Masimo Corporation v. Philips Electronics North America Corporation et al

Filing 849

MEMORANDUM ORDER re various motions in limine. Signed by Judge Leonard P. Stark on 8/27/14. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
MASIMO CORPORATION,

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Plaintiff,
: Civil Action No. 09-80-LPS
: CONSOLIDATED

v.
PHILIPS ELECTRONIC NORTH
AMERICA CORPORATION and
PHILIPS MEDIZIN SYSTEME
BOBLINGEN GMBH,
Defendants.

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MEMORANDUM ORDER
At Wilmington this 27th day of August, 2014, having reviewed the parties' proposed
pretrial order including briefing on various motions in limine ("MIL") (D.1. 835 Exs. 15, 16),
IT IS HEREBY ORDERED that:
1.

Masimo's MIL 1, to exclude argument and evidence ofNonin PureSAT's FDA

Clearance pursuant to § 51 Ok, is DENIED. Philips' intended use of such evidence, to show that
Nonin's product is safe and effective like the Masimo product which the FDA found to be
equivalent, does not violate 21 C.F.R. § 807.97 ("Any representation that creates an impression
of official approval of a device because of complying with the premarket notification regulations
is misleading and constitutes misbranding."), as it does not attempt to treat FDA Clearance as
endorsement ofNonin's product. The evidence is probative of whether Nonin's product is an
acceptable alternative (which is a key dispute relating to damages at the forthcoming trial), a fact
confirmed by Masimo's own use of FDA Clearance decisions in its own marketing materials.

1

The Court does not perceive any unfair prejudice to Masimo from introduction of this evidence,
but even if there is some such prejudice it does not come close to substantially outweighing the
probative value of the evidence. Additionally, Philips has identified adequate and appropriate
witnesses (i.e., Masimo's Kiani and Lee and Philips' Stone) through which it can introduce the
disputed evidence.
2.

Masimo's MIL 2, seeking to preclude Dr. Ochroch from testifying to certain

opinions, is DENIED AS MOOT, based on the parties' representation that Philips has agreed to
drop its assertion of its '535 patent. (See D.I. 848) 1
3.

Masimo's MIL 3, to prevent argument that certain changes Masimo made to its

source code after receiving Philips' infringement contentions, is unopposed and GRANTED.
4.

Philips' MIL 1, to exclude certain testimony ofMarinow, relating to purported

efforts by Philips (and its predecessor) to infringe Masimo's patents and copy Masimo's
products, is GRANTED. As Philips has conceded infringement ofMasimo's asserted patents;
no claims for willful infringement, indirect infringement, or contributory infringement remain to
be tried; and Masimo has an extensive portfolio of U.S. patents and there is insufficient evidence

1

The parties have requested that the Court rule during trial on objections to expert
testimony as being beyond the scope of what that expert has previously disclosed, rather than
defer ruling on such objections until after receiving post-trial briefing. This request is
GRANTED. The parties are advised that in evaluating whether challenged expert testimony is
"beyond the scope," the Court in this case views the "scope" of what has previously been
disclosed to include anything that was disclosed by an expert in any expert report, any expert
declaration, and/or any expert deposition testimony. The parties must provide two copies ofthis
universe of expert disclosures to the Court at the time an expert witness is called to testify at trial.
Any time it takes to argue and resolve objections to an expert's testimony as being beyond the
scope of these prior disclosures - including any time the Court needs to leave the bench for
review of the prior disclosure materials - will be charged to the party that does not prevail in
connection with the objection.
2

that the Mari.now evidence even relates to the patents-in-suit, see generally Wyers v. Master Lock
Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) ("For objective [evidence of secondary
considerations] to be accorded substantial weight, its proponent must establish a nexus between
the evidence and the merits of the claimed invention."), evidence of Philips' intent to infringe or

admission that it infringes is not probative of any issue in dispute at the forthcoming jury trial. If
there were any probative value (e.g., relating to any Georgia Pacific factors or secondary
considerations of non-obviousness), it would be substantially outweighed by the risk of unfair
prejudice to Philips from introducing minimally relevant but potentially inflammatory allegations
of a (successful) plan to infringe.
Masimo contends that the challenged Mari.now testimony is relevant to laches, and the
Court does not rule on this issue at this time, as laches will be tried to the bench and not the jury.
However, with respect to the parties' dispute as to how and when a bench trial on equitable
issues will be held, the parties are advised that no evidence that is solely admissible with respect
to issues to be tried to the bench will be presented to the jury. Such evidence will be presented
only to the bench. (To reduce the travel burden on witnesses, the Court will consider any
reasonable request to hear such testimony from witnesses who are in Delaware to testify before
the jury on other issues during the dates the parties are here for the jury trial, outside of the
presence of the jury, e.g., after the jury is dismissed for the day or while the jury is deliberating.)
The Court will rule at trial on objections to evidence that is arguably relevant both to issues being
tried to the jury and to the bench.
5.

Philips' MIL 2, to preclude Masimo from offering what Philips' characterizes as

untimely and improper evidence that the Nonin product is not an acceptable non-infringing
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alternative, is DENIED, for the reasons stated during the teleconference of August 15, 2014,
which essentially related to this same dispute and at which the Court permitted Philips to take
additional requested discovery. 2
6.

Philips' MIL 3, to exclude evidence regarding the ex parte reexamination of

Masimo's '984 patent, is GRANTED. Further, the Court sua sponte excludes evidence of any
reexamination of any of the patents-in-suit (notwithstanding Philips' agreement to allow
evidence of the reexamination ofMasimo's '222 patent). Whatever probative value there is to
evidence that the PTO considered a particular piece of prior art on multiple occasions (i.e.,
during initial prosecution and again during reexamination) is substantially outweighed by the risk
of jury confusion and the waste of the jury's time that would be necessitated to put in full context
the details of the reexamination. Therefore, the balance under Federal Rule of Evidence 403
favors exclusion of the evidence of reexaminations at this jury trial. 3 The parties may present
evidence and argument that a prior art reference was considered by the PTO and the patent was
granted, but may not present evidence or argument as to whether a prior art reference was
repeatedly considered by the PTO and whether the patent was repeatedly allowed by the PTO.

2

To the extent both sides are seeking reconsideration of the Court's rulings with respect to
Dr. Quill's testimony (see D.I. 776 at 32-33), these requests are denied.
3

Philips' motion for leave to amend relating to allegations of inequitable conduct by
Masimo in connection with the reexamination ofMasimo's '984 patent (D.I. 805) remains
pending.
4