Princeton Digital Image Corporation v. Office Depot Inc.

Filing 237

MEMORANDUM ORDER re Rulings on the various motions in limine. Signed by Judge Leonard P. Stark on 8/9/17. Associated Cases: 1:13-cv-00239-LPS et al. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
v.

C.A. No. 13-239-LPS

OFFICE DEPOT INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
v.

C.A. No. 13-287-LPS

J.C. PENNEY COMPANY, INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
v.

C.A. No. 13-288-LPS

QVC INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
v.

C.A. No. 13-289-LPS

SEARS HOLDINGS COMPANY,
Defendant.

PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,
C.A. No. 13-326-LPS

v.
LIMITED BRANDS, INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No. 13-330-LPS

v.
GAP INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

C.A. No.

v.

13~331-LPS

WILLIAMS-SONOMA INC.,
Defendant.
PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

v.

C.A. No. 13-404-LPS

COSTCO WHOLESALE CORP.,
Defendant.

PRINCETON DIGITAL IMAGE
CORPORATION,
Plaintiff,

v.

C.A. No. 13-408-LPS

NORDSTROM.COM LLC,
NORDSTROM.COM INC., and NORDSTROM
INC.
Defendants.
MEMORANDUM ORDER

At Wilmington this 9th day of August, 2017, having reviewed the proposed pretrial order .
(C.A. No. 13-239 1 D.I. 218) ("PTO") submitted by Plaintiff Princeton Digital Image Corporation
("PDIC") and Intervenor Adobe Systems Inc. ("Adobe"), including briefing on various motions
in limine ("MIL"),

IT IS HEREBY ORDERED that:
1.

Adobe's MIL #1, to preclude Thomas Meagher from testifying about his belief

that images appearing on the websites of Adobe's customers were dynamically generated "on the
fly," is DENIED. Meagher's beliefs are relevant to the question of whether PDIC breached the
covenant-not-to sue in good faith, as his testimony may be probative of whether PDIC brought
suit against non-Adobe systems only and, therefore, did not breach the contract in bad faith.
Further, PDIC does not appear to be trying to use Meagher to prove that Defendants' websites
actually work in a particular way. Instead, PDIC seeks to have Meagher testify about his

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All references to the docket index ("D.I.") are to C.A. No. 13-239, unless otherwise

noted.

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personal knowledge of why PDIC believed it had a viable infringement claim based on nonAdobe systems, matters which are relevant and do not warrant exclusion under the balance
required .by FRE 403.
-2.

Adobe's MIL #2, to preclude lay witness opinion testimony by Meagher about

infringement and invalidity, is DENIED IN PART. Meagher's assessment of the '056 patent and
PDIC's infringement theory is not offered as substantive proof that the patent is valid and
infringed by Defendants' websites; the testimony will be offered as evidence relating to whether
PDIC breached the covenant-not-to sue and did so in bad faith. Meagher's testimony will be
based on his personal, particularized knowledge of the events relevant to this contract dispute.
However, th~ motion is GRANTED to the extent that PDIC may J?.Ot elicit testimony from
Meagher that the '056 patent is a standard essential patent to the JPEG standard, as this portion
of the motion appears to be unopposed.
3.

Adobe's MIL #3, to preclude evidence and argument about Meagher's personal

circumstances, is GRANTED. The Court agrees with Adobe that details about Meagher's
personal life are not relevant to the issues in this case. Further, the Rule 403 balance strongly
favors exclusion of this evidence. Should PDIC believe that something occurs at trial to make
such information relevant and to materi~lly alter the Rule 403 balance, PDIC must give notice to
Adobe and request leave of the Court before attempting to present this information to the jury.
4.

PDIC's MIL #1, to preclude Adobe from calling certain witnesses on its "may

call" witness list (PTO Ex. 8), is DENIED. Adobe's initial and supplemental disclosures
indicated that Adobe might call Adobe's licensed customers as witnesses (PTO Ex. 15E-1 at 56), and Adobe seeks to elicit testimony from such witnesses about a narrow topic on which
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Defendants' position is known to PDIC. Under the circumstances, including the lack of surprise
or unfair prejudice to PDIC, the Pennypack factors do not favor exclusion. However, Adobe
shall, no later than August 16, identify the· corporate representatives it may call, including name,
·address, title/role, and subject matter of the testimony.
5~

PDIC's MIL #2, to preclude Adobe from introducing at trial certain exhibits, is

DENIED. The Court agrees with Adobe that the declarations maybe offered to show the effect
on the recipient. Regardless of whether the statements contained within the declarations are true,
PDIC decided to dismiss the patent infringement claims after receiving the declarations, making
them relevant for a non-hearsay purpose. With respect to the other communications and court
filings, any filing or statement made by PDIC is admissible as a statement of a party opponent
(although redactions will likely be necessary if such materials are going to be presented before
the jury). Disputed evidence that is not of a type addressed in this paragraph will be addressed on
a document-by-document basis during trial, to the extent there remain objections to their use at
trial.
6.

PDIC's MIL #3, to preclude Adobe from offering exhibits that relate to

settlements between PDIC and Defendants, is DENIED. Adobe does not seek to use the
evidence "to prove or disprove the validity or amount" of PDIC's patent infringement claims
against Defendants, i.e. the claims that were settled. Fed. R. Evid. 408. Rather, Adobe will use
the evidence to support its claim that PDIC breached the covenant-not-to sue by bringing and
maintaining the suits against Defendants and did so in bad. faith - purposes for which the
evidence is admissible. See Broadcort Cap. Corp. v. Summa Med. Corp., 972 F.2d 1183, 1194
(10th Cir. 1992); Resolution Tr. Corp. v. Blasdell, 154 F.R.D. 675, 687 (D. Ariz. 1993).

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. The parties shall be prepared to address any other matters contained in the PTO at the
pretrial conference tomorrow.

HON. LEO ARD P. STARK
UNITED STATES DISTRICT JUDGE

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