Schwendimann v. Arkwright Advanced Coating, Inc.

Filing 598

MEMORANDUM OPINION AND ORDER ON MOTIONS IN LIMINE: granting in part and denying in part Schwendimann's Motion in Limine 477 ; granting in part and denying in part Schwendimann's Motion in Limine 545 ; denies Schwendimann's Motion in Limine 488 ; granting in part and denying in part Schwendimann's Motion in Limine 526 ; denies Schwendimann's Motion in Limine 481 ; granting in part and denying in part and deferring part of it's ruling on AACI's Motion in Li mine 474 ; granting AACI's Motion in Limine 490 ; denying Schwendimann's Motion in Limine 482 ; denying Schwendimann's Motion in Limine 486 ; denying Schwendimann's Motion in Limine 483 ; granting Schwendimann's Motion i n Limine 480 ; denying AACI's Motion in Limine 476 ; granting in part and denying in part AACI's Motion in Limine 485 ; denying AACI's Motion in Limine 489 ; granting AACI's Motion in Limine 492 ; denying AACI's Motion i n Limine 493 ; denying AACI's Motion in Limine 495 ; deferring in part it's ruling on, and denying in part AACI's Motion in Limine 498 ; denying AACI's Motion in Limine 500 ; denying AACI's Motion in Limine 502 ; denying AACI's Motion in Limine 504 ; denying AACI's Motion in Limine 547 ; and denying AACI's Motion in Limine 549 .(Written Opinion) Signed by Chief Judge John R. Tunheim on 09/25/2017. (JMK)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
JODI A. SCHWENDIMANN, f/k/a JODI
DALVEY

Civil No. 11-820 (JRT/HB)

Plaintiff,
v.
ARKWRIGHT ADVANCED COATING, INC.

MEMORANDUM OPINION AND
ORDER ON
MOTIONS IN LIMINE

Defendant.
ARKWRIGHT ADVANCED COATING, INC.
Counterclaim Plaintiff,
v.
JODI A. SCHWENDIMANN, f/k/a JODI
DALVEY and COOLER CONCEPTS, INC.
Counterclaim Defendants.
David A. Davenport, Devan V. Padmanabhan, and Michelle E. Dawson,
WINTHROP & WEINSTINE, PA, 225 South Sixth Street, Suite 3500,
Minneapolis, MN 55402, for Jodi A. Schwendimann and Cooler Concepts,
Inc.
Katherine J. Rahlin, Kurt J. Niederluecke, and Laura L. Myers,
FREDRIKSON & BYRON, PA, 200 South Sixth Street, Suite 4000,
Minneapolis, MN 55402, for Arkwright Advanced Coating, Inc.

Plaintiff Jodi Schwendimann brought this action against Arkwright Advanced
Coating, Inc. (“AACI”), alleging that it infringed on six of Schwendimann’s patents.
AACI brought a counterclaim against Schwendimann and her company, Cooler
Concepts, alleging that they infringed on two of AACI’s patents. All of the patents at

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issue involve image-transfer sheets that can be used to transfer images onto a colored
base, such as a T-Shirt, by applying heat.
The parties have completed discovery. The parties have brought motions in limine
in advance of trial to resolve a number of evidentiary disputes. The Court issues this
order to address the parties’ motions in limine.

BACKGROUND
I.

FACTUAL BACKGROUND
Schwendimann’s companies, NuCoat and Cooler Concepts, manufacture and sell

specialty paper products, including inkjet image transfer paper or sheets. Schwendimann
alleges that AACI’s 888 and 889 products infringe on six of Schwendimann’s patents:
1.
2.
3.
4.
5.
6.

RE41,623 (the “‘623 Patent”)
7,749,581 (the “‘581 Patent”)
7,754,042 (the “‘042 Patent”)
7,766,475 (the “‘475 Patent”)
7,771,554 (the “‘554 Patent”)
8,703,256 (the “‘256 Patent”)

Cooler Concepts licenses these patents to MJ Solutions, a company owned in part by
Schwendimann. (Decl. of Kurt J. Niederluecke (“Niederluecke Decl.”) ¶ 24, Sealed Ex.
23, Sept. 6, 2017, Docket No. 515.)
AACI also produces inkjet image transfer paper or sheets, including the accused
888 and 889 products. AACI alleges that Schwendimann’s products infringe on two of
AACI’s patents:
1.
2.

6,667,093 (the “‘093 Patent”)
7,943,214 (the “‘214 Patent”)
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II.

PROCEDURAL BACKGROUND
In 2008, Schwendimann brought an action against AACI’s predecessor-in-interest,

Océ (f.k.a. Arkwright, Inc.). See Complaint, Schwendimann v. Oce Imaging Supplies,
Inc., Civil No. 08-162 (ADM/JSM) (D. Minn. January 16, 2008). During the pendency
of that action, Océ sold its two patents to AACI and settled with Schwendimann.
Schwendimann joined AACI as a party to the 2008 case in 2011 but voluntarily
dismissed her action without prejudice a month later. The current case was filed in 2011.
On December 12, 2016, the Court issued an order for partial summary judgment
with respect to a number of issues. (Mem. Op. and Order on Mots. for Summ. J.
(“Summ. J.”) at 38-39, Dec. 12, 2016, Docket No. 439.) Notably, the Court granted
AACI’s motion for partial summary judgment with regard to Schwendimann’s
infringement of AACI’s ‘093 patent. (Id.) The Court also concluded that Schwendimann
may argue her theory of lost profit damages at trial if she can establish that NuCoat and
Cooler Concepts’ profits “flow[] inexorably” to her. (Id. at 38.)

However, the Court

warned that the tax statuses of NuCoat and Cooler Concepts are insufficient to establish
inexorable flow, and thus Schwendimann must present “contractual, structural, or
historical evidence” showing that profits in fact flowed to her. (Id.)

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ANALYSIS
I.

SCHWENDIMANN’S MOTIONS IN LIMINE
A. Non-Infringement Based Upon Own Patents (Schwendimann Motion #1)
Schwendimann moves under Fed. R. Evid. 402 to preclude AACI from presenting

any theory of non-infringement based on its own patents. AACI does not intend to argue
that its own patents give it an affirmative right to make or use products covered by its
patents. Thus, the Court will grant Schwendimann’s motion.
AACI intends to present its own patents as evidence that AACI’s products do not
melt below 220 ̊ C. The Court finds that the melting temperature of AACI’s products, as
illustrated by AACI’s patents, is relevant to the issue of whether AACI’s products
infringe on Schwendimann’s patents. Therefore, the Court’s order does not prevent
AACI from introducing its patents for purposes of showing that its products do not melt
below 220 ̊ C. To reduce any prejudice that may result from the introduction of AACI’s
patents, Schwendimann is entitled to a limiting instruction that the existence of AACI’s
patents does not constitute a defense to infringement of Schwendimann’s patents.
B. The 888 Product’s Layers (Schwendimann Motion #2)
Schwendimann moves under Fed. R. Evid. 402 to exclude AACI from presenting
argument or testimony that AACI’s 888 Product is a single layer. Whether the 888
Product is comprised of one or more layers is a central issue in this litigation and will be
resolved through the presentation of evidence at trial.
Schwendimann’s motion.

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The Court will thus deny

C. Schwendimann’s Lost Profits (Schwendimann Motion #3)
Schwendimann moves to prevent AACI from (1) arguing that she is per se
excluded from pursuing lost profit damages as a matter of law and (2) introducing
particular evidence relevant to the issue of lost profits.
Both Schwendimann and AACI have brought motions relating to whether
Schwendimann should be allowed to argue her theory of lost profit damages. In its
summary judgment motion, the Court concluded that Schwendimann may pursue lost
profit damages if “Schwendimann establishes that NuCoat and Cooler Concepts’ profits
flowed inexorably to her.” (Summ. J. at 35-36.) The Court will grant Schwendimann’s
motion to the extent that it seeks to exclude AACI from arguing that Schwendimann is
per se ineligible for lost profit damages as a matter of law.
The Court notes, however, that Schwendimann must present “contractual,
structural, or historical evidence” showing that her companies’ profits inexorably flow to
her. Much of the evidence submitted to the Court thus far has related to the tax statuses
of Schwendimann’s companies, which the Court has previously found insufficient to
establish inexorable flow. If Schwendimann fails to produce contractual, structural, or
historical evidence at trial, her theory of lost profit damages will be subject to dismissal.
Schwendimann moves to exclude various pieces of evidence that AACI intends to
introduce to show that her companies’ profits do not inexorably flow to her. The Court
finds that the evidence Schwendimann seeks to exclude is relevant to the issue of lost
profit damages because it is contractual, structural, or historical evidence probative of
whether her companies’ profits flowed to her. Moreover, the Court is persuaded that
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Schwendimann will have the opportunity to challenge this evidence through the
presentation of other evidence and witnesses at trial.

Thus, the Court will deny

Schwendimann’s motion to the extent that it seeks to exclude specific evidence related to
lost profits.
D. Date of Damages (Schwendimann Motion #4 and AACI Motion #4)
Both parties have brought motions related to the start date for calculating
damages. The Court must decide whether the ‘311 Patent is substantially identical to the
‘623 Patent.
“An original patent cannot be infringed once a reissue patent has issued, for the
original patent is surrendered.” Seattle Box Co. v. Indus. Crating & Packaging, 731 F.2d
818, 827 (Fed. Cir. 1984). But the surrender of the original patent does not affect any
cause of action pending or existing at the time of reissue if the reissued patent is
“substantially identical” to the original patent. 35 U.S.C. § 252. “‘Identical’ does not
mean verbatim.” Laitram Corp. v. NEC Corp., 952 F.2d 1357, 1361 (Fed. Cir. 1991).
The scope of the claim must be identical; identical words need not be used. Slimfold Mfg.
Co., Inc. v. Kinkead Indus., Inc., 810 F.2d 1113, 1115 (Fed. Cir. 1987). For purposes of
assessing whether the claims are substantially identical, the scope of the claim “cannot be
interpreted in a vacuum and must be interpreted in light of the particular facts, including
the prior art, the prosecution history, other claims, and any other pertinent information.”
Westvaco Corp. v. Int’l Paper Co., 991 F.2d 735, 742 (Fed. Cir. 1993) (citations
omitted).

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The ‘311 Patent was reissued as the ‘623 Patent on July 6, 2010. The Court finds
that the original ‘311 Patent is not substantially identical to the ‘623 Patent. In the
specification of the ‘311 Patent, Figure 5 showed the release layer comprised of one
layer. In the ‘623 Patent, Figure 5 was changed to show the release layer comprised of
two layers. At claim construction, the Court based its construction of “release layer” on
Figure 5, stating that “the specification [of the ‘623 Patent] demonstrates compositional
separation between the discrete parts that comprise the release layer.” (Mem. Op. and
Order (“Claim Construction”) at 26-28, December 2, 2015, Docket No. 354.)

The

Court’s claim construction order demonstrates that the scope of the claims in the ‘311
Patent and the ‘623 Patent are not substantially identical. See Westvaco Corp, 991 F.2d
at 741-42.
The Court will deny Schwendimann’s motion and conclude that Schwendimann is
only entitled to argue for damages dating from July 6, 2010, the issue date of the ‘623
Patent.
E. Summary Judgment Finding of Infringement (Schwendimann Motion #5)
Schwendimann moves under Fed. R. Evid. 402 and 403 to exclude references to
the Court’s summary judgment finding that Schwendimann infringed on AACI’s ‘093
Patent. The Court finds that the previous finding of infringement is relevant to the issue
of whether Schwendimann willfully infringed on the ‘093 Patent. Thus, the Court will
deny Schwendimann’s motion.

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Nevertheless, Schwendimann is entitled to a limiting instruction that the jury may
not use the Court’s finding of infringement on the ‘093 Patent in determining whether
Schwendimann infringed on the ‘214 Patent.
F. Anticipation of the ‘845 Application (Schwendimann Motion #6)
Schwendimann moves under Fed. R. Evid. 402 and 403 to exclude testimony or
argument that the ‘845 Application fails to disclose polyurethane in two layers. The
parties’ respective arguments on this point are heavily fact based and the subject of
conflicting expert testimony. In effect, Schwendimann’s motion asks the Court to weigh
the sufficiency of the evidence and find that the ‘845 Application anticipates AACI’s
patents. “[A] motion in limine is not the appropriate vehicle for weighing the sufficiency
of the evidence” in a patent-infringement case. Meyer Intellectual Props. Ltd. v. Bodum,
Inc., 690 F.3d 1354, 1378 (Fed. Cir. 2012). Thus, the Court will deny Schwendimann’s
motion.
G. Willful Infringement by Schwendimann (Schwendimann Motion #7)
Schwendimann moves under Fed. R. Evid. 402 to preclude AACI from arguing
that Schwendimann willfully infringed on AACI’s patents. In effect, Schwendimann
argues that there is insufficient evidence to support a finding of willful infringement.
Again, “a motion in limine is not the appropriate vehicle for weighing the sufficiency of
the evidence” in a patent-infringement case.
Schwendimann’s motion.

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Id.

Thus, the Court will deny

H. Schwendimann’s Wealth and Social Status (Schwendimann Motion #8)
Schwendimann moves under Fed. R. Evid. 402 to exclude evidence regarding her
wealth and social status. The Court finds that evidence of Schwendimann’s wealth and
social status is not relevant to this case. Thus, the Court will grant Schwendimann’s
motion.
At trial, the Court will permit the parties to argue that certain evidence of wealth
or social status should be admitted as relevant to other issues in this case. The Court’s
order does not preclude the parties from introducing evidence relevant to the issue of lost
profit damages.
II.

AACI’S MOTIONS IN LIMINE
A. Schwendimann’s Lost Profits
AACI moves to prevent Schwendimann from arguing that she is entitled to lost

profit damages and to exclude certain testimony by Schwendimann’s damages expert,
Donald Gorowsky.
First, AACI argues that Schwendimann has failed to produce sufficient evidence
to show that she is entitled to lost profit damages and thus should be prevented from
arguing her theory of lost profit damages at trial. The Court has already addressed this
issue and will accordingly deny AACI’s motion to the extent that it seeks to prevent
Schwendimann from arguing her theory of lost profit damages.
Second, AACI moves to exclude (1) Gorowsky’s testimony about whether the
profits from Schwendimann’s companies inexorably flow to Schwendimann and (2)
Gorowsky’s 80% alternative damages theory. The Court concludes that Gorowsky’s
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testimony is relevant to the issue of damages and, therefore, the Court will deny AACI’s
motion. But the Court again warns Schwendimann that she must produce contractual,
structural, historical evidence showing that her companies’ profits inexorably flow to her
lest she risk dismissal of her theory of lost profit damages.
B. License Between Cooler Concepts and MJ Solutions (AACI Motion #2)
AACI moves under Fed. R. Evid 402 and 403 to exclude a patent license that
Cooler Concepts granted to MJ Solutions in 2011. The Court finds that the license
agreement between Cooler Concepts and MJ Solutions is relevant to determining a
reasonable royalty. See Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp.
1116, 1120 (S.D.N.Y. 1970). The Court concludes that the evidence is relevant even if
the jury finds that Cooler Concepts and MJ Solutions are “related parties.” Cf. Warsaw
Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365 (Fed. Cir. 2015) (concluding that it is
within the district court’s discretion to decide whether license agreements between
related parties are relevant). Thus, the Court will deny AACI’s motion.
C. Settlement Agreement Between Schwendimann and Océ (AACI Motion #2)
AACI moves under Fed. R. Evid. 403 and 408 to exclude evidence of a settlement
agreement between Schwendimann and Océ arising out of a previous patent-infringement
claim.

The Federal Circuit has concluded that the introduction of prior settlement

agreements with third parties results in unfair prejudice. See LaserDynamics, Inc. v.
Quanta Comput., Inc., 694 F.3d 51, 77 (Fed. Cir. 2012). Contrary to Schwendimann’s
assertion, the Court does not find that the settlement agreement is the most reliable

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license in the record. See ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872 (Fed. Cir.
2010). Thus, the Court will grant AACI’s motion.
D. Outcome of Arbitration between AACI and MJ Solutions (AACI Motion #3)
AACI moves under Fed. R. Evid. 402 and 403 to exclude evidence of the
arbitration proceedings between AACI and MJ Solutions.

Gorowsky relies on the

arbitrator’s findings to suggest that there are only three competitors in the dark T-Shirt
transfer paper market. (Niederluecke Decl. ¶ 4, Ex. 3 at 5.) The Court finds that the
arbitrator’s findings are relevant to the issue of whether there are acceptable noninfringing substitutes. See Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d
1152, 1156 (6th Cir. 1978). The Court finds that AACI can remedy any risk of prejudice
through cross-examination of Gorowsky. Thus, the Court will deny AACI’s motion.
E. Schwendimann’s Affirmative Defenses (AACI Motion #5)
AACI moves to exclude argument about four possible affirmative defenses that
Schwendimann and Cooler Concepts may raise at trial: (1) laches, (2) estoppel, (3)
unclean hands, and (4) intervening rights. Schwendimann states that she will not argue
affirmative defenses of laches or intervening rights at trial. The Court will also preclude
Schwendimann from arguing affirmative defenses of unclean hands and estoppel. If
Schwendimann is able to produce sufficient evidence supporting her affirmative defenses
of unclean hands and estoppel, the Court will consider allowing Schwendimann to argue
these defenses at trial. Thus, the Court will grant AACI’s motion.

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F. Prior Art (AACI’s Motion #6)
AACI moves to exclude evidence of the ‘845 Application and the ‘475 Patent for
purposes of showing prior art.
The ‘845 Application was filed on April 3, 2011, and resulted in the ‘311 Patent.
The priority date of the ‘093 Patent is April 19, 2011. The Court, therefore, concludes
that the ‘845 Application is relevant to showing prior art pursuant to 35 U.S.C.
§ 102(e)(2).
The ‘475 Patent resulted from the ‘562 Application, which is a continuation in a
long line of patent applications. (Aff. of David A. Davenport ¶ 13, Ex. 12 at 42, Sept.
15, 2017, Docket No. 581.) “An applicant is entitled to claim the benefit of the filing
date of the parent application for continuation and divisional applications only to the
extent that the parent application discloses the subject matter claimed in the subsequent
application.” Kothmann Enters., Inc. v. Trinity Indus., Inc., 455 F. Supp. 2d 608, 638
(S.D. Tex. 2006). The Court concludes that, from April 3, 2000, to the ‘562 Application,
the patent applications disclosed the subject matter at issue here.
Thus, the Court will deny AACI’s motion.
G. Invalidity of the ‘214 Patent and Doctrine of Equivalents (AACI’s Motion #7)
AACI moves to exclude evidence and argument that the ‘214 Patent is invalid. In
effect, AACI seeks dismissal of Schwendimann’s invalidity defense by arguing that there
is insufficient evidence to support this defense.

“[A] motion in limine is not the

appropriate vehicle for weighing the sufficiency of the evidence” in a patent-infringement

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case. Meyer Intellectual Props. Ltd., 690 F.3d at 1378.

Thus, the Court will deny

AACI’s motion.
H. Testimony of Jodi Schwendimann and Nabil Nasser (AACI’s Motion #8)
AACI moves to exclude expert testimony from Jodi Schwendimann and Nabil
Nasser. The Court cannot rule on this motion without first hearing the testimony of
Schwendimann and Nasser. The Court will defer its ruling on this motion, but notes that
neither party will be permitted to offer testimony from undisclosed experts.
I. Testimony About Expert Reports of Risen and McClane (AACI’s Motion #8)
AACI moves to exclude testimony from Donald Gorowsky about the expert
reports of William Risen and Patrick McClane. Risen and McClane were experts during
the MJ Solutions and AACI arbitration and are not appearing in this case. The Court
concludes that testimony from Gorowsky about the contents of the expert reports of
Risen and McClane is impermissible hearsay. See Kirk v. Raymark Indus. Inc., 61 F.3d
147, 163-64 (3d Cir. 1995). Thus, the Court will grant AACI’s motion.
J. Testimony About Third-Party Infringement (AACI’s Motion #9)
AACI moves to preclude Schwendimann from presenting evidence that other
competitors infringe on her patents. Whether competitors infringe on Schwendimann’s
products is relevant to whether there is an absence of acceptable non-infringing
substitutes. See Panduit Corp., 575 F.2d at 1156. In effect, AACI argues that there is
insufficient evidence to support Schwendimann’s allegations that her competitors are also
infringing on her patents. “[A] motion in limine is not the appropriate vehicle for

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weighing the sufficiency of the evidence” in a patent-infringement case.

Meyer

Intellectual Props. Ltd., 690 F.3d at 1378. Thus, the Court will deny AACI’s motion.
K. AACI’s Parent Companies (AACI’s Motion #10)
AACI moves under Fed. R. Evid. 402 and 403 to exclude evidence and argument
regarding The Sihl Group, Diatec Holdings, and The Sihl Group’s acquisition by
Equistone. The Court finds that this evidence is relevant to providing the jury a complete
understanding of the history of this litigation and the relationship between the parties.
Thus, the Court will deny AACI’s motion.
L. Alleged Copying by AACI (AACI’s Motion #11)
AACI moves under Fed. R. Evid. 402 and 403 to exclude Schwendimann from
arguing or introducing evidence that AACI copied her products. Whether AACI copied
Schwendimann’s products is relevant to the issue of willful infringement. In effect,
AACI argues that there is insufficient evidence to support Schwendimann’s allegations
that AACI copied Schwendimann’s products.

“[A] motion in limine is not the

appropriate vehicle for weighing the sufficiency of the evidence” in a patent-infringement
case. Meyer Intellectual Props., 690 F.3d at 1378. Thus, the Court will deny AACI’s
motion.
M. Testimony of Frank Shea
AACI moves to exclude testimony from Frank Shea because Schwendimann did
not disclose that Shea had potentially discoverable information pursuant to Fed. R. Civ.
P. 26(a). In assessing whether a party’s violation of Fed. R. Civ. P. 26(a) was harmless,

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the Court examines: “(1) the prejudice or surprise to the party against whom the
testimony is offered; (2) the ability of the party to cure the prejudice; (3) the extent to
which introducing such testimony would disrupt the trial; and (4) the moving party’s bad
faith or willfulness.” Rodrick v. Wal-Mart Stores E., L.P., 666 F.3d 1093, 1096-97 (8th
Cir. 2012) (quotation omitted). The Court finds that there is little risk of surprise to
AACI because Schwendimann identified Shea as a source of information in an
interrogatory. (Niederluecke Decl. ¶ 23, Ex. 23 at 3.) The Court further finds that AACI
has the ability to cure the prejudice through cross-examination of Shea, that the
introduction of Shea’s testimony would not disrupt the trial, and that, even if
Schwendimann acted in bad faith in failing to disclose Shea, AACI may have been was
negligent in not inquiring about Shea because Schwendimann’s interrogatories disclose
his importance to this case. Thus, the Court will deny AACI’s motion.
ORDER
Based on the foregoing, and all files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1. The Court GRANTS Schwendimann’s motion [Docket No. 477, 545] to exclude
AACI from presenting any theory of non-infringement based upon its own patents.
Schwendimann is entitled to a limiting instruction that the existence of AACI’s
patents does not constitute a defense to infringement of Schwendimann’s patent.
2. The Court DENIES Schwendimann’s motion [Docket No. 477, 488] to exclude
AACI from presenting argument or testimony that AACI’s 888 product’s Solvent
T-Shirt Inkjet Coating Layer is a single layer.
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3. The Court GRANTS Schwendimann’s motion [Docket No. 477, 526] to the extent
that it seeks to exclude AACI from presenting arguments that Schwendimann is
per se excluded from presenting her theory of lost profit damages as a matter of
law. The Court DENIES Schwendimann’s motion [Docket No. 477, 526] to the
extent that it seeks to exclude evidence related to the issue of lost profits.
4. The Court DENIES Schwendimann’s motion [Docket No. 477, 481] to exclude
AACI from offering any testimony or argument that Schwendimann is not
permitted to claim damages prior to July 6, 2010. The Court GRANTS AACI’s
motion [Docket No. 474, 490] to exclude evidence about any damages to
Schwendimann prior to July 6, 2010. The Court concludes that Schwendimann is
limited to arguing for damages from July 6, 2010 onward.
5. The Court DENIES Schwendimann’s motion [Docket No. 477, 482] to exclude
evidence regarding the Court’s summary judgment order finding that
Schwendimann infringed on the ‘093 Patent.

Schwendimann is entitled to a

limiting instruction that the jury may not use the Court’s finding of infringement
in determining whether Schwendimann infringed on the ‘214 Patent.
6. The Court DENIES Schwendimann’s motion [Docket No. 477, 486] to exclude
evidence about the anticipation of the ‘093 Patent by the ‘845 Application.
7. The Court DENIES Schwendimann’s motion [Docket No. 477, 483] to exclude
references to allegedly willful infringement by Schwendimann.
8. The Court GRANTS Schwendimann’s motion [Docket No. 477, 480] to exclude
evidence and testimony regarding Schwendimann’s wealth and social status. The
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Court’s order does not prevent the parties from introducing evidence relevant to
lost profit damages.
9. The Court DENIES AACI’s motion [Docket No. 474, 476] to exclude evidence
relating to lost profit damages and testimony from Donald Gorowsky regarding
inexorable flow and his 80% alternative damages theory.
10. The Court DENIES AACI’s motion [Docket No. 474, 485] to the extent it seeks
to exclude evidence regarding the license between Cooler Concepts and MJ
Solutions. The Court GRANTS AACI’s motion [Docket No. 474, 485] to the
extent it seeks to exclude evidence regarding the settlement agreement between
Schwendimann and Océ.
11. The Court DENIES AACI’s motion [Docket No. 474, 489] to exclude evidence
regarding the outcome of the arbitration between AACI and MJ Solutions.
12. The Court GRANTS AACI’s motion [Docket No. 474, 492] to exclude
Schwendimann and Cooler Concepts’ affirmative defenses of laches, estoppel,
unclean hands, and intervening rights.
13. The Court DENIES AACI’s motion [Docket No. 474, 493] to exclude evidence
and argument regarding patents and patent applications that do not qualify as prior
art.
14. The Court DENIES AACI’s motion [Docket No. 474, 495] to exclude evidence
and argument as to the invalidity of the ‘214 Patent and infringement of
Schwendimann’s patents under the doctrine of equivalents.

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15. The Court DEFERS its ruling on AACI’s motion [Docket No. 474, 498] with
respect to testimony from Nabil Nasser and Jodi Schwendimann. The Court
DENIES AACI’s motion [Docket No. 474, 498] to the extent it seeks to exclude
testimony from Donald Gorowsky about the expert reports of William Risen and
Patrick McCane. The Court will prohibit either party from offering testimony
from undisclosed experts.
16. The Court DENIES AACI’s motion [Docket No. 474, 500] to exclude testimony
regarding third-party infringement and the scope of Schwendimann’s patent
coverage.
17. The Court DENIES AACI’s motion [Docket No. 474, 502] to exclude evidence
and argument regarding The Sihl Group, Diatec Holdings, and The Sihl Group’s
acquisition by Equistone.
18. The Court DENIES AACI’s motion [Docket No. 474, 504] to exclude testimony
and argument regarding alleged copying by AACI.
19. The Court DENIES AACI’s motion [Docket No. 547, 549] to exclude any
testimony from Frank Shea.

DATED: September 25, 2017
at Minneapolis, Minnesota.

s/John R. Tunheim
JOHN R. TUNHEIM
Chief Judge
United States District Court

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