Helios Software LLC et al v. SpectorSoft Corporation

Filing 568

MEMORANDUM ORDER regarding various pretrial rulings and decisions on motions in limine; A 1-day Bench Trial is set for 10/16/2015 at 08:30 AM in Courtroom 6B (3.5 hours per side). A Final Pretrial Conference is set for 10/2/2015 at 11:00 AM in Courtroom 6B; Proposed Pretrial Order due by 9/25/2015. Signed by Judge Leonard P. Stark on 5/22/15. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HELIOS SOFTWARE, LLC and PEARL
SOFTWARE, INC.,
Plaintiffs,
Civil Action No. 12-81-LPS
v.

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SPECTORSOFT CORPORATION,
Defendant.

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MEMORANDUM ORDER

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Having reviewed the parties' proposed pretrial order (D.1 560), IT IS HEREBY
ORDERED that:

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At the forthcoming jury trial that begins on June 15, 2015 ("the Jury Trial"), each

side will be allocated a maximum of 10-12 hours for its trial presentation, an amount of time the
Court deems appropriate to permit each side to have a fair trial on all issues that will be presented
to the jury. The Court will make a final determination of the number of hours within the abovestated range at or after the pretrial conference.
2.

The issues to be tried at the Jury Trial are direct and indirect infringement of the

asserted claims of the '304 patent and invalidity of the '304 patent.
3.

Defendant's request to try its laches defense as part of the Jury Trial (see D.I. 560

at 2) is DENIED. Laches will be tried as part of the consolidated bench trial on inequitable

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conduct. Evidence relevant solely to the issue of laches will not be admitted at the Jury Trial.
4.

Neither side may read to the jury or treat as undisputed facts any fact that the other

side does not agree is an undisputed fact. (D.I. 560 at 4) Nor may either side read to the jury any

or all of the other side's responses to requests for admission; Plaintiffs' request that the parties be
allowed to do so is DENIED. (See id.)
5.

Defendant's proposal (D.I. 560 at 5) that the written notice being provided

regarding witnesses expected to be called to testify live at trial shall not be deemed to prevent
calling additional witnesses from that side's witness list based on the evidence presented at trial
is GRANTED.
6.

Plaintiffs' requests that Defendant be precluded from offering evidence or

testimony regarding purchase or use of Defendant's product by Plaintiffs' counsel, that
Defendant be precluded from presenting technical opinion testimony from Ron Chesley, and that
Defendant be precluded from offering any technical non-infringement opinion from Christian
Hicks (D.I. 560 at 20) are GRANTED, but Defendant may, if it wishes, request leave to present
any or all of the evidence now excluded by raising these issues at the pretrial conference.
7.

Plaintiffs' motion in limine ("MIL") 1, to preclude Defendant from presenting

evidence or eliciting testimony regarding the Court's opinions, and that its expert (Mr. Weingust)
was permitted to supplement his damages report, is GRANTED. Any minimal probative value
of any of this evidence is substantially outweighed by the risk of unfair prejudice to Plaintiff. No
expert will be permitted to present opinions or other evidence that has not previously and timely

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been disclosed or that is inconsistent with the Court's rulings. The Court will permit the parties

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to present evidence and argument consistent with the Court's rulings and reasoning, but no

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explicit nor implicit reference may be made to the fact that these were the Court's rulings and

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reasomng.

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8.

Plaintiffs' MIL 2, to preclude Defendant from presenting evidence or eliciting

testimony regarding the related litigation (i.e., Helios v. Awareness, C.A. No. 11-1259-LPS (D.

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Del., filed Dec. 19, 2011)), is GRANTED. Such evidence and the Court's rulings -which relate
to different accused products - are not probative of the issues that will be the subject of the Jury
Trial and, even if such evidence was relevant, any minimal probative value is substantially
outweighed by the risk of unfair prejudice to Plaintiffs. The Court is not persuaded by
Defendant's contention that effective cross-examination of Plaintiffs' damages expert, Mr.
Weingust, requires reference to the Awareness litigation. Mr. Weingust's characterization of the
pertinent market does not rely on any assumption as to whether Awareness' products infringe the
'304 patent, but, rather, features and prices of products. If the fact of Awareness' noninfringement is relevant (a point on which Defendant has thus far failed to persuade the Court),
the Court would consider allowing the jury to learn of this fact, but without any express or
implicit reference to the Court's finding of non-infringement.
9.

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testimony raising the issue of inequitable conduct, is GRANTED. Evidence that relates solely to
inequitable conduct is not relevant to any issue that will be part of the Jury Trial. However,
evidence is not inadmissible solely because it is relevant to inequitable conduct, provided that it
is also relevant to an issue that will be part of the Jury Trial (subject to the Federal Rules of
Evidence, e.g., Rule 403).
10.

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Plaintiffs' MIL 3, to preclude Defendant from presenting evidence or eliciting

Defendant's MIL 1, to preclude Plaintiffs' expert Dr. Nettles from offering

opinions he did not disclose and which contradict the Court's claim construction order, is
GRANTED to the extent it merely seeks to preclude an expert from offering opinions at trial that

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have not been timely disclosed or that contradict an order of the Court. In all other respects,

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Defendant's motion is DENIED. In particular, Defendant has failed to persuade the Court that

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the many pages of Nettles' report it attaches to the motion -which appear to highlight each

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reference to the claim term "internet session" - consist of irrelevant opinions or opinions that

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contradict the Court's claim construction order. Additionally, Dr. Nettles expressed an opinion

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that his infringement opinions do not "in ... very many cases" change if (as occurred) the Court

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adopted Defendant's proposed construction, and Defendant's contention that this disclosure was
somehow inadequate comes too late.
11.

Defendant's MIL 2, to preclude expert testimony regarding infringement and

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damages for the so-called New Products, is GRANTED, as there is no evidence in the record

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relating to the New Products, and Plaintiffs' experts have not examined the New Products.

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Granting the motion, however, does not necessarily mean that Plaintiffs cannot present evidence

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of infringement or damages relating to accused products (other than the New Products) for the

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period after July 8, 2014 (for Spector CNE) and July 15, 2014 (for Spector 360). Plaintiffs may

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seek to prove damages at the Jury Trial for the period up to the start of the Jury Trial, although

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Defendant will be provided an opportunity post-trial to prove that any damages award must be
reduced as a result of the introduction of the New Products.

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12.

Defendant's MIL 3, to preclude prejudicial references to Defendant's design

around and alleged copying, stealing, or stalking, is GRANTED to the extent that no evidence
will be presented relating to design around, and is further GRANTED to the extent it seeks to
preclude any use of the Chesley email the Court has previously stricken. To the extent Defendant
seeks to preclude evidence and argument relating to whether Defendant "closely monitored"
Plaintiffs, the motion is GRANTED in that Plaintiffs must provide notice to Defendant and seek
leave of the Court before presenting such evidence or argument. At this point it appears to the
Court that the probative value of such evidence is substantially outweighed by the risk of unfair
prejudice to Defendant.

13.

The consolidated bench trial on inequitable conduct and laches will be held on

October 16, 2015 beginning at 8:30 a.m., with the pretrial conference on October 2, 2015 at
11:00 a.m., and the final proposed pretrial order due on September 25, 2015. The Court has
decided on this schedule based on its availability as well as its consideration of the parties'
positions. (See D.I. 551) Each side will be allocated a maximum of three and one-half (3.5)
hours for its trial presentation.
The parties should be prepared to address all other disputes presented in the pretrial order
that remain pending, and any motions that remain pending, at the pretrial conference next week.

HON. LEONARD P. STARK
U.S. DISTRICT COURT

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