Soilworks LLC v Midwest Industrial Supply Inc

Filing 136

TRANSCRIPT of Proceedings re: Final Pretrial Conference held on 10/9/08 before Judge David G Campbell. Court Reporters: Gary Moll and Patricia Lyons. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 11/12/2008. Redacted Transcript Deadline set for 11/24/2008. Release of Transcript Restriction set for 1/20/2009. (BAS, )

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Soilworks LLC v Midwest Industrial Supply Inc Doc. 13 1 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 BEFORE: SOILWORKS, LLC, UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA _________________ ) ) Plaintiff, ) ) vs. ) ) MIDWEST INDUSTRIAL SUPPLY, INC.,) ) Defendant. ) ________________________________) CV 06-02141-PHX-DGC Phoenix, Arizona October 9, 2008 THE HONORABLE DAVID G. CAMPBELL, JUDGE REPORTERS' TRANSCRIPT OF PROCEEDINGS FINAL PRETRIAL CONFERENCE Official Court Reporters: Patricia Lyons, RPR, CRR Gary Moll Sandra Day O'Connor U.S. Courthouse, Suite 312 401 West Washington Street, SPC 41 Phoenix, Arizona 85003-2150 (602) 322-7257 Proceedings Reported by Stenographic Court Reporters Transcript Prepared by Computer-Aided Transcription 2 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 APPEARANCES For the Plaintiff/Counterdefendant: Kutak Rock LLP By: E. SCOTT DOSEK, ESQ. 8601 N. Scottsdale Rd., Ste 300 Scottsdale, AZ 85253 Kutak Rock LLP By: JOHN P. PASSARELLI, ESQ. 1650 Farnam St. Omaha, NE 68102 For the Defendant/Counterclaimant: Brouse McDowell By: CRAIG A. MARVINNEY, ESQ. 1001 Lakeside Ave., Ste 1600 Cleveland, OH 44114 Brouse McDowell LPA By: JOHN M. SKERIOTIS, ESQ. 388 S. Main St., Ste 500 Akron, OH 44311 Jones Skelton & Hochuli PLC By: DONALD L. MYLES, JR., ESQ. 2901 N. Central Ave., Ste 800 Phoenix, AZ 85012 3 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 record. MR. DOSEK: PROCEEDINGS THE COURTROOM DEPUTY: Civil case 06-2141, Soilworks This is the time LLC versus Midwest Industrial Supply, Inc. set for final pretrial conference. Counsel, please announce your presence for the Good afternoon, Your Honor. I'm Scott And Dosek with the law firm Kutak Rock on behalf of plaintiff. with me is my partner John Passarelli, with the same firm from our Omaha office. Also present in court are Chad Falkenberg, president of Soilworks, and his wife Dorian Falkenberg, vice president. THE COURT: All right. Good afternoon. My name MR. MARVINNEY: Good afternoon, Your Honor. is Craig Marvinney of the Akron based law firm of Brouse McDowell. I'm out of the Cleveland office. Together with me today is John Skeriotis of our Akron office, Brouse McDowell, and next to him is Don Myles of Jones Hochuli Skeleton here in Phoenix. And of course we have our client, Bob Vitale, of And the three of us represent Midwest Midwest Industrial. Industrial, defendant and counterclaimant. THE COURT: All right. Good afternoon. Our purpose is for a final pretrial conference today. I think what I want to do first is talk through the motions in 4 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 limine that you all have filed. rulings on some. I'm just going to give you Others I may have a question or two for you. You didn't number them, so I'm going to go through them in the order that they appear on the docket. Well, sort of. I'm going to start with Soilworks and do those two first, and then take Midwest motions in the order they appear on the docket. The first motion is Docket Number 108, which is Soilworks' motion to exclude evidence of its sales of Durasoil. This motion seeks to exclude the evidence of Durasoil sales because Midwest allegedly cannot prove patent infringement. I'm going to deny this motion. This is effectively a second motion for summary judgment on Midwest's patent infringement claim. issue. I denied an earlier motion on that I don't believe that this is a proper subject for a motion in limine. I also think that the case that was cited, the Robotic Vision Systems case wouldn't support a ruling in favor of Southwest. That's a Rule 11 case. It's not really a case about how you prove infringement. But in any event, I do think this is a motion for summary judgment that I've already denied and not appropriate for a motion in limine. The second Soilworks motion seeks to exclude evidence of its sales of Soiltac and Gorilla-Snot, which is just as it sounds, Tricia. Southwest seeks to exclude evidence of its profits because Midwest, it claims, cannot prove willfulness, 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 which Soilworks believes requires an intent to deceive. I'm going to deny this motion as well. I don't believe that willfulness is limited to deception under the Lindy, L-I-N-D-Y, Pen, P-E-N, case from the Ninth Circuit. Willfulness includes deliberate infringement, bad faith, and an attempt to gain value of Midwest's established trademarks. I also held in my motion for summary judgment ruling that initial interest confusion does not require deception. So I don't believe I can grant this motion in limine on the grounds Midwest could not prove deception. I don't think they need to if they can establish willfulness by one of these other means. But, as I'll make clear in a minute, I do not agree with Midwest's contention that I have entered summary judgment in favor of them on willful infringement. the question of willfulness. I haven't addressed I granted summary judgment on infringement, but willfulness was not briefed or considered by me at that point. And so I don't want my denial of this motion to suggest that I think that willfulness has been resolved in the case. This has raised an issue that I want you all to be thinking about as we go forward. The question really raised by this motion is what damages ultimately will be available under 15 United States Code section 1117(a). And as I read your motion and then looked at the statute, I began to wonder 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 if this was really appropriate for a jury trial. Because, as you know, 1117(a) talks about equitable remedies and it says the Court shall enter the remedies. And it says that I can adjust, for example, profits if I decide that's an appropriate measure to satisfy equity. And of course an accounting has sometimes been viewed as an equitable remedy. So I asked my law clerk to do some research, to take an hour and do it. He came back to me five hours later with a It's clearly an stack of cases and we talked through it. unresolved issue in the law. There's a split in the cases as to whether the remedies in 1117(a) give rise to a jury trial right or do not. Based on the cases he found, it looks to me like the best interpretation in the Ninth Circuit, although cases have gone both ways in this circuit, is there is a jury trial right. But what I want you all to be aware of is that it seems to me that even if we have a jury trial and they come up with an award of damages, this section clearly gives me the authority to adjust them if I don't think they're the right number. Which makes me wonder why do we have the jury trial. I think we need to have one if you want to stand on it. But it looks to me as though I've got substantial discretion after the jury makes its decision to adjust their award, if they make one, to a level that I think is appropriate in the case. 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 And the reason I think that's relevant in this case is because there are other issues that are going to have to be tried to the bench. The Arizona common law unfair trade The injunctive practices claims will be tried to the bench. relief issue that's raised on some of these claims will be tried to the bench. So we've got an unusual case here where there's a lot of issues that aren't going to be decided by the jury but will probably be at issue in the same trial as the few that will be decided by the jury, and that could be a tricky case to manage. So I guess the question I will put to you all to think about as we go forward is do we want to have a jury trial or should we just do a bench trial. decision not mine. That's your But it's really a hybrid even if we go forward with the jury. Let me talk through the rest of the motions and we'll come back to these trial issues. Midwest's first motion in limine is Docket Number 101 and it's a motion in limine to limit Soilworks' evidence of Midwest's alleged false advertising to the four documents that were produced during discovery. The argument is that in response to requests for production of documents, there were only four produced, and those were the two letters that were written in July of '07, the press release and chart, I think, that was on the website 8 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 are the four documents. The response from Soilworks wasn't very helpful. Soilworks said "while there's a lot of others listed in the final pretrial order without objections," but they are objected to in the motion in limine. Here's the question I have for Soilworks' counsel. Are there documents listed in the final pretrial order that you believe show instances of false advertising by Midwest that are not among those four documents I just named? MR. DOSEK: Thank you, Your Honor. Apparently I didn't make myself clear in my response to the motion. What I was trying to point out is that we have identified those documents which will be trial exhibits. We have interposed our objections to those that we believe are objectionable. But the short answer to your question is no, I And my point was that I didn't believe don't think there are. that the motion in limine was necessary because we have what we have in terms of the doc- -- the documents that are proposed by the parties to be introduced into evidence and objections have been made. But, again, I think that those four documents are, from a documentary standpoint, are the ones that are at the heart of our false advertising claim. THE COURT: So are you saying, Mr. Dosek, that you are not going to seek to introduce at trial any other documents 9 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 that you believe to be a false advertisement by Midwest? MR. DOSEK: THE COURT: That's correct. All right. I think that representation The motion was resolves the motion with respect to documents. a little broader than that. The motion also sought to preclude The problem I have with that any testimony that's beyond that. issue, and Mr. Marvinney I don't know if you're the one addressing this, but Rule 26(e) supplementation obligation applies to written discovery, it doesn't apply to testimony. So I wasn't quite understanding what was the basis for you suggesting that there couldn't be testimony beyond the four documents. MR. MARVINNEY: I'm sorry. If I might -- I'm a little You say that we took bit confused for a moment, Your Honor. the position it couldn't be testimony beyond the four documents as in there could be a Rule 26(e) supplement of the testimony? THE COURT: Well, I didn't know. The way you had written it, you said -- you asked me to enter an order limiting the evidence upon which plaintiff may rely to these four documents. Maybe you're just talking about documentary evidence, but I assumed you wanted me also to say they can't testify about anything other than what's in the four documents. Is that an incorrect understanding of your motion? MR. MARVINNEY: of the motion. No, that's an accurate understanding Our position was based upon the evidence 10 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 presented to us and the responses to the documentary production responses, the four documents, and the testimony about those four documents as was obtained in deposition of the Falkenbergs and other parties up in Alaska. Not parties, but witnesses in Alaska that were deposed, as well as here and Ohio, that the case should be limited to the four documents and the testimony surrounding those four documents, and that was our position as expressed in the motion in limine. THE COURT: Are you aware of any other document they're seeking to introduce besides the four? MR. MARVINNEY: No. That's why we wanted to make sure nobody was surprised here at the trial, Your Honor. THE COURT: All right. Mr. Dosek, do you have any problem with the notion that the testimony will surround those four documents and not other alleged false advertisements? MR. DOSEK: Well, I do. I think that would be an improper limitation on the scope of the evidence surrounding our obligation to show bad faith. There's not going to be any But the jury other documentary evidence beyond those four. needs to take into context, be able to put into context those four documents and the circumstances around which they were disseminated and other -- and other facts which may have -- and other events which may have coincided in time or been close in time to the dissemination of those four documents. 11 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 notes. THE COURT: Well, let me ask it this way, Mr. Dosek. Are you going to try to use witnesses during the trial to describe any other instance of false advertising besides the four instances reflected in those documents? MR. DOSEK: THE COURT: I have no intention of doing that, no. All right. I think that answers the question, doesn't it? MR. MARVINNEY: Your Honor, from our standpoint it does because the object was to restrict the testimony to the events circulating around those four documents. THE COURT: And clearly, yeah, there's events Okay, I think that surrounding it that I think will be fair. answers it. MR. MARVINNEY: Your Honor, if I may, is that -- I don't mean to preempt anything or jump ahead, but were you going to move on to the next motion? THE COURT: I will in just a minute after I make my Did you have something you wanted to say on this one? MR. MARVINNEY: I wanted to clarify what your ruling would be on the first motion, that's all. THE COURT: Well, I never know whether to deny the motion because it's moot or grant it because it's conceded when I get to this situation. I think what I'll do is grant the motion. evidence will be limited to the four documents. The But that's 12 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 all I'm going to say. I'm not going to go beyond saying that because it doesn't look like it's necessary. MR. MARVINNEY: THE COURT: Thank you, Your Honor. All right, the next motion is Midwest's motion in limine to exclude evidence offered by Soilworks related to elements of the false advertising claim. Docket 102. In this motion Midwest seeks to exclude or preclude Soilworks from presenting evidence on the deception of consumers, the materiality of the deception, that Soilworks was injured by the false advertising, and any damages. The This is basis for this motion is that Southwest didn't produce -- I'm sorry. Soilworks didn't produce evidence in response to some fairly broad document production requests. The question I think I have first of all is for you Mr. Dosek, which is have you identified documents in the final pretrial order that you intend to use in evidence in support of your false advertising claim that were not produced to Midwest during the course of discovery? MR. DOSEK: THE COURT: Absolutely not, Your Honor. Mr. Marvinney, do you have any basis for disagreeing with that? MR. MARVINNEY: No. We have no evidence of anything that they have produced at all regarding that false advertising claim. 13 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 THE COURT: All right. Let me make a note. This motion also argues, Mr. Dosek, when witnesses were deposed they failed to provide any evidence of injury or damages. And on that basis they seek -- "they" being Midwest seeks to preclude Soilworks from presenting such oral evidence at trial. What is your response to that? MR. DOSEK: My response to that, Your Honor, is that I would agree that during deposition testimony the witnesses that were asked, and they were the appropriate witnesses, were not able to articulate any quantifiable damage and that has not changed as we're here today. Other than what they have testified to and what documents which will be introduced into evidence will show, and that is that as a result of this false advertising claim they were required to execute an agreement, an agreement to indemnify their distributor up in Alaska who had received these documents. I can't tell the Court that there has been any request as of today in any monetary amount, in any quantifiable amount, for any such indemnification, but we did need to do that in order to continue to be able to do business with that distributor. In terms of quantifiable monetary damages, as of the time of the depositions there weren't any that we could identify and there aren't any that we can identify as of today. 14 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 THE COURT: So you are not going to be making a damages claim in your false advertising claim at trial? MR. DOSEK: We're not going to be making a claim for damages that we can quantify. THE COURT: Are you going to be making a claim for damages that you can't quantify? MR. DOSEK: I can't -- I can't totally preclude that at this point because of the obligation that we have incurred to indemnify our distributor as a result of what has happened. And I don't know when this case is going to go to trial. don't know if we're going to be asked to provide that indemnification between now and trial. So I would hate to -- I I would hate to box myself into that corner and make a representation to the Court at this time that there never will be any such damages. But the other kinds of damages I think that were sought were the kinds of damages such as loss of sales from other customers and that kind of thing. cannot -- we can't prove that. quantify it. May have been, but we We can't articulate it and But it is conceivable that between now and trial there could be quantifiable damages as a result of our obligation to indemnify our distributor which flows as a result of, the direct result of, the false advertising claims that Midwest made. THE COURT: The evidence of those damages is not 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 obviously in the final pretrial order because it hasn't happened yet, right? MR. DOSEK: THE COURT: Correct, Your Honor. Well, as you probably know, Rule 16 of the federal rules states that an order entered after a final pretrial conference like this can be amended only to prevent manifest injustice. So you just need to be aware that if for some reason between now and trial you think those damages do occur, you're going to have to make a manifest injustice showing to get that evidence into the final pretrial order. But as it now stands, it sounds as though there's no damages claim you will be making, assuming there is no call on the indemnification. MR. DOSEK: THE COURT: That's correct. If that's true, what do you intend to do with your false advertising claim at trial? MR. DOSEK: Well, I think the other elements of the false advertising claim that's asserted entitle us to, as we have prayed for in our pleadings, at least injunctive relief and an order requiring -- prohibiting Midwest from engaging in this kind of conduct in the future. THE COURT: Any thought on that, Mr. Marvinney? Yes, Your Honor, thank you. First and MR. MARVINNEY: foremost, obviously without loss there's no damage and no recovery. So it pretty much follows if they don't have proof 16 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 of damage they can't -- they haven't produced any evidence of damages and, as a result of that, we get to the point where it's all been conceded. The indemnification call, there has been no call for indemnification, there's been no demand by my client, our client, on behalf of Midwest, to Polar Supply or anyone else in Alaska that they need to pay us damages at this point. damages being sought are being sought from Midwest. The So as a result, we can't foresee nor can we predict any reasonable way in which there would be any call, if you will, on the indemnification. So that leaves us with Mr. Dosek's reference to potential injunctive relief. And if you were to actually delve into -- if one were to, not necessarily you -- all the evidence that has been produced thus far in the case, the evidence that's been proposed in the final pretrial order as manifested by the documents that have been shown, and/or those documents which have been produced or made available for production, Your Honor, we've seen nothing that goes to those points with respect to whether there was deception or tendency to deceive the consumer audience, nor was there anything with respect to the deception being material nor as any resulting injury whether something that some equitable injunctive relief could cure or something that actual damages would be payable on. 17 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 So we stand by our original position that is as expressed in the motion in limine, Your Honor. THE COURT: All right. Thank you. Well, with respect to that kind of evidence, the reason I had asked specifically about damages is because, as you know, Rule 26(e) does require supplementation of the Rule 26(a)(1) obligation to propose a calculation of damages. And so if that hasn't been done, then Rule 37 would preclude it. But Mr. Dosek has indicated there isn't any damages evidence at this time. With respect to whether or not the other elements of the false advertising claim can be met, I'm not going to grant the motion in limine on the basis of these very broad document requests that said "Identify every document related to your claims." I think you need to be more precise than that if you're going to invoke Rule 37(c) and preclude somebody from presenting evidence. So I'm going to grant this motion to the extent it seeks to preclude evidence of damages, with the caveat that manifest injustice may permit it to come in if an indemnification call occurs. it. The next motion is Docket Number 103, it's Midwest's motion in limine to bar evidence concerning Soilworks' costs. Midwest seeks to preclude Soilworks from introducing evidence But otherwise, I'm going to deny 18 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 of the cost of producing its products. The interrogatories indicate that Midwest requested the information and Soilworks objected. Mr. Marvinney, did Midwest ever follow up on that objection? MR. MARVINNEY: compel filed in the case. Your Honor, there was no motion to The parties had reached that position, that point in time where the resulting answers were given following the Court's discovery cutoff date, and in your prior rulings we were aware of your adherence to that date and we did not file a motion to compel at that time. THE COURT: If that response, that objection, has never been challenged, how can I preclude evidence on their failure to respond to it? MR. MARVINNEY: Your Honor, if I may. We asked, and Mr. Skeriotis was the person who posed the question that resulted in an answer that we have, being the gentleman over for Soilworks, that they have produced all of the documents that they have in any way, shape, or form. And so relying upon that and seeing no further information regarding these particular issues, that being their underlying costs, it was posed to Mr. Falkenberg in deposition, his answer was that's it, you have what we have. evidence. So we're left with absolutely no A dearth would be a polite word for it, Your Honor. There is no evidence produced in this case in any way, shape, 19 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 or form as to testimonial or document which suggests anything other than a single line item as to what their costs underlying their cost of production is, cost of goods sold were in this case. So, as a result, when the date actually passed as to the discovery cutoff in this case, our understanding was, and we did not file a motion to compel, our understanding was, was that discovery not had, not produced, not responded to, subject to Rule 26(e) supplement, if there's been no other discovery, no other production, your order stands. And your order was discovery's done and there's no further motions to compel. If you haven't gotten it together by this point, it's done, and you're precluded from bringing anything in at that point. So it was our understanding the filing of a Rule 26 -- I'm sorry, Rule 37 motion to compel at that time would be basically a moot effort because your order spoke for itself. And in light of that, we didn't take further action. THE COURT: My problem with that, Mr. Marvinney, is if you ask a question and another party responds by saying, "I object, it's an improper question," even if discovery then closes, what you're asking me to do is preclude them from producing information because they didn't produce it in response to your question. If your question was objectionable, they didn't to have produce it in response. 20 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 MR. MARVINNEY: THE COURT: Your Honor, if I may? Yeah. In addition to that particular mode of MR. MARVINNEY: discovery, interrogatory, there were requests for production of documents, and the request for production of documents yielded documents which, by their own admission, was everything they have. And those documents showed nothing with respect to the underlying cost of goods sold in their repertoire of products. The next item that came up, Your Honor, was in deposition. Another mode of discovery. The question is posed to Mr. Falkenberg, "What are your costs of goods sold?" There's no information available. information at the deposition. So by using those three means of discovery, even if the interrogatory, in your opinion, Your Honor, is overbroad or not reasonably calculated to lead to that particular precise answer, the request for production of document responses which, again, as I say, the Soilworks folks said "this is everything we have," in addition to the deposition testimony by Mr. Falkenberg, which was there is no further underlying information, leads us to have no other way to defend this aspect of the case, and now for them to walk in and say they have cost-of-goods-sold data because they've already told us, their CEO, "we don't have that information." THE COURT: The request for production that you served He didn't know. He had no 21 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 was also objected to. MR. MARVINNEY: Did you ever resolve that objection? Other than finding out from Soilworks And when we look through that we have everything they have. everything they have, we don't have cost-of-goods-sold data at all. THE COURT: Mr. Dosek, are you intending to use documents in any way to prove the cost of goods sold during trial? MR. DOSEK: Actually, Your Honor, we have provided Midwest with specific information with respect to sales of the Durasoil product and sales of the Soiltac and Gorilla-Snot product, gross sales and cost of those sales. Admittedly it is summary information, and it doesn't include all of the expenses. But those documents have been produced to Midwest. And one of the problems and the reason that the original requests were objected to was because the request encompassed all of the products that Soilworks deals with and not all of the products Soilworks deals with are at issue in this case. So that never was resolved. But notwithstanding that, we have provided them with sales information and cost-of-goods-sold information with respect to those products: Gorilla-Snot. THE COURT: So it sounds as though you're saying, Durasoil, Soiltac, and Mr. Dosek, that you do not intend to use at trial any document 22 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 to support your cost of goods sold that has not been produced to Midwest during the course of discovery. MR. DOSEK: THE COURT: Mr. Marvinney? MR. MARVINNEY: Not at all. The only evidence we have That is correct, Your Honor. Do you disagree with that in any way, was, as Mr. Dosek mentioned, there was a line item summary produced with absolutely no backup whatsoever, within the last 60 days. That's it. So there's no documents that support any of the cost of goods sold. THE COURT: said or agreeing? MR. MARVINNEY: No, we're agreeing. There's no basis. So are you disagreeing with what he just There's no documents in any way whatsoever that show this. THE COURT: then. Sounds like we don't have a disagreement, You have documents you intend to introduce, you don't think it shows very much, but we're not disputing over documents. Am I right? The documents that they, quote, intend MR. MARVINNEY: to produce, close quote, would be the documents which are the line item summary, and those documents would be inappropriate because they have never produced any backup for us to test in the course of discovery in the case. THE COURT: Well, but that's a different issue. You didn't move in limine on that. You only moved in limine to 23 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 preclude them from using documents they didn't produce. sounds like they're not intending to. something? MR. MARVINNEY: Honor, that's correct. THE COURT: And it Am I misunderstanding That would be the gist of it, Your I'm going to grant this motion to the extent there are any documents that were not produced during discovery that may be used during trial, but it sounds as though there won't be any. The next motion is Number 104, Midwest's motion in limine to bar testimony and evidence regarding the validity or construction of Midwest's patents. Midwest seeks to bar Soilworks from producing any evidence on the construction of the Midwest patent claims asserting that Soilworks did not provide such evidence in discovery, never requested Markman hearing, has not produced an expert on claim construction. Soilworks responds by saying that it did produce a claim chart in July of 2007, that its witnesses were questioned at some length about the chart in depositions. Let me first ask you, Mr. Marvinney, do you disagree with the assertion that they produced a claim chart in July 2007 that was then the subject of deposition questioning? MR. MARVINNEY: claims chart, Your Honor. We do not dispute they produced such a Mr. Skeriotis will be addressing the 24 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 merits of this particular motion. THE COURT: Okay. Mr. Skeriotis, do you have any objection to their using that chart if they produced it? MR. SKERIOTIS: THE COURT: other evidence. MR. SKERIOTIS: THE COURT: Mr. Passarelli? Correct, Your Honor. Mr. Dosek are you -I do not, Your Honor. What you're saying is they cannot use any Okay. Are you intending to use any evidence on claim construction besides the chart? MR. PASSARELLI: Your Honor, at this point in time I don't believe either party has a right to use any extrinsic evidence with regard to claim construction. The exhibits include the patents, so we have the intrinsic evidence of the claims and the patent specification. The file history is not in evidence, but obviously that may come into play depending what develops at trial. that answers your question. Your Honor, I guess what I'd like to call to the Court's attention at this point is there's never been a claims analysis provided in this case. We've been asking for it And But -- if since July of '06, before the litigation was initiated. quite frankly, we don't know what the patent holder's position is on an infringement claims analysis. The 30(b)(6) deposition testimony of the most 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 knowledgeable individual at Midwest indicates there is no infringement. And so the concern I have with regard to limiting evidence is we don't even know what they're claiming the infringement is at this date. There's no claims chart, there's no piece of paper to present to the jury that provides here's the claims and here's how the accused product reads on those claims. THE COURT: Mr. Skeriotis. Your Honor, first of all, this goes -- MR. SKERIOTIS: THE COURT: into a mike. MR. SKERIOTIS: We need to have you speak more closely I believe this goes beyond the motion in limine now to talk about how we're going to present our case and try it to the jury or the Court. THE COURT: pretrial conference. MR. SKERIOTIS: Honor. We are going to rely upon the deposition testimony of Mr. Falkenberg and the documents that have been produced during discovery to show that the accused product, which is the Durasoil product, contains the ingredients that meet the elements of the claims, specifically claim 1 of the '260 and I believe the '277 patent. '266 and '270 patent, Your Honor. Yes. Thank you. Apologize, Your However -- But it's very appropriate for a final And we did provide a claim chart, Your Honor, that 26 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 specified what the claims mean, and there's been no request for Markman hearing by either party. And pursuant to your previous orders regarding the -- your standing order with respect to the case management plan, it was incumbent upon either party to request a Markman hearing if they so desired. THE COURT: got today. Well, that's one of the issues that I've How do we try this patent case without having had any claims construction? MR. SKERIOTIS: Your Honor, as I'm sure the Court is well aware, you can -- not every claim is subject to a claim construction. to that. Not every claim element in a patent is subject It's only those disputed claim terms. THE COURT: Do we know what those are? Apparently we either agree or we don't MR. SKERIOTIS: know because neither party has pursued a Markman hearing indicating they have a discrepancy with each other's claim construction. THE COURT: Well, that's my question. How do we try a patent case when the people in this room don't know if we agree on the meaning of the claims? MR. SKERIOTIS: The way we're going to go about it with respect to our evidence, Your Honor, is, for example, if in fact the claim says it protects a chair and the accused product has a seatback and legs, one would point to the accused product and say here are the legs, here's the seatback. And 27 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 therefore those two elements would be found on the accused product. THE COURT: And if the other side says we don't agree it protects a chair, then what do we do in front of this jury in the middle of trial? MR. SKERIOTIS: Well, again, that's part of our motion in limine to say this isn't the proper time to have a claim construction effort because that should have been done prior to the Court, so the jury would say -THE COURT: But it wasn't done by either side. Correct. So what you do, in my MR. SKERIOTIS: opinion, Your Honor, you take the ordinary meaning of the claim terms as they're given or there's no claim construction at all, and that would be our burden to show that their product meets our claims as written in the patent. THE COURT: It is my obligation to say it applies to a Correct? To construe the chair or doesn't apply to a chair. claim. MR. SKERIOTIS: To construe the claim, yes. Issue of infringement is a fact question. THE COURT: So we're in front of a jury, we're now a day into trial and it's clear you think it covers a chair and they don't. What do we do? I've never construed the claim. The jury can't decide that issue. MR. SKERIOTIS: Typically what you would do, Your 28 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Honor, it's my understanding is you take the claim element just as an ordinary case where the claim itself has not been -- the claim element has not been defined and you say if you find that the claimed element is found on the accused product, or contained within the ingredients of the accused product, check here. If you believe the plaintiff, in this case the defendant, has shown by a preponderance of the evidence that this element is not found in the Durasoil product, check here. And that's how you would go down that. THE COURT: But if you're claiming that the claim is for a chair and they're claiming it's for a desk, don't I have to tell the jury it is a desk or chair before they can start checking boxes? MR. SKERIOTIS: Well, again, Your Honor, I believe that to some degree you would have to do that if the claim element itself is in dispute by the two sides. However, again, not every claim construction, not every claim element gets defined and in the situation -THE COURT: I understand that. My problem, and I don't mean to interrupt you, but I'm really perplexed by this. I've never seen a trial where you're doing claim construction on the fly in front of the jury. Or where you start the trial Have you not even knowing what claims need to be construed. tried a case like that? I've done Markman hearings to resolve that and it's 29 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 all typically done before summary judgments are filed. Everybody knows what the disputed claims mean once that ruling is in hand, and you go forward and try the case on the basis of that construction. I'm really struggling with how we do this when we start trial on day one not even knowing what needs to be construed. I'm inviting your comments. Mr. Passarelli on that as well. MR. SKERIOTIS: I guess I apologize, Your Honor, if I But, again, you would try it the And I'll hear from haven't made myself clear. same way we would try a situation where the claim itself, or claim element, has not been construed by the Court because the parties at the pre-Mark- -- or at the Markman hearing agree the claim does not need to be construed by the Court. So then you go through the trial and at trial the claim apparently has taken on a different meaning between plaintiff and defendant. At that point, the Court doesn't go back and then say, okay, I'm going to go back now and construe this claim now. It submits that claim element to the jury and says, if you find that the plaintiff, again in this case the defendant, but if you find the plaintiff has shown, has met its burden with respect to showing that that claim element is found in the accused product, then you check here. And that's the way it goes down throughout the jury instructions. 30 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 So, for example, in this case, let's take, for example, as a hypothetical, we have a difference opinion what a synthetic isoalkane is. THE COURT: court reporter. MR. SKERIOTIS: I'm sorry. You want to say that more slowly for the Let's say, for example, we have a difference of opinion as to what a synthetic isoalkane is. I-S-O-A-L-K-A-N-E. Which is a claim element in claim 1 of What the jury would have in front "If you feel as though the both the patents at issue. of them is an instruction: defendant has shown beyond a preponderance of the evidence that a synthetic isoalkane is found in the Durasoil product, check here." The next claim element: "If you find that the Durasoil product has a binder, check here." If in fact -- and the third one would be, "If you have found 1 and 2 to be found in the Durasoil product, you necessarily have found infringement because you have satisfied all elements of claim 1, which is an independent claim of the '267 and '270 patents." And if in fact the jury says, "Well, I don't know what a synthetic isoalkane is," then I submit, Your Honor, we didn't prove that element to the jury. THE COURT: Let's say you and Soilworks disagree on 31 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 what a binder is -- you're arguing it's one thing; Mr. Passarelli is arguing it's a different thing -- and I ask the jury on the verdict form, have they proven that the Soilworks product has this binder, and the jury says "we don't know what is meant by 'binder,'" then you're saying I ought to instruct them if that's unclear to you, then Midwest loses. MR. SKERIOTIS: That would be correct, Your Honor. That's my understanding of the way the law would work in a situation like that. THE COURT: So the burden of claim construction ambiguity falls on you. MR. SKERIOTIS: I would say at this point, Your Honor, from the standpoint of proving our case as to whether or not infringement is found by the jury on that claim element, that would be a correct answer, yes. Whether or not the burden is on me, I don't know of any case law that would support that as far as claim construction. THE COURT: ambiguity is yours. Let me state it differently. The risk of If you have to prove infringement and you haven't clarified the meaning of the claims going into trial, you take the risk of ambiguity that will prevent the jury from ruling in your favor. MR. SKERIOTIS: I believe that's accurate, Your Honor. As set forth because, again, I think the patent holder has burden of proving infringement, and in order to prove 32 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 infringement he would have to show the claim necessarily was understandable by the jury such that they found it on the accused product. THE COURT: Okay. Thanks. Mr. Passarelli. MR. PASSARELLI: Thank you, Your Honor. This issue permeates the entire trial, including our case. Because our 43(a) case is based on our belief that they're using this patent and they're abusing the patent in terms of its scope. And the difficulty is today we don't know They haven't provided what their infringement claims are. them in answers to interrogatories, they haven't produced a single document that would provide that. They have objected to any questions by the 30(b)(6) most knowledgeable individual at Midwest as to any analyses. And in fact the 30(b)(6) witness, the most knowledgeable witness for Midwest, indicated in his sworn deposition testimony that he's not aware of any infringement. They're actually at that point in time, Your Honor, playing, I thought, somewhat of a clever game. What they were basically saying is we found documents in the public record that suggest characteristics to the Durasoil product, and we don't believe or we've never done an analysis, we haven't produced an analysis which demonstrates that Durasoil falls within the claims element. But either your falsely 33 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 representing the product characteristics, which is a 43(a) claim, or you're violating our patent. Well, as we stand here today, given the Court's ruling on the -- on the summary judgments, they no longer have that issue either/or. they haven't done so. They now have to prove infringement and And they cannot do so because the minute they try to introduce any testimony relevant to that point we're going to object, and I don't believe they can introduce it. So I honestly believe the patent infringement claims goes away at this point. But we're obviously waiting until the presentation of evidence to do that. And it's very difficult for this Court to address construction issues if the Court doesn't know which claims -we don't even know what claim of the two patents they contend are infringed. THE COURT: Well, so it sounds, Mr. Passarelli, as you're saying, we go to trial and you make a motion at the close of the plaintiff's case. MR. PASSARELLI: Is that what you're saying? Right now I believe a directed verdict will be -- will conclude the patent infringement part of this trial. Obviously, 20/20 hindsight, now that we know what the Court's order was, we'd love another shot at summary judgment. That's gone. But -- but as to the construction issues, we 34 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 don't know, since we don't know what claims -- I mean the Court is being asked to construe a patent without any circumstances surrounding it, which I agree with you, I've never seen a patent case where we didn't even have a claims analysis. And the Robotics case, which we directed the opposing counsel's attention to before the litigation started, suggested you have to do an analysis before you start accusing people of patent violations. THE COURT: Mr. Skeriota? MR. SKERIOTIS: THE COURT: Skeriotis. I'm sorry. I'll learn it. And we still don't have it. Hold on just a minute. All right. Skeriotis. You've only listed one witness for trial, I assume it's the gentleman who's here. Well, you've listed possible Is it your intention to others, but only one certain witness. have him present the evidence from which the jury could find patent infringement? MR. SKERIOTIS: Falkenberg as well. plaintiff. THE COURT: Now, if he said in his deposition that he Yes, Your Honor, as well as Mr. Chad And the documents produced by the didn't know of any infringement, how is he going to testify differently at trial? MR. SKERIOTIS: He didn't say that, Your Honor. What 35 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Mr. Vitale said was, based upon a document that was presented to him as an exhibit during his deposition, it would seem to indicate, based upon that document, that there would be no infringement. He did not say that pursuant to all of the information that he's received with respect to the Durasoil product that there is no patent infringement. testified to that. And in fact, Your Honor, we've received other documents after the close of discovery which shed further light on the Durasoil patent infringement produced by Soilworks. THE COURT: from Soilworks? MR. SKERIOTIS: THE COURT: That's correct, Your Honor. You're saying you received the documents He never Do you agree with the assertion of Mr. Passarelli that you have never explained to Soilworks how their product infringes the '266 and '270 patents? MR. SKERIOTIS: We do not, Your Honor. At the time -- again, we've never been asked a question with respect to all the documents that have been produced in this case, is there any infringement based upon the documents produced and the testimony of Mr. Falkenberg, which, by the way, occurred after Mr. Vitale's deposition, whether or not there was any infringement. For example, Your Honor, the claim chart produced by 36 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Soilworks indicates that they meet several elements of claim 1 of the '266 and '270 patents. Then we received a document afterwards, Your Honor, that shows that they indeed meet other elements of the claim. Their own documents, Your Honor, prove patent infringement, that they have supplied to us. THE COURT: That wasn't my question. My question was, that I didn't ask very clearly, have you ever explained to them how you think there's infringement? think there's infringement? MR. SKERIOTIS: that question. believe -THE COURT: No. You just explained why you think I guess I beg the Court to explain Do they know today how you Have we outlined the case for them as to why we their products infringe your patent. MR. SKERIOTIS: Yes, we have. We told them based upon publicly available information that we were able to ascertain at the time the deposition was taken that they infringe our patents. THE COURT: Well, have you said more than that? Have you said, "and this is why," and explain to them the infringement? MR. SKERIOTIS: This is a chemical case, Your Honor. What we did was we said your product contains a synthetic isoalkane, and we believe your product contains a binder consisting of either carboxylic acid, an ester, and two other 37 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 things I can't recall. them that, yes. THE COURT: Or two other things. So we have told In what form did you tell them that? We told them in written form that MR. SKERIOTIS: predated this trial -- I'm sorry, predated the complaint that gave rise to declaratory judgment action and we asked for more information about that, which they never supplied. We've also supplied -- given testimony based upon, again, publicly available information and said these are the claim elements we believe are met. THE COURT: What testimony are you referring to? Mr. Vitale's testimony, Your Honor, MR. SKERIOTIS: where he said these claim elements are met, but then they would specifically provide him a document and say, based upon this document, would you believe there's any patent infringement. And his answer was based upon the document we have thus received, it appears you don't have the binder. But then later documents, such as claim chart, as well as testimony from Mr. Falkenberg, would indicate that they do. THE COURT: Mr. Passarelli? MR. PASSARELLI: misstatement. Yes, Your Honor, I believe that is a For each claim All right. Any other comments, We asked Interrogatory Number 7: of defendant's patents that defendant asserts are infringed by 38 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 plaintiff's products, A, identify and explain in detail the basis for each claim of infringement, semicolon, and, B, provide a claim chart showing the correspondence, parentheses, or, alternatively, the lack thereof, parentheses, between each and every element of each such claim and the ingredient, composition, component, feature, portion, or chemical material of each such product identified in your answer to subpart A of this interrogatory that you contend infringes in the asserted claim. Defendant objected subject to and without further waiving any of the objections defendant answers as follows: A, the basis for defendant's belief that plaintiff Durasoil product may infringe defendant's patents is plaintiff's publicly available information regarding its Durasoil product and the pre-lawsuit communication between respective counsel regarding the issue of infringement and, B, a claim chart will be provided. A claim chart has never been provided. There is There's no no claim chart in the identification of witnesses. piece of paper that would allow this jury to understand in any respect which of the claims they contend are accused or infringed and how our products fall within those claims. THE COURT: Did you ever follow up on that interrogatory answer? MR. PASSARELLI: No, Your Honor, because after the 30(b)(6) deposition, his deposition testimony confirmed they 39 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 have no evidence to support -THE COURT: So you didn't. Did not. You never -- MR. PASSARELLI: THE COURT: it? MR. PASSARELLI: -- never in effect forced them to disclose I did not. But I can't imagine they can now -- they can't point to -- the jury to a document that analyzes that. They admit they have never done an analysis. In their deposition there was some analysis done by the lawyers, but we weren't allowed to examine the witness under -- they took the position it was privileged attorney work product. MR. SKERIOTIS: real fast. Your Honor, want to clear up one thing Exhibit Numbers 2 and 3 in our exhibit list are the I'm not sure what claim construction charts that we provided. Mr. Passarelli is stating when he says we never provided a claim chart. THE COURT: interrogatory? MR. SKERIOTIS: I believe so. If not, if there was -I Were those provided in response to that if it -- I believe it was. And if not, was there an order? don't recall if there's an order in this case requiring us to exchange claim charts. their request. MR. PASSARELLI: That was a claim construction chart If not, it was provided pursuant to 40 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 not a claims infringement chart, which we asked for in the initial letter, and then subsequently in the interrogatory. THE COURT: started. All right, let me come back to where we Mr. Passarelli, is Soilworks going to seek to use any documentary evidence on this infringement issue besides the patent that you mentioned a moment ago and the July 2007 chart? MR. PASSARELLI: With the possible exception that the parties have exchanged the file wrapper, but neither party has marked it as an exhibit and that would potentially be an intrinsic evidence that the Court could use to construe a patent claim if that issue comes up. THE COURT: Well, in light of what's just been said, it sounds like there's nothing they're trying to use that your motion in limine is directed at. Mr. Skeriotis? MR. SKERIOTIS: That's what it sounds like, Your Do you agree with that, Honor, yes, I would agree with that. THE COURT: Okay. Well, with respect to this motion, I'm going to grant it because there is nothing that Soilworks intends to use or, in my view, could use beyond the patents themselves and the July 2007 chart. The motion also seeks to preclude Soilworks from challenging the validity of the Midwest patents. Soilworks didn't respond. I upheld the validity in my summary judgment motion, so I think that's why you didn't respond. 41 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 MR. PASSARELLI: THE COURT: Correct. The next motion by Midwest is the motion in limine regarding any legal advice that Soilworks may have received. I'm going to deny this one as moot. There's no issue on that. Soilworks has made clear in its response it's not asserting an advice-of-counsel defense. The next motion in limine concerns testimony and evidence regarding composition of Durasoil and other products. This is Docket 106. Midwest seeks to exclude any evidence on the chemical composition of Durasoil asserting that it asked for it in interrogatories and that it was not provided, with the exception of three ingredients. In response, Soilworks says that it did provide that list of three ingredients. It also provided the MSDS for the product, and a sample of the product. My question to you, Mr. Passarelli, is in terms of documentary evidence, do you intend to use anything beyond the list of ingredients, the three ingredients that was provided, and the material safety data sheet to prove the composition of Durasoil? Mr. Dosek? MR. DOSEK: THE COURT: No, we don't. Okay. All right, I will grant the motion and the evidence 42 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 will be limited to those documents. The next motion is Docket 107 concerning liability insurance. I'm going to grant this motion. Midwest wants to bar evidence of liability insurance. Southwest agrees. So I'll grant the motion. There will be no evidence on insurance. The final motion is Docket Number 110. It concerns evidence regarding innocent trademark infringement and Midwest seeks to preclude Soilworks from addressing that issue. As I previously indicated, I did not decide in my motion for summary judgment that the infringement was willful, and therefore I'm going to deny this motion. Let me ask you a question about the final pretrial order. Page 13, right at the bottom, paragraph i. Paragraph i says an issue in the case is whether from 2006 through today Midwest has made statements that would basically be false advertising. Now, I'd understood you a moment ago, Mr. Dosek, to say you're only intending to litigate the four documents, the two letters to the Alaskan company, the press release, and the chart. So I'm assuming there's nothing in Am I missing this paragraph that's going to be litigated. something? MR. DOSEK: There isn't anything in this paragraph, Your Honor, that's designed in any way to expand upon the limitation. We don't have evidence of the false advertising on 43 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 the part of Midwest beyond those documents and the circumstances surrounding those documents that we've previously discussed. THE COURT: All right. order. Okay. I'm going to adopt your final pretrial It will govern the evidence, objections, and issues to Obviously my rulings on the motions in And be addressed at trial. limine will also be relevant to what happens at trial. any changes to it will require satisfaction of the manifest injustice standard. MR. MARVINNEY: THE COURT: Your Honor? Yeah. On behalf of Midwest may I address the MR. MARVINNEY: Court on just a couple points, if I may? THE COURT: Related to? The final pretrial order as it's MR. MARVINNEY: been -THE COURT: You may. On that page 13, that one subpart i at MR. MARVINNEY: the very bottom of the page about which you were just speaking with Mr. Dosek, there was an unintentional and accidental omission on the defendant's contention there, and it would be obviously similar to what Mr. Skeriotis was saying before. And I didn't mean to have that omission in any way influence the Court -- 44 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 that. THE COURT: That's why I asked about it. But it seems to me it's not really relevant because we all know now that the false advertising claim by Soilworks is limited to those four instances. MR. MARVINNEY: Thank you very much. That clarifies I just didn't want that to be subsumed into the record without any adjustment of that. And if I may, Your Honor, with respect to exhibits, Mr. Myles raised a point to me today in our discussions prior to coming over here, he's obviously much more familiar with practice before this Court than I, and I apologize for that. Not his expertise but my lack of, if you will. And with respect to trying to put together exhibits, a question came up about exhibits that might be used in the course of summary or course of just demonstrative or exemplar purposes, and Mr. Myles made a point to me that we should bring such exhibits to your attention, obviously, if they aren't already included in the books. There were just a few photographs that we had found that would be used as demonstrative of Mr. Vitale's efforts to perfect and brand the Soil Cement brand and these were just going to be used in the process of, "Mr. Vitale, can you tell us," "Yes, I've got a number of photographs showing my trucks and showing my advertisements dealing with the Soil Cement brand over the years." 45 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 133. That was my omission and my error, Your Honor, in not including these in the document because I didn't look at these as being something we'd necessarily be using to admit to necessarily prove a specific point of evidence but just to provide background. I have them with me. I can give them to the other side today. They have already seen these in I can provide a These discovery, there's no surprise here at all. copy to the bench as well, if you should so choose. would be Exhibits 131 and 132 to our pretrial order, if in fact it's all right at this time to add them. THE COURT: Are these matters you would seek to have admitted into evidence? MR. MARVINNEY: Potentially, yes. But it's -- again, it's supplemental to what Mr. Vitale's testimony would be as opposed to anything that's new here at all before the Court. THE COURT: Mr. Dosek. Just one minute, Gary, and we'll get you in here. MR. DOSEK: Among all the documents -If I -- if I may. It would be 132 and MR. MARVINNEY: I apologize for misspeaking. MR. DOSEK: As I was saying, among all the materials and documents that have been exchanged by the parties in this case, I very well may have seen what he's referring to. don't know that I have. But I And I don't know that any reference And what he's talking about has been made to them previously. 46 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 and purporting to do does not deal with charts or demonstrative aids. He's purporting to ask these be added to our exhibit That's list as exhibits to be offered into evidence at trial. not demonstrative. Those are -- those are evidentiary trial exhibits that he's asking be added to the list. THE COURT: MR. DOSEK: THE COURT: So you're objecting? I am objecting. All right. We're going to change court reporters, so nobody talk for a minute. (Break taken to change court reporters.) THE COURT: All right. Mr. Dosek, do you see prejudice if those documents are allowed to come in? MR. DOSEK: answer. That's really a difficult question to I do not recall having seen these photographs before, and to answer as to whether or not there would be prejudice if they come in on the spot, as I stand here, I don't know. THE COURT: do. All right. This is what we're going to I'm not going to permit them in the final pretrial order We're going to set in a minute a final conference today. that's going to occur a couple of days before trial. Provide copies, if you would, Mr. Marvinney, to Mr. Dosek that he can take with him. MR. MARVINNEY: THE COURT: He has them. So you don't want them back? No, those are his copies. MR. MARVINNEY: 47 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 time? THE COURT: So please be prepared at that final Or conference to state if you feel you're prejudiced by them. alternatively, if you think there's some additional documents you need to put in to counter them, identify those and I'll decide at that final conference if you're prejudiced, or if we can balance it and let you each bring in more, and I'll make the call after you've had a chance to think about that. Okay. Let's talk about the length of trial. I'm a bit puzzled by this, so Mr. Dosek or Mr. Passarelli, perhaps you can help me. You have asked for 16 hours for your case: 12 hours for your case and four hours for rebuttal. Maybe they are You've dividing the four hours equally, so it's 14 hours. really got one claim you're proving, which is this false advertising claim based on four documents that sounds to me you could do in a couple of hours. Why are we at 14 or 16 hours in your estimate of trial MR. DOSEK: The only reason that we are, Your Honor, is that I guess my concern is that when considering the allocation of time, we're talking about our cross-examination of other witnesses as opposed to our own direct testimony and direct evidence in support of our claims. I would agree with you that -- that presentation of our case with respect to our claims should not take the amount 48 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 of time that's identified in the pretrial. The bulk of the time I think is going to be spent by us in defending against the claims, the patent infringement and trademark infringement claims raised by the defendant. THE COURT: MR. DOSEK: Okay. So I guess, you know, the answer is that that was intended to encompass all of those activities. THE COURT: Well, coming -- okay, thanks. Coming to Midwest, I can't imagine that there's going to be much, if any, trial time devoted to your false advertising claim, Mr. Marvinney, where you're really just seeking injunctive relief because Durasoil claims -- because Soilworks claims it manufactures Durasoil. That doesn't look like a big time consumer to me, am I about right? MR. MARVINNEY: that's correct. THE COURT: Similarly, your trademark infringement No, I think you're on about that, claim is only an issue of damages, so that's not a particularly complicated matter. I mean, you're going to put on the evidence for damages that you think you need to, and I'm going instruct the jury I've already found trademark infringement and I'll probably end up modifying it, or at least I'll have the discretion to modify it afterwards, so I don't see that being a big time consumer. MR. MARVINNEY: If I may, Your Honor, I see where 49 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 you're going with this, and I don't disagree. Again, as with Mr. Dosek, we were trying to predict, in some ways, as you're very familiar with, the unpredictable, and trying to discern what would be the amount of time that we felt fairly would, on the outside chance, keep within what we need to prove and what we'd have to deal with in cross-examination, and allowing for time for Mr. Dosek's cross-examination on these issues, an -THE COURT: Well, your unjust enrichment claim will be no different than the damages claims on your trademark infringement, right? MR. MARVINNEY: THE COURT: Much of the -- much of the -- It's the profits you're going to claim. And much of the evidence would be MR. MARVINNEY: subsumed within the multiple claims, Your Honor. THE COURT: So that leaves infringement, and we've learned a lot today about the sparsity of evidence on infringement on both sides. I mean, there's nothing hidden. You didn't think there was You guys know what's out there. much coming in here, and now you've confirmed that's all there is. So it doesn't seem to me that's a multi-day issue, either. Am I missing anything in what you're going to have to cover? MR. MARVINNEY: I would think not, Your Honor. The question that I have, and that again goes with my 50 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 lack of familiarity, perhaps, with your practice here, and that is your trial days would assume how many hours per day? THE COURT: We are going to get si

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