Wilson et al v. Corning, Inc.

Filing 839

PRETRIAL ORDER REGARDING MOTIONS IN LIMINE 685 , 686 , 687 , 688 , 689 , 690 , 691 , 692 , 693 , 694 , 695 , 696 , 697 , 698 , 699 , 728 , 739 , 747 . (Written Opinion) Signed by Judge Donovan W. Frank on 7/21/2022. See Order for Specifics. (las)

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UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
John R. Wilson and Wilson
Wolf Manufacturing Corporation,

Civil No. 13-210 (DWF/TNL)

Plaintiffs,
v.

PRETRIAL ORDER

Corning, Inc.,
Defendant.
This matter came before the Court for a pretrial hearing on July 13, 2022. At the
pretrial hearing, the Court heard, among other things, the parties’ respective motions
in limine. Based upon the memoranda, pleadings, and arguments of counsel, and for the
reasons explained during the hearing, the Court hereby enters the following:
ORDER
1.

Plaintiffs’ Motion in Limine #1 to Preclude Corning from Introducing

Evidence of Alleged Invention of the Subject Matter of the ’209 Patent Prior to
September 9, 2004 (Doc. No. [685]) is DENIED. Assuming proper foundation being
laid and subject to objections at trial, this evidence survives the Court’s Article 4
analysis.
2.

Plaintiffs’ Motion in Limine #3 to Preclude Corning’s Damages Expert

From Speculating About the Potential Effect of Undisclosed Potential Future Products
(Doc. No. [686]) is provisionally GRANTED. This evidence is presumptively
inadmissible unless and until the relevance of such evidence is made clear to the Court

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and such relevance survives a Rule 403 analysis. The Court will entertain a motion to
introduce such evidence, should it become appropriate based on testimony received at
trial.
3.

Plaintiffs’ Motion in Limine #4 to Exclude Testimony from Undisclosed

Experts (Doc. No. [687]) is provisionally DENIED. This evidence is presumptively
admissible. Assuming proper foundation is laid and subject to objections at trial, the
Court concludes that this testimony survives the Court’s Article 4 and Article 7 analysis.
4.

Plaintiffs’ Motion in Limine #5 to Preclude Corning From Introducing

Testimony or Other Evidence Relating to Wilson Wolf Prototypes Maintained in
Corning’s Possession (Doc. No. [688]) is DENIED. Assuming proper foundation being
laid and subject to objections at trial, this evidence survives the Court’s Article 4
analysis.
5.

Plaintiffs’ Motion in Limine #6 to Preclude Corning from Testifying About

the Section of COR004703A Improperly Withheld as Privileged (Doc. No. [689]) is
provisionally GRANTED. This evidence is presumptively inadmissible unless and until
the relevance of such evidence is made clear to the Court (i.e., to rebut and provide
context) and such relevance survives a Rule 403 analysis. The Court will entertain a
motion to introduce such evidence, should it become appropriate based on testimony
received at trial.
6.

Plaintiffs’ Motion in Limine #7 to Preclude Defendant from Challenging

Plaintiffs’ Media Sales Calculations (Doc. No. [690]) is DENIED. Plaintiffs allege that
Defendant refused to produce any information about the actual media sales during fact
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and expert discovery. Defendant alleges that Plaintiffs’ discovery requests did not
mention media sales. Defendant also alleges that media is not sold in conjunction with
the HYPER products. Consequently, the fact issue has been created of whether such
media sales are “convoyed” sales. Given the objections and issues raised by both
Plaintiffs and Defendant, the Court concludes that fact issues remain that go to issues of
both credibility and foundation.
7.

Plaintiffs’ Motion in Limine #8 to Exclude Corning Testimony Regarding

Cell Culture Media Sales (Doc. No. [691]) is provisionally DENIED. This evidence is
presumptively admissible as Plaintiffs’ objection goes to weight and not admissibility.
Moreover, this testimony survives the Court’s Article 4 and Article 7 analysis.
8.

Plaintiffs’ Motion in Limine #9 to Preclude Corning from Addressing

Plaintiffs’ Voluntary Dismissal of Patent Infringement Claims and Unpled Inequitable
Conduct Defense (Doc. No. [692]) is provisionally GRANTED. This evidence is
presumptively inadmissible pursuant to the Court’s Article 4 analysis, including
Rule 403. The Court reserves the right to revisit and address this issue if either party
“opens the door.”
9.

Plaintiffs’ Motion in Limine #10 to Exclude Certain Non-Public Documents

Produced by Corning After the Close of Fact Discovery (Doc. No. [693]) is DENIED as
premature. This is another situation where Plaintiffs have alleged discovery violations
and the Defendant has either denied the violations or indicated the information has been
with Plaintiffs for almost six years. There is a specific issue relating to a 68-page
notebook prepared by Defendant’s employee David Kenney. Consistent with its ruling,
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the Court reserves the right to address any issue related to this document or other
documents alleged to be non-public documents based upon testimony at trial.
10.

Plaintiffs’ Motion in Limine #11 to Exclude Evidence Related to a

Microcassette Recording (Doc. No. [694]) is DEFERRED until such time as the Court
has listened to and reviewed the recording. The Court will then make a decision on
Plaintiffs’ motion.
11.

Plaintiffs’ Motion in Limine #12 Exclude Evidence and Testimony

Regarding United States Patent Office Interference Proceeding No. 106,060 (Doc.
No. [695]) is provisionally GRANTED. This evidence is presumptively inadmissible
pursuant to the Court’s Article 4 analysis, including Rule 403. The Court reserves the
right to revisit and address this issue if either party “opens the door.” In light of the
Defendant’s response to Plaintiffs’ Motion in Limine #12, the Court anticipates this issue
coming up when Mr. Wilson testifies, depending on the opinions that he offers and in the
event his testimony is alleged to be contrary to either his testimony during the
Interference proceeding or with the position taken by the United States Patents Office.
12.

Plaintiffs’ Motion in Limine #13 to Exclude Testimony as to the Date of

COR008164-72, Pursuant to Federal Rules of Evidence 602 and 901 and Federal Rules of
Civil Procedure 37(C)(1) (Doc. No. [696]) is DENIED. Assuming proper foundation
being laid and subject to objections at trial, this evidence survives the Court’s Article 4
analysis.
13.

Plaintiffs’ Motion in Limine #14 to Exclude Corning’s Supplementation

Consisting of Previously Unproduced Sales, Cost, and Profit Information (Doc.
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No. [697]) is DENIED AS MOOT in light of the Court’s ruling on Corning’s Motions in
Limine Nos. 10 & 14.
14.

Plaintiffs’ Motion in Limine #15 to Exclude the First and Second

Supplemental Reports of Defendant Corning, Inc.’s Damages Expert, Frances M.
McCloskey (Doc. No. [698]) is DENIED. While the court acknowledges the rebuttal
report deadline issue raised by Plaintiffs along with new opinions and asserted new
methodology, the Court finds that these issues go to the weight and credibility to be given
to the evidence assuming that proper foundation is established for the admissibility of the
opinions of Frances L. McCloskey.
15.

Plaintiffs’ Motion in Limine #16 to Exclude the Supplemental Expert

Reports of Charles Crespi and Eric Simon (Doc. No. [699]) is DENIED. Given the
allegations of both Plaintiffs and Defendant, the Court views these issues as fact issues
with respect to the relationship of the ’044 Patent, the alleged trade secrets and
confidential information Plaintiffs have identified as a basis for its claims in the case.
Consequently, especially given the fact that it is a Court trial, these issues will likely go
to the weight to be given to the evidence rather than its admissibility and outright
exclusion subject to objections being made and Rule 104 offers of proof depending on the
direct and cross-examination of witnesses whether called by Plaintiffs or Defendant.
16.

Corning’s Motion in Limine #1 (to exclude evidence of trade secrets and/or

misappropriation; or, at a minimum, to limit any references to and evidence of alleged
“trade secrets” or misappropriation to those allowed by this Court’s prior summary
judgement rulings (Doc. Nos. 388, 461)) (Doc. No. [728]) is GRANTED IN PART
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AND DENIED IN PART as follows: In the context of the Court’s prior rulings (Doc. at
388 at 22-26; Doc. at 461 at 4 n.4) and consistent with the Court’s analysis of Article 4 of
the Federal Rules of Evidence, Plaintiffs’ trade secret evidence and arguments regarding
combinations, are limited to those asserted within Wilson’s ’651 and ’814 applications
and identified in Interrogatory No. 1. Furthermore, the Court will require the parties to
meet and confer and for Plaintiffs to reduce the number of alleged trade secret
combinations they wish to try. The Court reserves the right of each party to address that
issue before the Court in a Rule 104 offer of proof.
17.

Corning’s Motion in Limine #2 (to exclude evidence of and references to

disclosures that were never marked “confidential”) (Doc. No. [728]) is provisionally
GRANTED. This evidence is presumptively inadmissible pursuant to the Court’s
Article 4 analysis, including Rule 403.
18.

Corning’s Motion in Limine #3 (to exclude evidence of and arguments

regarding uses of information permitted by the CDA attached to Plaintiffs’ summary
judgment briefing (Doc. No. 314, Young Decl. Exs. 3 (testimony cited), 4, 8, 10, 13-17,
19-21, 23-27, 29-30, 31 (testimony cited), 35-41, 44-47, 49-50, 52-53) (Doc. No. [728])
is provisionally DENIED. Subject to proper foundation being laid, this evidence is
presumptively admissible pursuant to the Court’s Article 4 analysis, including Rule 403.
19.

Corning’s Motion in Limine #4 (to exclude evidence of and arguments

relating to alleged contract breaches not pleaded or inconsistent with pleaded allegations)
(Doc. No. [728]) is provisionally GRANTED. This evidence is presumptively
inadmissible pursuant to the Court’s Article 4 analysis, including Rule 403. In light of
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the Court’s earlier ruling in Doc. No. 461, p. 34, in the event there are objections to the
scope or nature of the testimony of Mr. Wilson, the Court will address those issues at that
time during the trial including a Rule 104 offer of proof by either Plaintiffs or Defendant.
20.

Corning’s Motion in Limine # 5 (to exclude testimony regarding promises

to commercialize) (Doc. No. [728]) is provisionally GRANTED. This evidence is
presumptively inadmissible pursuant to the Court’s Article 4 analysis, including
Rule 403.
21.

Corning’s Motion in Limine #6 (to exclude evidence of and arguments that

would relitigate the final judgment of the Patent Trial & Appeal Board or its finding that
the Toner patent teaches multi-level static cell-culturing devices using gas-permeable
membranes) (Doc. No. [728]) is provisionally GRANTED. This evidence is
presumptively inadmissible pursuant to the Court’s Article 4 analysis, including
Rule 403.
22.

Corning’s Motion in Limine #7 (to exclude extended testimony of John R.

Wilson’s other business ventures) (Doc. No. [728]) is provisionally GRANTED. This
evidence is presumptively inadmissible pursuant to the Court’s Article 4 analysis,
including Rule 403. However, given the Court’s earlier ruling (Doc. No. 461 at
pp. 36-37, the Court will consider a Rule 104 offer of proof from Plaintiffs’ counsel
addressing the admissibility of Wilson’s testimony involving a discussion of his G-Rex
production as part of establishing his credentials. (See Doc. No. 461 at 37 with respect
to the Court’s ruling on this issue.)

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23.

Corning’s Motion in Limine #8 (to exclude evidence or testimony of

impressions or testing of the “Vertical Bag” (later commercialized by Wilson Wolf as the
G-Rex)) (Doc. No. [728]) is provisionally DENIED. Subject to proper foundation being
laid, this evidence is presumptively admissible pursuant to the Court’s Article 4 analysis,
including Rule 403. Assuming proper foundation is established, this issue goes to the
weight the Court should afford, if any, to the testimony, not its admissibility.
24.

Corning’s Motion in Limine #9 (to exclude evidence of Corning’s estimated

profits over the lifespan of its patents because such a theory is preempted) (Doc.
No. [739]) is provisionally DENIED, consistent with the Court’s prior ruling (Doc.
No. 461 pp. 22-30) and subject to proper foundation being laid, this evidence shall be
presumptively admissible pursuant to the Court’s Article 4 and Article 7 analysis.
25.

Corning’s Motion in Limine #10 (to exclude evidence of remedies not

temporally limited as required by law, including remedies beyond a five-year restriction
period and any remedies seeking disgorgement of unrealized gains) (Doc. No. [739]) is
DENIED. Consistent with the Court’s earlier analysis (Doc. 461 at 22-30) subject to
proper foundation being laid, this evidence is presumptively admissible pursuant to the
Court’s Article 4 and Article 7 analysis. Once all evidence has been submitted to the
Court at trial, if there remains an issue about the proper measure of damages, the Court
will let counsel address that issue at that time.
26.

Corning’s Motion in Limine #11 (to preclude Wilson Wolf from offering

evidence of Corning’s profits as a remedy for breach of contract) (Doc. No. [739]) is
provisionally DENIED to the extent plaintiff is seeking unjust enrichment and
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compensatory damages for trade secret misappropriation and breach of contract.
Consistent with the Court’s earlier ruling (Doc. No. 461 at 22), subject to proper
foundation being laid, this evidence is presumptively admissible pursuant to the Court’s
Article 4 and Article 7 analysis.
27.

Corning’s Motion in Limine #12 (to exclude evidence of profits of media

sales) (Doc. No. [739]) is provisionally GRANTED. This evidence is presumptively
inadmissible pursuant to the Court’s Article 4 analysis, including Rule 403.
28.

Corning’s Motion in Limine #13 (to exclude references to hypothetical

contracts) (Doc. No. [739]) is GRANTED.
29.

Corning’s Motion in Limine #14 (to exclude remedies not disclosed in

discovery) (Doc. No. [739]) is GRANTED. This evidence is inadmissible pursuant to
the Court’s Article 4 analysis, including Rule 403.
30.

Corning’s Motion in Limine #15 (to exclude John Wilson’s testimony

regarding oral conversations because plaintiffs destroyed his recordings of those
conversations) (Doc. No. [747]) is provisionally DENIED. Subject to proper foundation
being laid, this evidence is presumptively admissible pursuant to the Court’s Article 4
analysis, including Rule 403. However, based upon the testimony presented during the
trial including the direct and cross-examination of John Wilson, the Court reserves the
right to draw adverse inferences where warranted.
31.

Corning’s Motion in Limine #16 (to preclude references to “inventorship”

claims that the parties agree are beyond the issues for the jury) (Doc. No. [747]). It is the
Court’s understanding that now that this matter is proceeding to a trial before the Court
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and not a jury, that this issue will be presented to the Court. In the event either party
wants to be heard by way of an additional Rule 104 offer of proof, the Court will take this
up at the time of trial or prior to trial.
32.

Corning’s Motion in Limine #17 (to exclude references to John Wilson as

the Plaintiff for the inventorship claims) (Doc. No. [747]) is provisionally DENIED.
Subject to proper foundation being laid, this evidence is presumptively admissible
pursuant to the Court’s Article 4 analysis, including Rule 403.
33.

Corning’s Motion in Limine #18 (to exclude improper opening statement

and arguments of counsel) (Doc. No. [747]) is provisionally DENIED, given that this
will be a Court trial, and subject to any objections respective counsel make during
opening statements.
34.

Corning’s Motion in Limine #19 (to preclude argument and evidence of

Corning’s size and wealth) (Doc. No. [747]) is provisionally DENIED. Subject to
proper foundation being laid, this evidence is presumptively admissible pursuant to the
Court’s Article 4 analysis, including Rule 403.
35.

Corning’s Motion in Limine #20 (to preclude argument and evidence about

discovery disputes) (Doc. No. [747]) is provisionally DENIED. Given the number of
arguments by both parties involving asserted discovery violations, the Court will evaluate
such disputes as they arise and will reserve the right to draw adverse inferences where
appropriate.
Dated: July 21, 2022

s/Donovan W. Frank
DONOVAN W. FRANK
United States District Judge
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