ABT Systems, LLC et al v. Emerson Climate Technologies, Inc. et al

Filing 429

MEMORANDUM AND ORDER that the parties' Motions in Limine rulings are as follows Document 390 is DENIED as moot,Documents 393 &396 are DENIED, Document 398 is DENIED, Document 400 is DENIED, Document 303 is DENIED, Document 405 is GRANTED IN PART AND DENIED IN PART See Order for Complete details. Signed by District Judge Audrey G. Fleissig on 2/7/13. (JWJ)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

ABT SYSTEMS, LLC, et al.,

)
)
Plaintiffs / Counterclaim Defendants, )
)
vs.
)
)
EMERSON ELECTRIC CO.,
)
)
Defendant / Counterclaim Plaintiff. )

Case No. 4:11CV00374 AGF

MEMORANDUM AND ORDER
Following a hearing on the record on February 6, 2013, on the parties’ pending
motions, and as elaborated upon by the Court at the hearing,
IT IS HEREBY ORDERED that Plaintiffs’ motion in limine # 1 to exclude
the testimony of Emerson’s expert James Carmichael and Plaintiffs’ expert Thomas
Scavone on the issue of Plaintiffs’ inequitable conduct is DENIED as moot. (Doc. No.
390.) The parties agreed to submit this testimony, likely in written form, to the Court.
IT IS FURTHER ORDERED that Plaintiffs’ motions in limine # 2 and #3 to
exclude a 2007 survey conducted by Emerson’s expert John Sartain, Mr. Sartain’s opinion
that the infringing feature of Emerson thermostats is not a feature that customers care
about, documents showing a 2005 release date of Honeywell’s PC8900 thermostat, the
declaration of James Murray, a sample Honeywell PC8900 thermostat, and Honeywell’s
July 20, 1995 Technical Training Script for its PC8900 thermostat are DENIED, with the

following provisos: Emerson will be required at trial to lay a proper foundation to Mr.
Sartain’s above-noted opinion; and Emerson shall arrange for Plaintiffs to take a brief
deposition of David Stoner. (Doc. No. 393 & No. 396.)1
IT IS FURTHER ORDERED that Plaintiffs’ motion in limine # 4 to exclude
new references to prior art is DENIED, with the provisos that the references may be used
only for impeachment purposes; and that Emerson will alert the Court at trial before using
these references. (Doc. No. 398.)
IT IS FURTHER ORDERED that Plaintiffs’ motion in limine # 5 to exclude
the inequitable conduct defenses related to government rights and improper maintenance
fees is DENIED. (Doc. No. 400.)
IT IS FURTHER ORDERED that Plaintiffs’ motion in limine # 6 to exclude
a laches defense is DENIED. (Doc. No. 403.)
IT IS FURTHER ORDERED that Defendant’s motion in limine (Doc. No.
405) is GRANTED in part and DENIED in part as follows:
I. Motion to exclude customer product reviews appearing on the internet to establish
actual use of the infringing feature of Emerson’s accused products, on hearsay grounds, is
DENIED with respect to customer comments, provided that Plaintiffs lay a proper
foundation and the comments are not offered for their truth of the matters asserted.
Emerson may request a limiting instruction as to the use of these comments only to show
customer use. Plaintiffs may seek permission at trial to use the comments for
impeachment purposes, depending upon the evidence presented by Emerson. The motion
is GRANTED with respect to introduction of “sorting” information to show popularity of

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Plaintiffs withdrew motion in limine # 3 to the extent that it seeks preclusion of
an Emerson wholesale Price Schedule.
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the infringing feature.
II. Motion to preclude Mr. Rudd’s testimony and journal entries about what was said or
not said by Honeywell representatives regarding the Honeywell PC8900 in conversations
with Mr. Rudd in 1995 and 1997 is GRANTED, as this evidence would be inadmissable
hearsay. Based on the evidence presented, the Court finds that Mr. Rudd’s notes of his
conversations does not qualify as a business records. The failure of the Honeywell
representatives to mention the Honeywell PC8900 to Mr. Rudd cannot be offered to prove
that it was not on the market at the time. As offered by Plaintiffs, this is assertive
conduct, offered for the truth, and is thus also inadmissible hearsay. The cases cited by
Plaintiffs are inapposite.
III. Motion to exclude expert testimony by different experts on the issues of infringement
is DENIED as moot, and is DENIED with respect to expert testimony on the issues of
invalidity and inequitable conduct, provided that duplicative testimony is not offered by
different experts.
IV. Motion to exclude testimony of Plaintiffs’ expert Joseph Lstiburek on the issue of
obviousness shall be RESERVED pending the Court’s voir dire of Mr. Lstiburek outside
the hearing of the jury with regard to his background and the basis of his opinions.
V. Motion to preclude Plaintiffs from claiming that the technology of the Rudd patents is
“common” and is “taking over the industry” is DENIED, with the understanding that
Plaintiffs will not use those specific or similarly-misleading terms.
VI. Motion to exclude expert testimony not disclosed in expert reports is WITHDRAWN
by the parties.
VII. Motion to exclude testimony by Plaintiffs’ validity expert(s) from testifying on the
lack of enablement in certain prior art is WITHDRAWN by the parties.
VIII. Motion to exclude expert testimony of Plaintiffs’ computer forensic expert Nicholas
Burton is DENIED.
IX. Motion to exclude testimony of Mr. Rudd as an expert on the issue of inequitable
conduct is DENIED.
X. Motion to exclude ABT’s evidence of substantial marking compliance to show notice
shall be dealt with by separate Order following the submission of further information by
the Plaintiffs.

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XI. Motion to exclude evidence related to Emerson’s license with Hunter Fan is
GRANTED on the bases argued by Emerson, subject to Emerson providing evidence that
the license was the result of threatened litigation.
XII. Motion to exclude evidence regarding the settlements of former Defendants is
GRANTED.
XIII. Motion to exclude evidence of the royalty rates set in licenses entered into to settle
litigation is WITHDRAWN by the parties.
XIV. Motion to preclude evidence related to Bart Toth’s knowledge of the Rudd patents
based on the citation of those patents in one of Mr. Toth’s patents is DENIED. Plaintiffs,
however, will not be permitted to impute Mr. Toth’s knowledge to Emerson, absent
proper evidence.
XV. Motion to preclude introduction of evidence regarding former Defendant Braeburn’s
attempt to design around the Rudd patents is WITHDRAWN by the parties.
XVI. Motion to exclude reference to Emerson’s failure to obtain a written opinion of
Counsel with respect to infringement is WITHDRAWN by the parties.
XVII. Motion to prevent the admission of evidence or testimony regarding subsequent
remedial measures to show an admission of infringement is GRANTED, except to the
extent that Emerson opens the door to such evidence by presenting its own evidence of
the reasons it took the remedial measures.
XVIII. Motion to exclude evidence of alleged animosity between Mr. Rudd and Max
Sherman is DENIED, with the proviso that such evidence will be limited to the fact of
the lawsuit between these individuals and their professional disagreements.
XIX. Motion to exclude evidence of Emerson’s profits and revenue related to anything
other than the accused products is WITHDRAWN by the parties.
XX. Motion to exclude any insinuation of an improper motive for amendment of
discovery responses by Emerson is GRANTED in part and DENIED in part. Plaintiffs
may offer evidence of changes in the discovery responses, but may not impute improper
attorney complicity in any changes.
XXI. Motion to exclude testimony by Plaintiffs’ expert(s) on invalidity related to teaching
away is WITHDRAWN by the parties.

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XXII. Motion to limit Plaintiffs’ presentation of evidence in their case-in-chief on issues
in which Emerson has the burden of proof shall be ruled upon by separate Order
following further discussion with the parties.
XXIII. Motion to exclude reference to the fact of reexamination of the Rudd patents is
GRANTED, based on the parties’ agreement discussed at the hearing.

________________________________
AUDREY G. FLEISSIG
UNITED STATES DISTRICT JUDGE
Dated this 7th day of February, 2013.

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