Industrial Engineering & Development, Inc. et al v. Static Control Components, Inc.
Filing
258
ORDER granting in part and denying in part 205 Plaintiffs' Motion in Limine. Signed by Judge Susan C Bucklew on 10/6/2014. (GMS)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
INDUSTRIAL ENGINEERING &
DEVELOPMENT, INC., et al.,
Plaintiffs,
v.
Case No. 8:12-cv-691-T-24-MAP
STATIC CONTROL COMPONENTS,
INC.,
Defendant.
_________________________________/
ORDER
This cause comes before the Court on a Motion in Limine filed by Plaintiffs Industrial
Engineering & Development Inc., Innovative Cartridge Technologies, Inc., Cartridge Corporation
of America, Inc., American Imaging Cartridge, LLC, and Universal Imaging Holdings, LLC. (Dkt.
205) Defendant Static Control Components, Inc. opposes. (Dkt. 233)
I.
BACKGROUND
On March 30, 2012, Plaintiffs filed a one-count complaint against Static, alleging Static
breached a cross-license agreement by failing to pay royalties for products that infringed on
Plaintiffs’ patents. Static filed counterclaims and affirmative defenses alleging, inter alia, that
several claims of patents owned by Plaintiffs—U.S. Patent No. 7,187,874 (‘874 patent); U.S.
Patent No. 7,551,859 (‘859 patent); and U.S. Patent No. 7,356,279 (‘279 patent)—are invalid.
(Dkt. 25) According to Static, various products offered by Static and Lexmark International
qualify as invalidating prior art because they preceded Plaintiffs’ patents and anticipated Plaintiffs’
patent claims.
1
In May 2013, Plaintiffs filed an Amended Complaint to add Count II, seeking a declaratory
judgment that patents owned by Static—U.S. Patent No. 7,088,928 (‘928 patent) and U.S. Patent
No. 7,254,346 (‘346 patent)—are invalid. (Dkt. 86)
In May 2014, Plaintiffs filed a motion for summary judgment as to Count II, arguing that
the parties were contractually barred from challenging the validity of each other’s patents and
therefore Count II, along with several of Static’s counterclaims and defenses, should be dismissed.
Plaintiffs alternatively argued that, should Count II remain in this case, summary judgment should
be granted in their favor because Static’s patents were invalid as anticipated. (Dkt. 153 at 26-33)
According to Plaintiffs, Steven Miller had previously distributed a “demonstration” or prototype
universal chip at an industry trade show in April 2004 (“Demo Chip”), which was an embodiment
of inventions that were previously conceived by Miller and found in his notes (“Miller’s inventor
notes”). Plaintiffs asserted that the Demo Chip and Miller’s inventor notes preceded Static’s
patents and anticipated Static’s patents.
In June 2014, Plaintiffs filed numerous evidentiary motions, including this motion in
limine, which seeks to: (1) exclude testimony from Benjamin Newman, a Lexmark employee who
was designated as Lexmark’s corporate representative for a deposition pursuant to Rule 30(b)(6)
of the Federal Rules of Civil Procedure; (2) exclude testimony from Michael Shelby, a Static
employee who was designated as Static’s corporate representative for a Rule 30(b)(6) deposition;
(3) preclude Static from challenging the authenticity of Miller’s inventor notes; (4) exclude any
document not produced in discovery; (5) exclude any testimony from or reference to David
Abraham; (6) preclude Static from offering duplicative expert testimony; and (7) exclude
testimony regarding the alleged theft of Static’s code. A hearing on Plaintiffs’ motion for summary
judgment and motion in limine was held on August 12, 2014.
2
In August 2014, the Court ruled on Plaintiffs’ motion for summary judgment. (Dkt. 243)
The Court dismissed Count II, finding that Plaintiffs were contractually barred from filing it. (Id.)
The Court subsequently directed the parties to confer and identify any pending evidentiary motions
that were mooted by the Court’s summary judgment order. (Dkt. 244) In response, the parties
disagreed as to whether any portions of the instant motion—particularly, Plaintiffs’ arguments
regarding Miller’s inventor notes—are moot. Plaintiffs contend their arguments regarding Miller’s
inventor notes are not moot because they may introduce the notes at trial:
Plaintiffs initially believed that [these arguments] were indeed mooted by this
Court’s [summary judgment] [o]rder preventing Plaintiffs from challenging the
validity of [Static’s] patents. However, [Static] disagreed because Plaintiffs may
wish to introduce the notes and/or [Demo Chip] at trial, such as for development
background and/or in response to [Static’s] invalidity contentions [regarding
Plaintiffs’ patents]. Thus, because Plaintiffs are not willing to agree not to use the
notes and/or [Demo Chip] at trial, these motions are not moot.
(Id.) Trial is set to begin on November 10, 2014.
II.
TESTIMONY FROM BENJAMIN NEWMAN
During a deposition pursuant to Rule 30(b)(6) of the Federal Rules of Civil Procedure,
Benjamin Newman—a Lexmark employee designated as Lexmark’s corporate representative—
testified as to facts relating to Static’s allegation that Plaintiffs’ patents are invalid as anticipated
by products sold by Lexmark International. Specifically, Newman testified about the functionality
of various Lexmark products at the time they were offered for sale. However, Newman testified
that his knowledge of such facts was based on information that Lexmark employees had pulled
from various Lexmark databases. Plaintiffs contend (and Static does not dispute) that the database
records upon which Newman’s Rule 30(b)(6) deposition testimony relied were not produced
during discovery or Newman’s deposition.
3
In the instant motion, Plaintiffs seek to preclude Newman from testifying at trial regarding
the functionality and offer dates of Lexmark’s products, arguing that Newman’s testimony: (a)
constitutes inadmissible hearsay; and (b) violates would the best evidence rule.
A. Hearsay
Plaintiffs contend Newman’s Rule 30(b)(6) deposition testimony regarding the
functionality and offer dates of Lexmark’s products was not based on his personal knowledge and
was “hearsay upon hearsay.” In response, Static asserts that Newman’s Rule 30(b)(6) testimony
was proper, because he need not have personal knowledge to testify about matters that are
“particularly suitable” for Rule 30(b)(6) testimony. Citing Sara Lee Corp. v. KraftFoods, Inc.,
276 F.R.D. 500 (N.D. Ill. 2011), Static appears to argue that Newman’s testimony regarding dates
and functionality are matters within Lexmark’s “corporate knowledge,” as that concept is
embodied in Rule 30(b)(6), and therefore the personal knowledge requirement set forth in Rule
602 of the Federal Rules of Evidence would be satisfied or can be disregarded at trial.
Plaintiffs’ argument for excluding Newman’s testimony at trial is based on his Rule
30(b)(6) deposition testimony. However, as pointed out by Static’s counsel at the August 12, 2014
hearing, Plaintiffs’ motion assumes that Newman’s trial testimony will match his Rule 30(b)(6)
deposition testimony. The Court will not make this assumption. Without the context of trial, the
Court cannot rule on issues regarding the foundation for admitting Newman’s testimony at trial.
Accordingly, to the extent Plaintiffs seek to exclude Newman’s trial testimony regarding the
functionality and dates of Lexmark’s products as inadmissible hearsay, Plaintiffs’ motion in limine
is DENIED without prejudice to Plaintiffs raising an objection at trial.
Nevertheless, the Court will address the parties’ arguments as to whether Newman’s
testimony would be inadmissible at trial, where the Lexmark records upon which Newman’s Rule
30(b)(6) deposition testimony relied are not introduced into evidence. The purpose of Rule
4
30(b)(6) is to streamline the discovery process by allowing for a specialized form of deposition for
corporations. See Resolution Trust Corp. v. Southern Union Co., Inc., 985 F.2d 196, 197 (5th
Cir.1993).
Rule 30(b)(6) allows a party to issue a notice for a corporation’s deposition,
“describ[ing] with reasonable particularity the matters for examination.” Fed. R. Civ. P. 30(b)(6).
The corporation must designate one or more persons to “testify on its behalf” at the deposition “as
to the matters known or reasonably available to the organization.” Id. In other words, the Rule
30(b)(6) deponent testifies “vicariously” for the corporation regarding matters within the
corporation’s knowledge. Resolution Trust Corp. v. Southern Union Co., Inc., 985 F.2d 196, 197
(5th Cir. 1993).
Rule 30(b)(6) does not require the Rule 30(b)(6) deponent to have personal knowledge of
the matters to which he testifies; this is because a Rule 30(b)(6) deponent presents the knowledge,
opinions, or positions of the corporation, not of the deponent. However, if the Rule 30(b)(6)
deponent lacks personal knowledge, the corporation must educate the deponent so that he is
prepared to testify knowledgeably about matters within organization’s corporate knowledge.
Preparing the deponent includes providing him with documents, present or past employees, or
other sources of information to review.
Given the Rule 30(b)(6) framework, Newman’s deposition testimony regarding matters
within Lexmark’s corporate knowledge was proper, even though it was based on information from
Lexmark records or Lexmark employees, rather than his personal knowledge. But this does not
mean Newman may testify at trial as to matters that are not within Newman’s personal knowledge
and are hearsay. While Rule 30(b)(6) permits Newman’s deposition testimony to be based on
matters outside his personal knowledge, Rule 602 limits his trial testimony to matters that are
within his personal knowledge. Fed. R. Evid. 602; see also Sovereign Military Hospitaller Order
5
of Saint John of Jerusalem of Rhodes & of Malta v. Fla. Priory of Knights Hospitallers of
Sovereign Order of Saint John of Jerusalem, Knights of Malta, Ecumenical Order, 702 F.3d 1279,
1295 (11th Cir. 2012) (holding the district court erred when it permitted a lay witness—the head
of an organization—to testify at a bench trial about the organization’s history where the witness
had no personal knowledge of the historical facts to which he testified).
The case, Union Pump Co. v. Centrifugal Tech. Inc., 404 Fed. Appx. 899 (5th Cir. 2010),
is illustrative. Union Pump involved Union Pump’s cause of action for spoliation of evidence
against the defendant. Id. at 904. At trial, Union Pump’s corporate representative, Mike Bixler,
was allowed to testify about matters that were hearsay and not within his personal knowledge:
Bixler . . . testif[ied] to facts that Union Pump learned during a series of internal
investigations. Bixler did not conduct the investigations or have any role in them, no
written reports were issued as a result of the investigations, and Bixler learned of the facts
he testified to solely through conversations with others.
Id. at 907. The defendants appealed, arguing that a new trial was warranted because the district
court improperly admitted “Bixler's testimony regarding facts that he learned through other people
at the company.” Id. Union Pump opposed, arguing that Bixler’s testimony was properly admitted
because “Bixler was permitted to testify to matters that, although they were not within his own
personal knowledge, were within the knowledge of the corporation because Bixler was designated
as Union Pump's corporate representative.”
Id.
The Fifth Circuit rejected Union Pump’s
argument, explaining that Rule 602 “limits the scope of a witness's testimony to matters that are
within his or her personal knowledge.” Id. Despite Rule 30(b)(6) and the rules governing the use
of such deposition testimony at trial, the Fifth Circuit found that a corporate representative is not
permitted to provide hearsay testimony at trial:
Federal Rule of Civil Procedure 30(b)(6) allows corporate representatives to testify to
matters within the corporation’s knowledge during deposition, and Rule 32(a)(3) permits
an adverse party to use that deposition testimony during trial. See Brazos River Auth. v. GE
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Ionics, Inc., 469 F.3d 416, 434 (5th Cir. 2006). However, a corporate representative may
not testify to matters outside his own personal knowledge “to the extent that information
[is] hearsay not falling within one of the authorized exceptions.” Id. at 435.
Id. at 907-08.
Thus, Rule 30(b)(6) does not eliminate Rule 602’s personal knowledge requirement. 1 At
trial, Static must establish the dates and functionality of Lexmark’s products using admissible
evidence. Such evidence may include Lexmark’s records reviewed by Newman (assuming the
records are properly authenticated and a proper foundation is laid); however, it does not include
testimony from a witness who lacks personal knowledge.
B. Best Evidence Rule
Plaintiffs argue that, unless Static introduces the Lexmark records upon which Newman’s
testimony relies, Rule 1002 of the Federal Rules of Evidence bars Newman’s testimony regarding
the functionality and offer dates of Lexmark products. Plaintiffs contend Static is offering
Newman to testify as to the content of Lexmark’s records and is therefore required to introduce
the records themselves. In response, Static argues that Rule 1002 does not require introducing the
records, because Newman’s testimony is being offered to prove the products’ offer dates or
functionality, not to prove the particular contents of any database record.
Under the best evidence rule, “the production of the original document is required to prove
the contents of a writing.” Fed. R. Evi. 1002. Determining whether testimony is being offered to
prove the contents of the writing may depend on whether the witness’s testimony is based on his
personal knowledge of the event. Simmons v. Allsteel, Inc., 1999 WL 1045214, at *2 n.6 (N.D.
Ill. Nov.12, 1999) (“[T]he relevant question is whether Cosgrove's testimony proves an event from
1
Because of Rule 602’s personal knowledge requirement, the Court declines to adopt the approach
set forth in Sara Lee Corp. v. KraftFoods, Inc., 276 F.R.D. 500 (N.D. Ill. 2011), which held that a
non-party designee’s Rule 30(b)(6) deposition testimony may be admissible.
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his firsthand knowledge of the event. If so, Rule 1002 does not apply. If Cosgrove's testimony goes
to the contents of the leases or seeks to prove an event from his familiarity with the leases, Rule
1002 applies.”). Specifically, “[i]f a witness’s testimony is based on his first-hand knowledge of
an event as opposed to his knowledge of the document, however, then Rule 1002 does not apply.”
Waterloo Furniture Components, Ltd. v. Haworth, Inc., 467 F.3d 641, 648-49 (7th Cir. 2006)
(citing Simmons v, 1999 WL 1045214, at *2). As one court explained:
The question is whether Hastings’ [the plaintiff’s former employee’s] testimony
would tend to prove an event from Hastings’ firsthand knowledge of that event. If
so, Hastings’ testimony is not covered by Rule 1002. However, if Hastings’
testimony goes to the contents of financial documents, or seeks to prove an event
from Hastings’ familiarity with documents recording the event, Rule 1002 bars his
testimony.
Middleby Corp. v. Hussmann Corp., 1993 WL 151290, at **14-15 (N.D. Ill. May 7, 1993) (holding
the witness’s testimony sought to prove an event from the written record because the witness’s
testimony was based on his review of unproduced records, rather than his personal knowledge,
and was therefore barred by Rule 1002); see also Waterloo, 467 F.3d at 648-49 (the district court
did not abuse its discretion in denying the plaintiff’s motion to strike affidavit testimony regarding
a settlement agreement because the affiant’s statements were based on his personal knowledge of
the settlement negotiations, not on his knowledge of the settlement agreement).
Unless Newman has personal knowledge obtained independently of any unproduced
writing, Rule 1002 would bar Static from offering Newman’s testimony as to the functionality and
sales dates of Lexmark products where the relied-upon written records are not introduced.
However, given that Static could seek to introduce the Lexmark records at trial, Plaintiffs’ pretrial motion to exclude Newman’s testimony on the basis of the best evidence rule is premature.
Accordingly, to the extent Plaintiffs seek to exclude Newman’s trial testimony regarding offer
8
dates and functionality of Lexmark’s products as inadmissible under Rule 1002, Plaintiffs’ motion
in limine is DENIED without prejudice to Plaintiffs raising any objections at trial.2
III.
TESTIMONY FROM MICHAEL SHELBY
Michael Shelby is a Senior Hardware Engineer employed by Static since 2005. Static
designated Shelby as its corporate representative for Static’s Rule 30(b)(6) deposition, which was
taken on March 13, 2014. (Dkt. 189) Shelby submitted a declaration, dated May 12, 2014,
asserting various facts regarding the offer dates and functionality of Static’s products in 2002 to
2005. (Dkt. 155 at ¶¶ 8-17) In their motion in limine, Plaintiffs seek to preclude Shelby from
testifying about these facts.
A. Hearsay and Best Evidence Rule
Plaintiffs’ arguments for excluding Shelby’s testimony mirror their arguments for
excluding Newman’s testimony. Specifically, Plaintiffs contend Shelby’s testimony constitutes
inadmissible hearsay and violates the best evidence rule, asserting that Shelby’s testimony is based
on his review of Static’s records, not his personal knowledge of Static’s products.
In response, Static contends Plaintiffs’ arguments for excluding Shelby’s trial testimony
should fail for the same reason that Plaintiffs’ arguments for excluding Newman’s trial testimony
should fail. Specifically, Static asserts that Shelby properly testified to matters of “corporate
knowledge” during his Rule 30(b)(6) deposition, and that the best evidence rule does not apply
because Shelby’s testimony is not offered to prove the contents of any particular record.
Given that the parties’ arguments regarding Shelby are the same as their arguments
regarding Newman, the Court adopts its reasoning set forth above in its rulings regarding Newman.
2
Further, Plaintiffs contend Newman could neither sufficiently identify the records he reviewed
nor distinguish between a product’s announce date and the date that a product was offered for sale.
However, these are issues that go to credibility, not admissibility.
9
Accordingly, to the extent Plaintiffs seek to exclude Shelby’s trial testimony regarding the offer
dates and functionality of Static’s products as inadmissible because it is hearsay, the Court cannot
rule without the context of a trial and Plaintiffs’ motion in limine is DENIED without prejudice to
Plaintiffs raising any objections at trial. However, Shelby’s testimony in his capacity as a fact
witness must be based on personal knowledge, because Rule 30(b)(6) does not eliminate Rule
602’s personal knowledge requirement.
Further, to the extent Plaintiffs seek to exclude Shelby’s trial testimony regarding the offer
dates and functionality of Static’s products as inadmissible under the best evidence rule, Plaintiffs’
motion in limine is DENIED without prejudice to Plaintiffs raising any objections at trial.
However, it is the Court’s position that, unless Shelby has personal knowledge obtained
independently of any unproduced writing, Rule 1002 would bar Static from offering Shelby’s
testimony as to the functionality and offer dates of Static’s products where the relied-upon records
are not introduced.
B. Documents Relied Upon by Shelby
Plaintiffs also argue that, even if the documents upon which Shelby’s Rule 30(b)(6)
deposition relied were available to be introduced at trial, they should be excluded because Static
failed to produce those documents during discovery or Shelby’s deposition. In response, Static
asserts that it did not preclude Plaintiffs from seeing any of the relied-upon documents. According
to Static, Plaintiffs could have requested the relied-upon documents during discovery, but
Plaintiffs chose to not request those documents as part of their strategy “to play a game of
admissibility ‘gotcha.’” (Dkt. 233 at 7)
However, the Court will not grant a blanket motion to limine out all documents that were
relied upon by Shelby during his deposition but that were not produced during discovery.
Accordingly, Plaintiffs’ motion in limine as to this issue is DENIED without prejudice to Plaintiffs
10
raising any objections at trial, should Static seek to introduce documents that were relied upon by
Shelby and that should have been produced during discovery but were not.
Further, Plaintiffs assert that Shelby is not Static’s records custodian. (Dkt. 205 at 9)
Plaintiffs appear to argue that Shelby cannot lay the foundation for admissibility of Static’s records
under Rule 803(6) of the Federal Rules of Evidence because he is not a records custodian.
However, testimony from a records custodian is not the sole method for establishing the foundation
for admissibility under Rule 803(6). See Fed. R. Civ. P. 803(6) (“testimony of the custodian or
another qualified witness”). Accordingly, to the extent Plaintiffs seek to exclude the relied-upon
records as inadmissible under Rule 803(6), Plaintiffs’ motion is DENIED without prejudice to
Plaintiffs raising any objections at trial.
IV.
AUTHENTICITY OF MILLER’S INVENTION NOTES
In Count II of their Amended Complaint, Plaintiffs alleged that Static’s patents are invalid.
Plaintiffs’ motion in limine asserts that “[s]hould invalidity continue to be an issue in this case,
then Plaintiffs will rely on [Miller’s inventor] notes in [their] invalidity claims against . . . Static’s
patents.” (Dkt. 205 at 10) In this context, Plaintiffs seek to exclude Static challenging the
authenticity of Miller’s inventor notes.
Plaintiffs argue that Static has no evidence contesting the authenticity of Miller’s inventor
notes and therefore should be precluded from “cast[ing] unfound aspersions as to the authenticity”
of the notes. (Id.) Plaintiffs contend they have produced evidence of notes—testimony from
witnesses who saw the notes, and a facsimile showing Miller’s possession of the notes in
September 2002, prior to Static’s patents—whereas Static’s only basis for challenging the notes is
Static’s mere speculation and an expert report opining that the facsimile dates could be changed.
11
In response, Static does not dispute that Miller created the inventor notes; rather, Static
disputes the date of the notes’ creation, a fact that is critical to Plaintiffs’ allegation that Static’s
patents are invalid as anticipated. Static contends there is no legal basis for Plaintiffs’ efforts to
bar Static from disputing the authenticity of the notes, and, in any event, it has evidence that Miller
altered the facsimile cover sheet.3
Although Count II is no longer at issue in this case due to the Court’s summary judgment
order, Plaintiffs assert that the instant argument is not moot because they “may wish to introduce
[Miller’s inventor] notes . . . at trial, such as for development background and/or in response to
[Static’s] invalidity contentions [regarding Plaintiffs’ patents].” (Dkt. 246 at 3) Static disagrees,
arguing that these arguments are moot and that there is no reasonable probative basis for Plaintiffs
to introduce the inventor notes at trial.
The Court disagrees with Plaintiffs that this argument is not moot. The parties’ dispute
regarding Miller’s inventor notes turns on the date of the notes, which is an issue of fact relevant
only to Count II’s allegations regarding the invalidity of Static’s patents. Plaintiffs themselves
state that they will rely on Miller’s inventor notes in support of their invalidity claims against Static
patents, “[s]hould invalidity continue to be an issue in this case.” (Dkt. 205 at 10) Following the
dismissal of Count II, the Court fails to see how the date of Miller’s inventor notes is relevant to
any issue remaining in this case.
Further, it is unclear how Miller’s inventor notes are relevant to the “development
background” of this case or alleged invalidity of Plaintiffs’ patents-in-suit. But even assuming
Plaintiffs could demonstrate how the notes are relevant, the Court fails to see how the date of the
3
These argument are addressed in Plaintiffs’ Motion to Exclude Lyter (Dkt. 211), and Static’s
response in opposition (Dkt. 228), which the Court addresses in a separate order.
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notes are relevant. Nonetheless, even if Plaintiffs’ argument was not moot, the Court would not
issue a blanket order barring Static from disputing the authenticity of the notes.
Accordingly, to the extent Plaintiffs seek to preclude Static from disputing the authenticity
of Miller’s inventor notes, Plaintiffs’ motion in limine is DENIED.
V.
DOCUMENTS NOT PRODUCED IN DISCOVERY
Plaintiffs seek to preclude Static from introducing into evidence at trial any documents or
items not produced prior to the close of discovery, arguing that it would unfairly prejudice
Plaintiffs. In response, Static argues that Plaintiffs’ request for a blanket pre-trial order is
improper, because the Court cannot rule in a vacuum regarding the admissibility of documents that
may or may not ever be at issue. Further, Static asserts that Plaintiffs’ discovery conduct was
improper and therefore any discovery sanctions imposed by a blanket pre-trial order should not be
limited to Static.
While evidence not produced in response to discovery requests before the close of
discovery is generally not admissible, the Court will not grant a blanket motion to limine out any
and all items not produced during discovery. Accordingly, Plaintiffs’ motion in limine as to this
issue is DENIED without prejudice to counsel raising any objections at trial, should a party seek
to introduce items that should have been produced during discovery but were not.
VI.
DAVID ABRAHAM
David Abraham is a former friend of Miller and former employee of Inter Solution
Ventures, Ltd. (“ISV”), a catalog business distributing printer cartridge components. According
to Plaintiffs, Miller helped Abraham create ISV, and Abraham eventually turned over his control
of ISV to Miller. Further, Abraham suffered from personal issues, including substance abuse, and
was ultimately incarcerated in March 2003. In August 2013, Static filed a motion to take
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Abraham’s deposition in jail, asserting that his testimony is relevant to the issues in this case. (Dkt.
99) Over Plaintiffs’ objections (Dkt. 104), Static was permitted to take Abraham’s deposition in
jail. (Dkt. 105)
In their motion in limine, Plaintiffs seek to exclude as irrelevant and unfairly prejudicial:
(i) Abraham’s testimony, (ii) references to Abraham, (iii) references to Abraham having been
incarcerated, homeless, or suffering from substance abuse issues, and (iv) references to Miller
concealing Abraham’s identity. Plaintiffs contend Static seeks to present Abraham’s testimony
for the prejudicial purpose of presenting the jury with a deposition taken from jail.
In response, Static asserts that it has no intention of introducing Abraham’s jail deposition
at trial.
Static also asserts that Abraham’s relevance is not based on his drug issues or
incarceration. However, Static contends that references to Abraham (and ISV) are relevant “to the
story of Miller’s entry into the remanufactured toner chip industry.” As alleged in its 2004 lawsuit
against Miller and entities related to Miller, Static contends Miller created ISV, and made Abraham
(who was homeless at the time) ISV’s nominal owner, for the purpose of concealing Miller’s
efforts to steal Lexmark’s or Static’s printer chip code. Further, Static contends that Miller’s use
of Abraham is relevant to Miller’s credibility, “which will be a main issue at trial.”
The Court is unable to determine at the pre-trial stage whether any or all evidence regarding
Abraham is irrelevant or unfairly prejudicial. However, the fact that Abraham is incarcerated or
suffered from substance abuse is irrelevant to any issues in this case. Accordingly, to the extent
Plaintiffs seek to exclude any reference to Abraham’s incarceration and substance abuse,
Plaintiffs’ motion is GRANTED. To the extent Plaintiffs seek to exclude any and all evidence or
reference regarding Abraham, Plaintiffs’ motion in limine is DENIED without prejudice to
Plaintiffs raising any objections at trial.
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VII.
DUPLICATIVE EXPERT TESTIMONY
Plaintiffs contend that Static has listed three experts to offer opinions on the invalidity of
Plaintiffs’ patents-in-suit—Ligatti, Shelby, and Thacker—and that such testimony is overlapping
and redundant. In their motion in limine, Plaintiffs seek to exclude Static from offering duplicative
expert testimony. In response, Static argues that Plaintiffs’ motion should be denied because it is
premature and fails to identify what testimony is believed to be redundant. The Court agrees that
expert testimony should not be redundant or duplicative. See Tran v. Toyota Motor Corp., 420
F.3d 1310, 1315-16 (11th Cir.2005) (holding that the district court did not abuse its discretion
when it excluded the trial testimony of a second expert, where the first expert had testified on the
same topics and had similar qualifications). However, the Court is unable to determine whether
such testimony is redundant or duplicative at the pre-trial stage. Accordingly, Plaintiffs’ motion
in limine regarding duplicative expert testimony is DENIED without prejudice to Plaintiffs raising
any objections at trial.
VIII.
TESTIMONY REGARDING ALLEGED STEALING OF STATIC’S CODE
Plaintiffs seek to exclude any testimony regarding Miller’s or ISV’s alleged theft of Static’s
code in 2003 as irrelevant and unfairly prejudicial. Plaintiffs contend that the alleged theft of
Static’s code relates to Static’s 2004 lawsuit against Miller and other entities relating to Miller,
alleging copyright infringement and theft, and are irrelevant to any issue in this case. Further,
Plaintiffs assert that even if the alleged theft of Static’s code is relevant, its probative value is
substantially outweighed by the danger of unfair prejudice. Specifically, because “Static has not
proven Miller and ISV stole anything, to cast them as thieves carries a real risk of unfairly
prejudicing the jury against them.” (Dkt. 205 at 18)
15
In response, Static asserts that the alleged theft of Static’s code is relevant to: (1) the
background relationship between the parties, (2) the development and manufacture of the
technology at issue in this lawsuit, (3) the invalidity claims at issue in this case, and (4) Miller’s
credibility.
The Court is unable to determine at the pretrial stage whether any testimony regarding
Miller’s or ISV’s alleged theft of Static’s code would be irrelevant and/or unfairly prejudicial.
Accordingly, Plaintiffs’ motion in limine is DENIED without prejudice to Plaintiffs raising any
objections at trial.
IX.
CONCLUSION
Accordingly, it is ORDERED AND ADJUDGED that Plaintiffs’ Motion in Limine (Dkt.
205) is GRANTED IN PART AND DENIED IN PART.
A. To the extent Plaintiffs seek to exclude Newman’s testimony regarding the offer dates and
functionality of Lexmark’s products, Plaintiffs’ motion to exclude Newman’s testimony is
DENIED without prejudice to Plaintiffs raising any objections at trial.
B. To the extent Plaintiffs seek to exclude Shelby’s testimony regarding the offer dates and
functionality of Static’s products, Plaintiffs’ motion is DENIED without prejudice to
Plaintiffs raising any objections at trial.
C. To the extent Plaintiffs seek to preclude Static from disputing the authenticity of Miller’s
inventor notes, Plaintiffs’ motion is DENIED.
D. To the extent Plaintiffs seek to preclude Static from introducing any and all document that
should have been produced during discovery but were not, Plaintiffs’ motion is DENIED
without prejudice to counsel raising any objections at trial.
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E. To the extent Plaintiffs seek to exclude any reference to Abraham’s incarceration and
substance abuse, Plaintiffs’ motion is GRANTED; to the extent Plaintiffs seek to exclude
any and all evidence or reference regarding Abraham, Plaintiffs’ motion is DENIED
without prejudice to Plaintiffs raising any objections at trial.
F. To the extent Plaintiffs seek to exclude duplicative expert testimony, Plaintiffs’ motion is
DENIED without prejudice to Plaintiffs raising any objections at trial.
G. To the extent Plaintiffs seek to exclude any testimony regarding the alleged theft of Static’s
code, Plaintiffs’ motion is DENIED without prejudice to Plaintiffs raising any objections
at trial.
DONE AND ORDERED at Tampa, Florida, this 6th day of October, 2014.
Copies To: Counsel of Record
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