Lauks is listed as an inventor: U.S. Patent Nos.
6,845,327; 6,896,778; 7,094,330; 7,767,068 (mis-identified on exhibit list as 7,776,068); 7,824,529;
7,842,234; 8,124,026.” Doc. no. 241, at 1. Also, in its objections to Epocal’s trial exhibit list and
witness list, Abbott states that it objects to the following exhibits on the grounds stated in its Motion
In Limine to Exclude Evidence Regarding Epocal’s Patents: DTX 239, 264, 281-86, and 296-303.
Doc. no. 272 (Abbott’s Objections to Epocal’s Trial Exhibit List and Witness List), at 3 n.3.
Id. at 1-2.
defendant holds a patent covering all or a portion of the accused device is not relevant
to a determination of whether the defendant directly infringed the plaintiff’s patent.
It is possible, nevertheless, that evidence of Epocal’s patents may be — but, is
not necessarily — relevant to some other issue in the case. One issue to which such
evidence is not relevant is Abbott’s claim that Epocal “copied” its product. Epocal
essentially is arguing that it did not copy the Abbott design, but actually “designed
around” it.49 Evidence to support that theory could just as easily be derived from an
examination of the accused device itself; there is no need to also refer to the claim
language of Epocal’s patents. Epocal’s other arguments are more persuasive,
First, Epocal asserts that evidence of its patents is relevant to Abbott’s claims
of willful infringement. Indeed, the Federal Circuit held in King Instrument Corp.
v. Otari Corp., 767 F.2d 853 (Fed. Cir. 1985), that evidence of the defendant’s patent
was relevant to the plaintiff’s claims of willfulness because, “by relying on the
issuance of its patent, which even cited the [plaintiff’s] patent as prior art,
[defendant’s] management might reasonably have believed that its actions were
protected as within its own patentably distinct claims, while falling outside the
See doc. no. 270 (Epocal’s Opposition to Abbott’s Motion In Limine to Exclude Evidence
Regarding Epocal’s Patents), at 3 (“[T]he Epocal patents describe how the Epocal design avoids the
problems identified in the asserted patents that resulted in the need for the claimed invention.”).
[plaintiff’s] patent claims.” Id. at 867.
Additionally, the existence of defendant’s patents may be relevant to some of
Epocal’s affirmative defenses, including equitable estoppel and unclean hands. For
example, the Epocal patents could be relevant in determining whether Abbott
considered Epocal’s inventions to be “new,” or whether Abbott was familiar with the
details of Epocal’s developing product, during the purchase negotiations that took
place between Abbott and Epocal.
Even if evidence of defendant’s patents is relevant to an issue in this case, the
question remains whether admission of that evidence would be unfairly prejudicial,
confuse the issues, and/or mislead the jury. See Fed. R. Evid. 403 (“The court may
exclude relevant evidence if its probative value is substantially outweighed by a
danger of one or more of the following: unfair prejudice, confusing the issues,
misleading the jury, undue delay, wasting time, or needlessly presenting cumulative
evidence.”). Abbott asserts that, if evidence of Epocal’s patents is allowed, then the
jurors may be confused about what patents actually are at issue, or they may wrongly
conclude that Epocal’s ownership of other patents covering the accused products
means that Epocal cannot be found to infringe Abbott’s patents. In support, Abbott
cites the decision of the United States District Court for the Eastern District of
Louisiana in Cameco Industries, Inc. v. Louisiana Cane Manufacturing, No. 92-3158,
1995 WL 468234 (E.D. La. July 27, 1995). There, the court found that admitting
evidence of a patent obtained by the defendant “would be unfairly prejudicial to the
plaintiff, as this evidence is likely to give the jury the false impression that a patent
on the accused machine means that it is substantially different from the machine
claimed in plaintiff’s patent.” Id. at *6. Moreover, said the Cameco court, admitting
evidence of the defendant’s patent “would shift the focus of the trial from the validity
and infringement of [plaintiff’s] patent to the validity of [defendant’s] patent. A
detour of this sort would be only distracting and confusing to the jury, while
providing little, if any, relevant information.” Id.
This court appreciates this potential for jury confusion. Even so, the court
concludes that any risk of confusion or other prejudice would be outweighed by the
probative value of the evidence to issues like willfulness, or the affirmative defenses
of estoppel or unclean hands. That is particularly true considering that the potential
for jury confusion could be reduced by use of a limiting instruction.50
In summary, the court finds that Epocal should be allowed to produce evidence
of the existence of its patents covering the accused device in order to support its
See, e.g., doc. no. 270, Exhibit 6 (N.D. Cal. Model Instructions), at 4 (“You may hear
evidence that the [alleged infringer] has its own patent(s) or that [alleged infringer] improved on the
 patent. While this evidence is relevant to some issues you will be asked to decide, a party can still
infringe even if it has its own patents in the same area. You will be instructed after trial as to what,
if any, relevance these facts have to the particular issues in this case. Meanwhile, please keep an
open mind.”) (bracketed alterations in original).
defense to Abbott’s claim of willfulness, or Epocal’s affirmative defenses of equitable
estoppel or unclean hands. Accordingly, Abbott’s motion will be denied in this
regard. Even so, counsel for Epocal are cautioned that they will not be permitted to
exceed the bounds of this court order by arguing that evidence of defendant’s patents
actually is relevant to Abbott’s claims for infringement.
VI. ABBOTT’S MOTION TO EXCLUDE EPOCAL’S CUMULATIVE
Abbott asserts that the expert reports of Epocal’s two expert witnesses, Dr.
William Olbricht and Dr. Ranil Wickramasinghe, “are, in large part, devoted to the
same subject matter and are therefore cumulative.”51 Abbott thus anticipates that
Epocal will attempt to offer similarly cumulative expert testimony at trial, and it
moves to exclude that testimony under Federal Rule of Evidence 403. See Fed. R.
Evid. 403 (“The court may exclude relevant evidence if its probative value is
substantially outweighed by a danger of . . . needlessly presenting cumulative
As Abbott points out, the first three paragraphs of both expert reports contain
the exact same language:
I submit this report at the request of defendant, Epocal, Inc.
Doc. no. 251, at 1.
I understand that Abbott Point of Care Inc. (“Abbott”)
alleges that certain products manufactured and sold by Epocal infringe
claim 1 of United States Patent No. 5,609,824 (“the ‘824 Patent”),
claims 1 and 2 of United States Patent No. 5,605,664 (“the ‘664
Patent”), and claim 1 [of] United States Patent No. 5,614,416 (“the ‘416
Patent”). I refer to these claims collectively as the “Asserted Claims”
and I will refer to the patents collectively as the “Gas Patents.”
I have been asked to provide opinions concerning whether
the accused Epocal products infringe the Asserted Claims. My opinions,
as set forth in the body of the report, are based on materials that I have
reviewed to date . . . . I reserve my right to supplement my analysis and
opinions based on any additional argument or information that comes to
The two experts also reach similar conclusions. Both conclude that the accused
Epocal device does not infringe the claims of Abbott’s patents because it does not
contain a “gas equilibration reservoir,”53 and because the calibrant fluid in the Epocal
device does not achieve an “equilibrated dissolved gas composition that reflects
substantially the predetermined composition of calibrant gases contained in said
reservoir.”54 The final paragraph in both reports states; “For the bases set forth above,
it is my opinion that Epocal’s EPOC system does not infringe any Asserted Claim in
the Gas Patents either literally or under the Doctrine of Equivalents.”55
Doc. no. 251, Exhibit A (Expert Report of Dr. William Olbricht), at ¶¶ 1-3; id., Exhibit B
(Expert Report of Dr. Ranil Wickramasinghe), at ¶¶ 1-3 (bracketed alteration and ellipses supplied).
See Olbricht Report, at ¶ 70; Wickramasinghe Report, at ¶ 45.
See Olbricht Report, at ¶ 96; Wickramasinghe Report, at ¶ 46.
See Olbricht Report, at ¶ 110; Wickramasinghe Report, at ¶ 52.
The two experts also have similar qualifications.
Both Drs. Olbricht and Wickramasinghe (i) have a bachelor’s degree in
chemical engineering, (ii) have a Ph.D. in chemical engineering, (iii) are
and have been university professors in the field of chemical engineering
and biomedical engineering, and (iv) worked on and studied the
microcirculation or microfiltration of blood or plasma.56
Finally, the two experts rely on some of the same evidence to form their
opinions, including documents describing the polymeric material used in the Epocal
device, and drawings and specifications describing the device.
Abbott argues that all of these similarities render Dr. Olbricht’s and Dr.
Wickramasinghe’s reports redundant, and that allowing both experts to testify at trial
would unnecessarily prolong the proceedings and result in unfair prejudice to Abbott
because it could give the impression that Epocal’s case is stronger, simply because
Epocal has two expert witnesses, while Abbott only has one. See Royal Bahamian
Association, Inc. v. QBE Ins. Corp., No. 10-21511-CIV, 2010 WL 4225947, at *2
(S.D. Fla. Oct. 21, 2010) (slip copy) (“Unnecessarily similar and cumulative expert
testimony may create the risk that a jury will resolve differences in expert opinion by
‘counting heads’ instead of by giving fair consideration to the quality and credibility
of each expert’s opinions.”) (citing Sunstar, Inc. v. Alberto-Culver Co., Inc., No. 01
C 0736, 01 C 5825, 2004 WL 1899927, at *25 (N.D. Ill. Aug.23, 2004)).
Doc. no. 251, at 3. See also the curriculum vitae appended to each expert’s report.
The district court has broad discretion in controlling the evidence presented at
trial, including the decision whether to exclude cumulative evidence. Tran v. Toyota
Motor Corp., 420 F.3d 1310, 1315 (11th Cir. 2005). If the qualifications and
proposed testimony of Dr. Wickramasinghe and Dr. Olbricht were exactly identical,
as Abbott suggests, the court would not allow both witnesses to testify, because doing
so would waste its own time and that of the jury. As Epocal explains, however, there
are significant distinctions in the two experts’ relative backgrounds, perspectives, and
Dr. Wickramasinghe will testify at trial about a detailed analysis
he performed with Epocal’s test cards using a Field Emission Scanning
Electron Microscope (“SEM”). . . . Dr. Wickramasinghe personally
dissected several of Epocal’s test cards and photographed the copolyester material that forms the conduit walls, from which he
concluded that no air is held or stored in the conduit walls as required
in each of the asserted claims. . . . His materials-based analysis is
derived from his industrial experience with the research and
development of uses of polymeric materials. . . . Indeed, Dr.
Wickramasinghe has extensive experience with scanning electron
microscopy, having taken hundreds of SEM images of polymeric
materials over the course of his career. . . .
Dr. Olbricht has taught chemical and biomedical engineering for
the last thirty years. . . . He has spent much of his career applying
principles of fluid dynamics and gas diffusion to problems in medicine,
including the study of microfluidic circuits. . . . Dr. Olbricht will testify
on the fundamental principles of gas diffusion in liquids and solids, and
why, based on those principles, Epocal’s test cards do not infringe the
asserted claims. . . . Further, Dr. Olbricht will testify as to his
consideration of the i-Stat test cartridge as an additional basis for why
the conduit walls of Epocal’s test cards do not satisfy the “gas
equilibration reservoir” limitation of the asserted claims. . . .57
A thorough review of both experts’ reports and credentials corroborates Epocal’s
summary. Due to the nuances in the two experts’ respective backgrounds and
proposed testimony, the court concludes that both should be allowed to testify at trial.
The cases cited by Abbott are not inconsistent with this decision. In Tran, the
Eleventh Circuit held that the district court did not abuse its discretion when it
excluded the trial testimony of a second expert physician who testified about the
plaintiff’s neck injury (after the treating physician and another expert physician
already had testified), because the two experts had similar qualifications, relied upon
the same medical evidence, and would testify on the same topics. Tran, 420 F.3d at
1315-16. The court rejected the argument that the second physician would offer a
“macro” (or larger, big-picture) perspective on the plaintiff’s injury, while the first
physician had testified as to the “micro” (or smaller, more isolated) perspective,
because a close look at the two experts’ proposed testimony revealed that they
actually would cover the same topics. Id. Several factors distinguish Tran from the
present case. First, as set forth above, Dr. Olbricht and Dr. Wickramasinghe have
different credentials, and they offer different perspectives on the infringement issue,
Doc. no. 266 (Epocal’s Opposition to Abbott’s Motion In Limine to Exclude Epocal’s
Cumulative Expert Testimony), at 2-3 (emphasis supplied) (citations to expert reports omitted).
even though they ultimately reach the same conclusion.
See id. at 1315
(distinguishing a prior case where “the excluded expert’s ‘analysis was somewhat
different,’ his testimony was ‘more comprehensive,’ and the witness ‘had different,
and arguably better qualifications than the other experts’”) (citing Johnson v. United
States,780 F.2d 902, 906 (11th Cir.1986)). Additionally, the court in Tran excluded
the second doctor’s testimony only after the first doctor already had testified. Tran,
420 F.3d at 1315 (“After Dr. Burton testified, Toyota objected to Dr. Clark’s
testimony as cumulative.”) (emphasis supplied). As such, the court knew exactly
what testimony already had been offered, and it could more readily discern whether
the second doctor’s testimony would be cumulative. Here, in contrast, Abbott is
asking the court to speculate in advance of trial and based on the expert reports that
the testimony of the two witnesses will be cumulative. Finally, and importantly, even
though the Eleventh Circuit in Tran held that the district court did not abuse its
discretion in excluding the second doctor’s testimony, it suggested that it probably
would not have made the same decision as the district court if it were faced with
similar circumstances. Id. at 1316 (“On this record, we cannot say that the court
would have abused its discretion had it allowed Dr. Clark to testify. The testimony
likely would not have unduly prolonged the trial, Dr. Clark’s practice and experience
was somewhat different from that of the other doctors, and Tran might have presented
her evidence differently had she known earlier that Dr. Clark would be excluded.”).
Abbott also cites Abrams v. Ciba Specialty Chemicals Corp., No. 08-0068-WSB, 2010 WL 779273 (S.D. Ala. March 2, 2010). There, the court raised the concern
that a proposed expert’s testimony might be cumulative of that offered by another
proposed expert for the same party. Id. at *5. The court did not exclude the second
expert’s testimony, but cautioned that, to the extent the two experts would offer
“identical opinions . . . based on the same underlying evidence,” one of the experts
would have to be excluded as cumulative. Id. However, “to the extent that these two
experts are relying on differing lines of evidence to reach their conclusions . . ., such
that their testimony is complementary rather than redundant, it will be allowed.” Id.
(emphasis supplied). The court therefore directed the party seeking to offer the expert
testimony to “coordinate the testimony . . . on direct examination to avoid
unnecessary duplication and cumulative evidence, pursuant to Rule 403, Fed. R.
The court is persuaded by the approach taken by the Southern District of
Alabama in Abrams. Neither Dr. Olbricht nor Dr. Wickramasinghe will be precluded
from testifying due to concerns over presentation of cumulative evidence. Even so,
Epocal is directed to plan the testimony of those two experts in order to minimize any
overlap or repetition. If the testimony of the second expert called to the stand begins
to become cumulative of the testimony of the first of them to testify, the court could
take appropriate action to minimize any undue delay in the proceedings.
VII. CONCLUSION AND ORDERS
In accordance with the foregoing, Abbott’s motion to exclude evidence and
argument related to invalidity,58 and its motion to preclude Epocal from offering any
evidence or argument regarding Abbott’s request for injunctive relief,59 are
Abbott’s motion to exclude evidence or argument regarding Abbott’s alleged
litigation misconduct60 is DENIED. Abbott’s motion to preclude Epocal from
presenting its equitable defenses of unclean hands and equitable estoppel to the jury61
also is DENIED. Epocal will be permitted to present evidence supporting those
defenses to the jury in an advisory capacity. The parties are ORDERED to file, on
or before April 25, 2012, proposed special interrogatories and verdict forms for
submission to the jury with regard to the equitable defenses.
Abbott’s motion to bar Epocal from making pleas to the jury’s pecuniary
See doc. no. 238.
See doc. no. 243.
See doc. no. 240, Part II, supra.
See doc. no. 242, Part I, supra.
interests,62 Abbott’s motion to exclude evidence regarding corporate size or assets,63
Abbott’s motion to exclude evidence regarding Epocal’s patents,64 and Abbott’s
motion to preclude Epocal’s cumulative expert testimony65 all are GRANTED in part
and DENIED in part, and the parties are ORDERED to comply with all the limitations
and directives set forth in the body of this opinion.
DONE and ORDERED this 18th day of April, 2012.
United States District Judge
See doc. no. 237, Part III, supra.
See doc. no. 239, Part IV, supra.
See doc. no. 241, Part V, supra.
See doc. no. 251, Part VI, supra.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?