Enplas Display Device Corporation et al v. Seoul Semiconductor Company, Ltd.

Filing 369

TENTATIVE RULING ON MOTIONS IN LIMINE. Re: Dkt. Nos. 327 328 . Signed by Judge Nathanael Cousins on 2/22/2016. (lmh, COURT STAFF) (Filed on 2/22/2016)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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ENPLAS DISPLAY DEVICE
CORPORATION, et al.,

United States District Court
Northern District of California

Plaintiffs,
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v.
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Case No. 13-cv-05038 NC
TENTATIVE RULING ON
MOTIONS IN LIMINE
Re: Dkt. No. 327, 328

SEOUL SEMICONDUCTOR
COMPANY, LTD.,
Defendant.

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The Court has reviewed the parties’ motions in limine and objections. The Court

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tentatively rules on the motions in limine below. The parties will have an opportunity to

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persuade the Court otherwise at the pretrial conference on February 24.

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I.

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EDD’s Motions in Limine
1. Motion in limine #1 to exclude “other Enplas lenses” #9849 and #9830 is
GRANTED as not relevant.
2. Motion in limine #2 to exclude to the alleged commercial success of the

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“other lenses” is deferred. The Court is unclear as to the relevance of the

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counterfeit lenses and how they will be introduced at trial.

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3. Motion in limine #3 to exclude the BRO/ACT profilometry data is

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GRANTED. SSC represented several times to the Court that it had not

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produced this data to EDD because the data was “useless.” Based on those
Case No. 13-cv-05038 NC

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representations, and the fact that Enplas did not timely request the

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information after the discovery cut off, the Court concludes that the data is

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not relevant.

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4. Motion in limine #4 to exclude the financials of non-party Enplas

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corporation is deferred. The Court is inclined to grant the motion because

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Enplas corporation’s financials are not relevant to this case. However, the

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Court would like the parties to further address factors that Davis will use in

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her Georgia-Pacific analysis.

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5. Motion in limine #5 and #6 to exclude the late disclosed witnesses Kyung
Suk Woo, Kyung Hee Ye, and Kevin Garcia are granted. Rule 26 requires

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United States District Court
Northern District of California

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initial disclosure of all individuals “likely to have discoverable information

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. . . along with the subjects of that information,” to be supplemented “in a

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timely manner” upon learning that the initial disclosure is incomplete or

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incorrect. Fed. R. Civ. P. 26(a),(e). When a party fails to timely disclose a

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witness, the Court must exclude that witness, unless the failure was

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“substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). In

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analyzing whether to exclude a witness for untimely disclosure, courts

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consider: “(1) the surprise to the party against whom the evidence would be

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offered; (2) the ability of that party to cure the surprise; (3) the extent to

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which allowing the evidence would disrupt the trial; (4) the importance of

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the evidence, and (5) the nondisclosing party’s explanation for [the] failure

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to disclose the evidence.” San Francisco Baykeeper v. W. Bay Sanitary

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Dist., 791 F. Supp. 2d 719, 733 (N.D. Cal. 2011); Pinterest, Inc. v. Pintrips,

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Inc., 13-cv-04608 HSG, 2015 WL 2268498, at *7 (N.D. Cal. May 14, 2015).

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Here, the witnesses were disclosed on January 22, 2016, so are not timely,

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and Enplas has had no opportunity to depose the witnesses.

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6. Motion in limine #7 to exclude SSC’s damages theory based on the “other
lenses” is deferred. As noted above, the Court seeks further argument from
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the parties as to what information Davis intends to present as to the

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hypothetical negotiation between the parties.

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II.

SSC’s Motions in Limine
SSC’s motions in limine #1 as to the counterfeit lenses and #5 as to the inequitable

conduct defense have been resolved by stipulation of the parties.
1. Motion in limine #2 to exclude testimony about Enplas’ patents is deferred. The

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Court tentatively finds that Enplas’ own patents are not relevant to the question

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of infringement. Additionally, the Court tentatively finds that presenting

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evidence of Enplas’ patents at the infringement stage is highly prejudicial to
SSC and confusing to the jury because it suggests that Enplas cannot infringe if

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United States District Court
Northern District of California

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it has its own patents. However, the Court is inclined to permit testimony about

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Enplas’ patents as it is relevant to damages and the commercial success of

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Enplas’ lenses.

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2. Motion in limine #3 to exclude dropped claims and theories is GRANTED

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because these are not relevant to the lawsuit and are highly prejudicial.

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3. Motion in limine #4 to exclude any claim construction testimony inconsistent
with the Court’s claim construction order is GRANTED.
4. Motion in limine #5 to exclude Dr. Pelka from giving expert testimony is

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GRANTED because Dr. Pelka was not disclosed as an expert, and has not

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written an expert report. FRE 702. However, the Court is unclear how this

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ruling would apply to Dr. Pelka’s anticipated testimony, so the parties should be

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prepared to further address the scope of Dr. Pelka’s testimony.

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IT IS SO ORDERED.

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Dated: February 22, 2016

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_____________________________________
NATHANAEL M. COUSINS
United States Magistrate Judge

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Case No. 13-cv-05038 NC

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