Munchkin, Inc. v. Luv N'Care, Ltd. et al

Filing 149

ORDER RULING ON MOTIONS IN LIMINE by Judge Otis D. Wright, II: Court GRANTS Plaintiffs Motion in Limine No. 1. 120 . The Court DENIES Plaintiffs Motion in Limine No. 2. 121 . The Court GRANTS Plaintiffs Motion in Limine No. 3. 123 . Defendants M otion in Limine No. 1 is MOOT 118 . The Court DENIES Defendants Motion in Limine No. 2. 122 . The Court DENIES Defendants Motion in Limine No. 3. 126 . In light of these rulings and as expressed during the hearing, the Court orders the parties to c onduct a settlement hearing before trial with either Magistrate Judge Rosenberg or another third party. The parties will notify the Court when a settlement hearing is scheduled as well as file a joint status of settlement describing the outcome of that hearing. (lc)

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United States District Court
Central District of California

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MUNCHKIN, INC.,
Plaintiff,

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Case No. 2:13-cv-07228-ODW(AGRx)

v.

ORDER RULING ON MOTIONS IN

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LUV N’ CARE, LTD.; ADMAR

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INTERNATIONAL, INC.,

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LIMINE [118, 120, 121, 122, 123, 126]

Defendants.
I.

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BACKGROUND

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Plaintiff Munchkin, Inc. initiated this infringement action against Defendants

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Luv N’ Care, Ltd. and Admar International, Inc. (collectively, “LNC” or

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“Defendants”) on September 30, 2013.

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6,292,962 (the ’962 Patent) is directed to an infant blanket with teether/pacifier

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attached at the corners. On February 24, 2015, the Court held a hearing on several

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motions in limine. After considering the parties’ arguments, the Court finds and

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concludes as follows.

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II.

(Compl., ECF No.1.)

U.S. Patent No.

LEGAL STANDARD

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A motion in limine is “a procedural device to obtain an early and preliminary

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ruling on the admissibility of evidence.” Goodman v. Las Vegas Metro. Police Dep't,

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963 F. Supp. 2d 1036, 1046 (D. Nev. 2013). Trial courts have broad discretion when

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ruling on such motions. See Jenkins v. Chrysler Motor Corp., 316 F.3d 664, 664 (7th

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Cir. 2002). Moreover, such rulings are provisional and “not binding on the trial

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judge” on the court. Ohler v. United States, 529 U.S. 753, 758 n. 3 (2000). “Denial

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of a motion in limine does not necessarily mean that all evidence contemplated by the

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motion will be admitted at trial. Denial merely means that without the context of trial,

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the court is unable to determine whether the evidence in question should be excluded.”

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Ind. Ins. Co. v. Gen. Elec. Co., 326 F. Supp. 2d 844, 846 (N.D. Ohio 2004).
III.

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A.

DISCUSSION

Plaintiff’s Motions in Limine [120, 121, 123]

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1. To Exclude Expert Testimony and Reports by Edward Manzo [120]

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Plaintiff argues that Defendants’ Expert, Edward Manzo’s testimony on

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invalidity is improper under Fed. R. Evid. 702. Mr. Manzo is a patent attorney and

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does not have the requisite technical background or experience to have specialized

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knowledge on the issues of invalidity in this case. Because Mr. Manzo does not

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qualify as an expert under Rule 702, he cannot provide any testimony as to invalidity

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of the ’962 Patent.

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Mr. Manzo has an undergraduate degree in physics and no other technical

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experience in any field related to the ’962 Patent. Plaintiff argues that a person of

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ordinary skill in the art would have an engineering degree in a field such as

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Mechanical, Chemical, or Materials Science Engineering and a minimum of three

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years of experience in the design and/or manufacture of consumer products or a

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minimum of ten years of active industrial experience in the design and/or manufacture

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of consumer products. Throughout discovery, Defendants did not take a position on

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the proper level of skill in the art. Regardless, Mr. Manzo does not possess any

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technical experience to qualify as an expert under Rule 702.

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Defendants argue that Mr. Manzo is an expert on Patent Office procedures and

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therefore is qualified to testify as to what the Patent Office Examiner would have

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found if certain prior art references were before him. This type of testimony is just a

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circuitous way to allow Mr. Manzo to testify about invalidity without being qualified

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to do so. Further, since Mr. Manzo does not have the requisite technical background,

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his testimony is purely irrelevant speculation.

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Lastly, Mr. Manzo’s Second Supplemental Report must be excluded because it

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was untimely disclosed. The report was not served until January 14, 2015. The initial

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expert disclosure deadline was October 6, 2014 and December 1, 2014 was the close

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of discovery. Further, the Supplemental Report refers to late disclosed evidence of the

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Disney Babies Bibs and Clown Bibs. This late-disclosed evidence was excluded by

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the Court in a separate Order. (See ECF No. 148.) Therefore, the Court GRANTS

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Plaintiff’s Motion in Limine No. 1. (ECF No. 120.)

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2. To Exclude Evidence, Testimony, or Argument Regarding Laches [121]

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Plaintiff argues that Defendants have no witnesses to testify on laches.

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Defendants’ laches defense is not based on prior sales of the accused products in this

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case, but rather two different products previously sold by LNC, the Precious Moment

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Teething Blanket and Beatrix Potter Teething Blanket. Therefore, in order to pursue

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the laches defense, Defendants must establish that those two products are

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“substantially similar” to the accused products in this case such that Defendants’

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activities are a continuous tort to which the defense of laches may be applied.

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Defendants attempted to establish substantial similarity of the products through

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their expert, Mr. Manzo, but that testimony was struck as untimely disclosed in the

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Court’s Order denying summary judgment. (See ECF No. 89.)

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Defendants argue that LNC’s CEO, Mr. Hakim is familiar with the previously

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sold products as well as the accused products and therefore could speak to their

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similarities as a lay witness.

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infringement analysis because Defendants have already stipulated that the accused

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products infringe the ’962 Patent. (See ECF No. 116.) Because Mr. Hakim has

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factual knowledge of the products, he is allowed to testify about the products and how

Mr. Hakim’s testimony would not require any

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similar they are to one another without providing expert testimony on the issue of

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infringement. Therefore, the Court DENIES Plaintiff’s Motion in Limine No. 2.

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(ECF No. 121.)
3. To Exclude Evidence or Argument on Late-Disclosed Invalidity Theories or

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Prior Art References [123]

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Plaintiff argues that Defendants should be bound by their March 24, 2014

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Invalidity Contentions and should not be allowed to shift theories with new references

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that were untimely disclosed. On February 2, 2015, Defendants served Plaintiff with a

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Notice pursuant to 35 U.S.C. § 282 identifying over 40 prior art references Defendants

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either never previously disclosed or late-disclosed, including the Disney Babies Bibs

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and Clown Bibs.

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Defendants argue they were just complying with § 282, which states that the

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party asserting invalidity must disclose information regarding any prior art references

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that they intend to rely upon for anticipation at least 30 days before trial.

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Defendants’ argument has no merit. First, § 282 only applies to anticipatory

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prior art, which Defendants never argue in their invalidity contentions or pretrial brief.

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Second, § 282 does not supersede the Federal Rules of Civil Procedure or the Patent

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Standing Order and Case Scheduling Order. See ATD Corp. v. Lydall, Inc., 159 F.3d

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534, 550–51 (Fed. Cir. 1998).

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identification of prior art to be introduced as evidence of anticipation. Therefore, the

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Court GRANTS Plaintiff’s Motion in Limine No. 3. (ECF No. 123.)

Section 282 sets a minimum period for the

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B. Defendants’ Motions in Limine [118, 122, 126]
1. To Exclude Evidence of Willful Infringement in the Context of Invalidity

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[118]

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Defendants argue that evidence of willful infringement during their invalidity

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case is prejudicial. Defendants have requested bifurcation of the case to separate

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invalidity from damages.

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In light of the Court’s ruling above to exclude testimony from Defendants’

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Expert, Mr. Manzo, and the Courts Order excluding expert testimony by Mr. Hakim

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(ECF No. 147), Defendants no longer have an invalidity case to present. If the trial

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moves forward, the only issues will be willful infringement, laches, and damages.

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Bifurcation is no longer relevant. Therefore, Defendants’ Motion in Limine No. 1 is

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MOOT. (ECF No. 118.)

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2. To Exclude Any Evidence or Argument that Munckin Complied with the
Patent Marking Requirement of 35 U.S.C. § 287(a) [122]

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Relevant to damages, 35 USC § 287(a) requires a patentee to either: (1) mark

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substantially all of the patented goods sold by the patentee with the patent number or

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(2) provide an Infringement Notice to the accused party. Defendants argue that (1)

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Munchkin failed to plead compliance of 35 USC § 287(a); (2) Munckin’s discovery

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responses admit the absences of adequate evidence regarding patent marking; and (3)

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Munchkin admits that any patent marking was on the packaging, rather than the

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product itself.

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Defendants’ own evidence to support their motion shows that Plaintiffs have

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evidence of marking. The deposition testimony of Steve Dunn describes Munchkin’s

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marking procedures and Defendants’ own exhibit shows that the products are capable

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of being marked on their tags and not just the packaging. Regardless, any deficiency

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in marking can be weighed by the jury to determine the appropriate damages amount.

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Lastly, Defendants’ arguments regarding insufficient pleadings are irrelevant at this

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stage of the case. Therefore, the Court DENIES Defendants’ Motion in Limine No. 2.

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(ECF No. 122.)

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3. To Exclude the Expert Testimony of Daniel Wetzel at Trial [126]

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Defendants argue that Plaintiff’s damages expert, Mr. Wetzel’s testimony is

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inadmissible for failure to properly apply the methodology for determining a

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reasonable royalty. Specifically, Mr. Wetzel admitted during his deposition that he

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failed to place the parties’ hypothetical royalty negotiation at either the date the patent

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was issued or when LNC first began selling the accused products.

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Plaintiff argues that the dispute concerning timing is an issue for the jury, and

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any concerns can be addressed on cross-examination. The Court agrees. Further, Mr.

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Wetzel’s report specifies that he accounted for the hypothetical-negotiation taking

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place between the parties at the time of infringement. Ultimately these issues go to

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the weight of the evidence and not admissibility. Therefore, the Court DENIES

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Defendants’ Motion in Limine No. 3. (ECF No. 126.)
IV.

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CONCLUSION

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For the foregoing reasons, the Court adopts the rulings set forth above. In light

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of these rulings and as expressed during the hearing, the Court orders the parties to

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conduct a settlement hearing before trial with either Magistrate Judge Rosenberg or

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another third party. The parties will notify the Court when a settlement hearing is

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scheduled as well as file a joint status of settlement describing the outcome of that

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hearing.

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IT IS SO ORDERED.

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February 26, 2015

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____________________________________
OTIS D. WRIGHT, II
UNITED STATES DISTRICT JUDGE

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