Andover Healthcare Inc. v. 3M Company

Filing 324

MEMORANDUM ORDER re trial schedule and rulings on motions in limine. Signed by Judge Leonard P. Stark on 10/27/16. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

ANDOVER HEALTHCARE, INC.,
Plaintiff,
Civil Action No. 13-843-LPS

v.
3M COMPANY,
Defendant.

MEMORANDUM ORDER
At Wilmington this 27th day of October, 2016:
Having reviewed the proposed pretrial order (D.I. 315), IT IS HEREBY ORDERED
that:
1.

To allow the Court to properly allocate between the parties trial time used on

playing or reading deposition testimony, the parties shall provide the Court's Deputy with a
percentage, proportional allocation (e.g., "50% to Plaintiff, 50% to Defendant"). The Court will
apply these percentages to the total amount of time it takes for the parties to introduce and
present the deposition testimony of the particular witness. The parties should not provide the
Court with time allocations (e.g., "charge Plaintiff 5 minutes and charge Defendant 5 minutes"),
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as invariably it takes longer for the parties to present the witness' testimony than the parties
anticipate.
2.

The parties' request for a total of 41 hours for their trial presentation is DENIED.

Considering that this is a one patent case, with two asserted claims, four accused products, a

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single plaintiff and single defendant, at most five invalidity defenses .(written description,
enablement, indefiniteness, anticipation, obviousness), damages, and willfulness, and given the
number of witnesses the parties intend to call, the Court has determined that the parties will be
allocated a maximum of 14 to 16 hours per side for their trial presentations, with the final
-amount to be determined after further discussion at the pretrial conference ..
3.

The Court has not completed its consideration of 3M' s motion to bifurcate the

damages/willfulness issues from the liability issues, but is contemplating granting it. The parties
should be prepared to argue the motion at the pretrial conference. As part of the Court's
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consideration, the parties should be prepared to provide input on how many of the total hours the
Court allocates for their overall trial presentations should be allocated to what woul_d be (if
needed) the second phase, damages/willfulness portion of the trial. This information will be
necessary should the Court decide to grant the motion.
4.

· As previously ordered (see D.l. 311), jury selection will be held on November 10

beginning at 9:30 a.m, with the parties to be present 30 minutes prior. Trial will be held on some :
or all of the following days and times, as needed, and subject to the time allocations the Court
will finalize after further discussion at the pretrial conference:
a.

Monday, November 14 through Thursday, November 17: 8.30 a.m. to 5:00
p.m.

b.
c.

Tuesday, November 22: 9:00 a.m. to 4:00 p.m.

d.
5.

Monday, November 21: 8:30 a.m. to 4:00 p.m.

Wednesday, November 23: 8:30 a.m. to 3:00 p.m.

There will be no trial on Friday, November 18.

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6.

Andover's motion in limine ("MIL") # 1, to exclude any evidence regarding the

two previous lawsuits between the parties, is GRANTED, provided, however, that 3M will be
permitted to· introduce this evidence should Andover open the door to it: The Court agrees with
the parties that the previous trademark and patent infringement suits brought by 3M against
Andover, both of which were settled relatively quickly, are not particularly probative of any issue
that will be submitted to the jury.
7.

Andover's MIL #2, to exclude testimony of 3M' s fact witnesses regarding

infringement, is GRANTED, however 3M's witnesses will be permitted (as both parties agree it
should be permitted) to testify about its technical design decisions. That is, 3M will be permitted
to explain how it intended to develop, and believes it succeeded in developing, a product without
crystallinity, and did so for performance reasons. 3M's witnesses will not be permitted to testify

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that they developed their product to have no crystallinity also, at least in part, to avoid
infringement, as this would impermissibly permit 3M to use privilege (which 3M repeatedly
asserted in its Rule 30(b)(6) deposition) as both a sword and shield.
8.

Andover's MIL #3, to exclude any evidence regarding the foreign litigation or

prosecution of the counterpart patent to the patent-in-suit, is GRANTED. Whatever minimal
probative value there may be in using the German expert's opinion to cross-examine Plaintiffs
infringement expert would be far outweighed by the risk of jury confusion, unfair prejudice to
Plaintiff, and delay. Reducing the prejudice to 3M from this ruling is the fact that 3M still has "a ,
series of examples [purportedly] showing that [Plaintiffs expert] disregarded evidence and facts
that did not suit his story of infringement." (D.I. 315-7 at p. 27of36)
9.

3M's MIL #1, to exclude reference to the PTAB's decision not to institute an IPR
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of the patent-in-suit in response to 3M's petition (filed during the pendency of this case) is

GRANTED. The PTAB's decision is not a final decision on validity, is based on different legal
standards, and has no estoppel effect. The Rule 403 balance strongly favors exclusion, as the
minimal (if any) probative value of the PTAB's decision is far outweighed by the risk of jury
confusion and unfair prejudice to 3M. The Court will reevaluate its granting of 3M' s motion
should 3M argue or attempt to prove that the PTO has never considered the Carl prior art, which
3M asserts as· invalidating prior art and which was also prior art on which its (rejected) IPR
petition was based.
10.

3M's MIL #2, to exclude testimony regarding the parties' previous disputes and

alleged actions by 3M, is GRANTED, except that the Court largely agrees with Andover's "Very
Significant Exception." (D.I. 316-4 at p. 19of23) That is, "if 3M brings in evidence, discusses,
argues or even intimates about Andover's delay in filing the lawsuit," the Court will either
instruct the jury that such "delay" is entirely irrelevant to all issues that the jury must decide, or
alternatively will permit Andover "to bring into evidence the three above events [i.e., 3M's 2010
lawsuits against Andover, 3M's 1997 lawsuit against LePage's, and 3M's interactions with
Andover's customers] to explain why it waited." (Id.)
11.

3M's MIL #3, to exclude Mr. Murphy from testifying about technical facts outside

his expert reports, is DENIED. 3M is essentially and belatedly objecting to Mr. Murphy
testifying under Rule 26(a)(2)(C) as both a fact and expert witness. 3M could have moved to
exclude Mr. Murphy's expert testimony on the bases it now asserts but did not do so (instead
trying, and failing, to exclude Mr. Murphy on the basis of his financial interest, see D.I. 218).
3M has not shown that Mr. Murphy's summary is insufficient. See Fed. R. Civ. P. 26(a)(2)(C)
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(stating that expert "not required to provide a written report" under Rule 26(a)(2)(B) need only
disclose "the subject matter on which the witness is expected to present evidence" and provide "a
summary of the [expert's] facts and opinions"). Nor has 3M established that Mr. Murphy "is
being offered principally for expert testimony" so as to fall under Rule 26(a)(2)(B)'s purview, or
that he "failed to disclose [in his summary] all technical facts that [Andover] intend[ s] to elicit
from Mr. Murphy at trial." (D.I. 316-5 at p. 69of70) As an expert, Mr. Murphy will be
permitted to testify to anything properly disclosed in his reports. He will also be permitted to
testify .as a fact witness. The Court will rule on objections to specific questions at trial.

t~e.~

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HONORABLELEONARD~STARK

UNITED STATES DISTRICT COURT

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