Greatbatch Ltd. v. AVX Corporation et al

Filing 1218

MEMORANDUM ORDER re rulings by the Court on motions in limine and other disputed pretrial order issues. Signed by Judge Leonard P. Stark on 12/20/18. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

GREATBATCH LTD.,
Plaintiff,
C.A. No. 13-723-LPS

V.

AVX CORPORATION and
AVXFILTERS CORPORATION,
Defendants.

MEMORANDUM ORDER

At Wilmington this 20th day of December, 2018:
Having reviewed the proposed pretrial order submitted by Plaintiff Greatbatch Ltd.
("Greatbatch" or "Plaintiff') and Defendants AVX Corporation and AVX Filters Corporation
("AVX" or "Defendants") (D.I. 1211) ("PTO"), IT IS HEREBY ORDERED that:
1.

Greatbatch's motion in limine ("MIL") No. 1, to preclude AVX from presenting

evidence relating to invalidity during the forthcoming (January 2019) damages trial, will be
argued at the pretrial conference ("PTC") tomorrow.
2.

Greatbatch's MIL No. 2, to preclude AVX from referencing or admitting evidence

relating to the July 2015 settlement between Greatbatch and Boston Scientific ("BSC"), is
DENIED. Admission of the settlement agreement is not precluded by Federal Rule of Evidence
("FRE") 408; it is offered for the proper purpose of supporting an argument that at least a portion
of the damages Greatbatch seeks for AVX's patent infringement would be an improper double
recovery (as Greatbatch has already been compensated, at least in part, by BSC). The settlement

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agreement is probative of the damages Greatbatch has suffered. The risk of unfair prejudice to
Greatbatch, and any other concerns of FRE 403 , do not substantially outweigh that probative
value. 1
3.

Greatbatch's MIL No. 3, to preclude AVX's use of deposition testimony of Dr.

Richard Panlener, is DENIED WITHOUT PREJUDICE to Greatbatch' s opportunity to object to
specific designations - and/or propose its own counter-designations - as part of the process by
which the parties will identify the particular portions of depositions they wish to present at trial.
Given the narrow issues that are the subject of the forthcoming trial, which have nothing to do
with willfulness or infringement, the Court agrees "[i]t would now be unfair to prevent AVX
from using Dr. Panlener's testimony on issues for which Greatbatch was repeatedly given the
opportunity to examine Dr. Panlener at length." (GB MIL #3 Opposition at 1) The Court further
agrees with Greatbatch that "if jurors hear Dr. Panlener testify that AVX ' had the ability to
develop non-infringing alternatives"' it may also be proper for them to "hear the lengths A VX
took to hide its unsuccessful work-around rather than design a non-infringing alternative - and
that Dr. Panlener was terminated for those acts - in order to assess his and A VX's credibility."
(GB MIL #3 Reply)
4.

AVX's MIL #1, to preclude Greatbatch from offering evidence of pin washer

changes that were made without obtaining approval from BSC or the Food and Drug
Administration ("FDA"), is DENIED. This evidence is probative of whether AVX actually
could have developed - and obtained all necessary approvals for - the proposed non-infringing

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The Court does not view counsel 's statement regarding the settlement (see D.I. 693 at
740) as a judicial admission and, therefore, rejects AVX's request to treat it as such (see PTO at
18).
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alternatives it will present to the jury as part of its response to Greatbatch's damages case. It is
likewise probative of the timing that would have been involved in implementing a proposed noninfringing alternative. The risk of unfair prejudice to AVX (or waste of time or confusion or any
other concern of Rule 403) does not come close to substantially outweighing the probative value
of this evidence. The Court will consider, if asked, an instruction to the jury that explains that
damages are not to punish AVX but to compensate Greatbatch.
5.

AVX's MIL #2, to preclude evidence comparing Greatbatch's research and

development and "innovation" to that of AVX, is DENIED. A reasonable factfinder may find
such evidence to be probative of the value of the patented inventions that are the subject of the
trial and to be pertinent to the positions the parties would have been in during the hypothetical
negotiations. The Court agrees with Greatbatch that "A VX put its technical expertise and
capability at issue when it disclosed expert opinions that it would have developed non-infringing
alternatives that, in reality, have never existed." (A VX MIL #2 Opposition at 2) Evidence of the
expertise and capability of AVX' s competitor, Greatbatch, may help the jury assess AVX's
ability (and assess BSC's likely assessment of AVX' s ability) to actually develop and deliver the
non-infringing alternatives AVX is asking the jury to believe it could have produced. The
probative value to damages outweighs any risk of unfair prejudice or confusion.
6.

AVX's MIL #3, to preclude evidence of Greatbatch's development and

qualification procedures, is DENIED. This evidence is probative of when (if at all) AVX truly
could have developed a non-infringing alternative and its acceptability, particularly to BSC - the
parties' common "customer." The comparability of the two companies' procedures, and what
BSC does and/or would require, is a proper subject on which the parties may present their

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competing evidence and arguments. If A VX "has no analogous process" to Greatbatch, and
Greatbatch's process consists of "makework that Greatbatch uses to justify its prices" (AVX MIL
#3 at 2), A VX should be able to prove these contentions, and a reasonable jury may then reject
Greatbatch' s comparability contentions. AVX' s concerns go to the weight to be accorded to this
evidence, not whether it should be admitted. The probative value of the evidence substantially
outweighs any risk of unfair prejudice, confusion, or waste of time.
Turning to other disputes the parties raise in the PTO:
1.

Greatbatch' s proposal that the parties may read uncontested facts filed with prior

pretrial orders relating to prior trials in this matter (PTO III.A) is DENIED. Unless a fact has
been agreed to be uncontested for purposes of the January 2019 trial, it is not uncontested.
2.

Greatbatch' s proposal that it be permitted to present a rebuttal case (PTO V) is

GRANTED. Greatbatch will also be permitted to present a rebuttal closing argument, provided it
has time left to do so.
3.

The parties' dispute as to whether they may call any witness identified by the

other party (PTO V) will be discussed at the PTC tomorrow.
4.

The parties' requests that the Court preclude particular witnesses from providing

testimony on the same subject matter (see PTO at 8 n.5 , 9 n.6) are DENIED. Although the Court
is allocating more time to the parties than it believes they need, the Court will rely on the sound
judgment of counsel and the imposition of time limits to reduce or eliminate the chance that a
party will present truly redundant testimony from multiple witnesses.
5.

The parties ' dispute regarding use of prior deposition testimony (PTO V.C) will

be discussed at the PTC tomorrow.

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6.

The parties' dispute regarding admission of exhibits (PTO VI.A) will be discussed

at the PTC tomorrow.
7.

The Court will adhere to its prior ruling (D.I. 1123) allocating each side twelve

(12) hours for its trial presentation, although the Court believes this amount of time is more than
either side needs to fully and fairly present its case. Should any party wish to request that the
Court consider reducing the number of hours allocated, it may do so. The Court will reserve one
(1) hour out of each side' s twelve (12) hours for closing argument. Should a party wish to use
any portion of that hour for some part of trial prior to closing argument it will need to ask the
Court for leave to do so. In reserving one (1) hour for closing, the Court is NOT requiring that a
party use a full hour for its closing.
Subject to the allocation explained above, trial will be held at some or all of the following
times:
Jury selection

Thursday, January 3, 2019: 9:30 a.m. to 1:00 p.m.

Trial

Monday, January 7, 2019 : 8:30 a.m. to 4:00 p.m.
Tuesday, January 8, 2019: 8:30 a.m. to 4:00 p.m.
Wednesday, January 9, 2019: 10:00 a.m. to 4:30 p.m.
Thursday, January 10, 2019: 8:30 a.m. to 4:00 p.m.
Friday, January 11 , 2019: 8:30 a.m. to 4:30 p.m.

8.

The Court is disinclined to close the courtroom for any portion of the trial,

including when highly confidential proprietary financial information is shown. Any party
wishing to close the courtroom for any portion of the trial will need to demonstrate good cause,
consistent with the high burden imposed by law, if it wishes the Court to consider such a request.
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9.

Greatbatch' s request that Defendants not be permitted to submit evidence of

alleged noninfringing alternatives to claim 12 of the ' 627 patent and to the claims of the ' 095
patent (PTO Ex. 13) is DENIED. As Greatbatch notes, the operative scheduling order (D.I.
1123) does not authorize dispositive motions. Greatbatch may renew its motion at an appropriate
time during trial, at which time A VX will be permitted to respond.
10.

The parties shall be prepared to discuss at the PTC what the jury may be told

regarding earlier proceedings and what materials should be included in juror notebooks. (PTO at
19)
The parties are advised that, subject to any further order of the Court, they should be
prepared to address at the PTC any other dispute in the PTO as well as any motion that remains
pending.

HON. LEONARD P. STARK
UNITED STATES DISTRICT JUDGE

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