Solutran, Inc. v. U.S. Bancorp et al

Filing 291

MEMORANDUM OPINION AND ORDER: 1. Plaintiff's Motion in Limine No. 6 to require US Bank to update its financial information through the end of 2017 [Doc. No. 228 ] is DENIED AS MOOT. 2. Defendant U.S. Bank's Motion in Limine to Exclude Evidence and Argument Regarding Defendants' Infringement [Doc. No. 233 ] is GRANTED IN PART, DENIED IN PART as outlined herein. (Written Opinion) Signed by Judge Susan Richard Nelson on 2/23/2018. (SMD)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA

Solutran, Inc.,

Case No. 0:13-cv-02637 (SRN/BRT)

Plaintiff,
v.
U.S. Bancorp and Elavon, Inc.,
Defendants.
MEMORANDUM OPINION
AND ORDER
U.S. Bancorp and Elavon, Inc.,
Counter-claimants,
v.
Solutran, Inc.,
Counter-defendant.

David J. Wallace-Jackson, Robert J. Gilbertson, and Sybil Dunlop, Greene Espel PLLP,
222 South Ninth Street, Suite 2200, Minneapolis, Minnesota, for Plaintiff and Counterdefendant.
Ben D. Kappelman, Kenneth E. Levitt, Peter M. Lancaster, Dorsey & Whitney LLP, 50
South Sixth Street, Suite 1500, Minneapolis, Minnesota 55402, and J. Thomas Vitt, Jones
Day, 90 South Seventh Street, Suite 4950, Minneapolis, Minnesota 55402, for
Defendants and Counter-claimants.

SUSAN RICHARD NELSON, United States District Judge
Defendant U.S. Bank filed a Motion in Limine to Exclude Evidence and Argument
Regarding Defendants’ Infringement [Doc. No. 233] (“Mot.”). On November 27, 2017, the

Court issued an order granting Plaintiff’s Motion for Summary Judgment. (Order dated
Nov. 27, 2017 [Doc. No. 216].) The Court found as a matter of law that Defendants had
infringed upon Plaintiff’s United States Patent No. 8,311,945 (“’945 patent”). (Id., at 10.)
The case now proceeds to trial on the issue of damages, and on Defendants’ counterclaims
that the patent is invalid.
Defendant U.S. Bank has asked the Court to preclude Plaintiff from introducing
evidence that the Court ruled that Defendants’ products infringe the ‘945 patent. (Mot., at
1.) Defendant U.S. Bank argues that invalidity of the patent is at issue while infringement is
not, and that permitting Plaintiff to re-try infringement would mislead the jury and unduly
prejudice Defendants’ invalidity argument. (Id. at 1-2.) Plaintiff responds that it should be
permitted to advise the jury of the Court’s prior ruling, for narrative context and as
foundation for Plaintiff’s other arguments. (Solutran’s Resp. to Defs.’ Mot. in Lim. to
Exclude Evid. and Arg. Regarding Defs.’ Infringement [Doc. No. 256], at 3.)
Another court in the district recently considered this issue. In Bombadier Recreation
Prods., Inc. v. Artic Cat Inc., No. 12-cv-2706, 2017 WL 5256741 (D. Minn. Nov. 11, 2017),
the plaintiffs moved for authorization to disclose the fact that the court had found
infringement of one of the patents at issue. Chief Judge Tunheim granted the motion, but
cautioned the parties not to introduce the order finding infringement into evidence “or
discuss it in detail.” Id. at *3. The court also instructed the jury that “[t]he Court has
already decided that Artic Cat infringed the ‘847 Patent so you will not need to make that

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determination. You must still decide whether the ‘847 Patent is invalid.” Bombadier, No
12-cv-2706 [Doc. No. 1064] (Jury Instructions, at 14).)
The Court agrees with Chief Judge Tunheim’s approach in Bombadier. The jury
should be informed that the Court has already found that Defendants infringed the ‘945
patent, but Plaintiffs should not present evidence or argument beyond that disclosure, at the
risk of confusing the issues or causing prejudice to the Defendants. The Court’s jury
instructions will make it clear that, while the Court has found infringement, the jury must
still consider whether the ‘945 patent is invalid. This approach will best balance the
Plaintiff’s interest in presenting a coherent story to the jury with the Defendants’ interest in
minimizing misleading or prejudicial evidence.
Plaintiff has notified the Court that the parties have resolved the dispute underlying
their Motion in Limine No. 6 [Doc. No. 228]. The Court will deny that Motion as moot.
Based on the submissions and the entire file and proceedings herein, IT IS
HEREBY ORDERED that:
1. Plaintiff’s Motion in Limine No. 6 to require US Bank to update its financial
information through the end of 2017 [Doc. No. 228] is DENIED AS MOOT.
2. Defendant U.S. Bank’s Motion in Limine to Exclude Evidence and Argument
Regarding Defendants’ Infringement [Doc. No. 233] is GRANTED IN PART,
DENIED IN PART as outlined above.

Dated: February 23, 2018

s/Susan Richard Nelson
SUSAN RICHARD NELSON
United States District Judge

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