Composite Resources Inc v. Recon Medical LLC

Filing 223

ORDERED that CRI's consolidated motions in limine (ECF No. 201 ) are granted in part, and denied in part, as described herein. It is further ordered that Recon's consolidated motions in limine (ECF No. 202 ) are granted in part, and denied in part, as described herein. Signed by Chief Judge Miranda M. Du on 11/22/2021. (Copies have been distributed pursuant to the NEF - DRM)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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***

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COMPOSITE RESOURCES INC.,

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Plaintiff and Counter Defendant,

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Case No. 2:17-cv-01755-MMD-VCF
ORDER

v.
RECON MEDICAL LLC,

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Defendant and Counter Claimant.

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I.

SUMMARY

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This is now just a patent case about tourniquets used to stop the flow of blood to a

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body part when that body part is severely injured where Plaintiff and Counter Defendant

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Composite Resources, Inc. (“CRI”) seeks only an injunction preventing Defendant and

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Counter Claimant Recon Medical LLC from selling its allegedly infringing tourniquets.

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(ECF No. 210.) Before the Court are CRI and Recon’s consolidated motions in limine.1

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(ECF Nos. 201, 202.) As further explained below, the Court will grant in part, and deny in

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part, both motions.

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II.

LEGAL STANDARD

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A motion in limine is a procedural mechanism to limit testimony or evidence in a

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particular area in advance of trial. See U.S. v. Heller, 551 F.3d 1108, 1111-12 (9th Cir.

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2009). It is a preliminary motion whose outcome lies entirely within the discretion of the

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Court. See Luce v. U.S., 469 U.S. 38, 41-42 (1984). To exclude evidence on a motion in

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limine, the evidence must be “inadmissible on all potential grounds.” See, e.g., Ind. Ins.

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Co. v. Gen. Elec. Co., 326 F. Supp. 2d 844, 846 (N.D. Ohio 2004). “Unless evidence meets

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parties filed responses. (ECF Nos. 212, 214.)

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this high standard, evidentiary rulings should be deferred until trial so that questions of

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foundation, relevancy and potential prejudice may be resolved in proper context.”

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Hawthorne Partners v. AT & T Tech., Inc., 831 F. Supp. 1398, 1400 (N.D. Ill. 1993). This

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is because although rulings on motions in limine may save “time, cost, effort and

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preparation, a court is almost always better situated during the actual trial to assess the

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value and utility of evidence.” Wilkins v. Kmart Corp., 487 F. Supp. 2d 1216, 1218 (D. Kan.

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2007).

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In limine rulings are provisional. Such “rulings are not binding on the trial judge . . .

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[who] may always change h[er] mind during the course of a trial.” Ohler v. U.S., 529 U.S.

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753, 758 n.3 (2000). “Denial of a motion in limine does not necessarily mean that all

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evidence contemplated by the motion will be admitted at trial.” Ind. Ins. Co., 326 F. Supp.

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2d at 846. “Denial merely means that without the context of trial, the court is unable to

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determine whether the evidence in question should be excluded.” Id.

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Evidence is relevant if “it has any tendency to make a fact more or less probable

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than it would be without the evidence” and “the fact is of consequence in determining the

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action.” Fed. R. Evid. 401. Only relevant evidence is admissible. See Fed. R. Evid. 402.

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Relevant evidence may still be inadmissible “if its probative value is substantially

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outweighed by a danger of . . . unfair prejudice, confusing the issues, misleading the jury,

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undue delay, wasting time, or needlessly presenting cumulative evidence.” Fed. R. Evid.

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403. “Unfairly prejudicial” evidence is that which has “an undue tendency to suggest

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decision on an improper basis, commonly, though not necessarily, an emotional one.” U.S.

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v. Gonzalez-Flores, 418 F.3d 1093, 1098 (9th Cir. 2005) (quoting Old Chief v. U.S., 519

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U.S. 172, 180 (1997)).

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III.

DISCUSSION
The Court first addresses CRI’s consolidated motions in limine, and then Recon’s.

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A. CRI’s Motion (ECF No. 201)

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In its first motion in limine, CRI asks the Court to exclude all evidence and testimony

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about Ted Westmoreland, including the testimony of him and his wife Amanda. (ECF No.

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201 at 3-9.) Ted is the purported unnamed co-inventor on the asserted patents, who Mark

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Esposito left off the patents even though he allegedly helped Mark develop the tourniquets,

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and Ted and Amanda sold tourniquets before the patents were filed. Recon wants to use

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the Westmorelands’ testimony to show that the patents were procured through inequitable

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conduct and/or do not reflect novel inventions. CRI argues all evidence about Ted

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Westmoreland should be excluded along with Recon’s trial exhibits 1-29 because Recon

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has not provided other corroborating evidence showing that Ted was involved in the

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invention, or he helped Mark invent an invalidating prior art tourniquet when he says he

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did. Recon counters that it has proffered sufficient evidence of corroboration and points to

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some of the specific exhibits CRI challenges in this motion in limine as showing

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corroboration. (ECF No. 214 at 5-10.)

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The Court agrees with Recon. The challenged exhibits are proffered to corroborate

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the Westmorelands’ testimony, so CRI’s proffered caselaw to the effect that an inventor

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cannot testify to an invention date without any corroborating evidence does not apply. In

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addition, the Westmorelands are on Recon’s witness list (ECF No. 215 at 2), so CRI could

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cross examine them to elicit testimony permitting them similar arguments in closing that it

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raises in its first motion in limine, which is preferable to barring the Westmorelands’

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testimony now because evidence is only properly excluded on a motion in limine if it is

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inadmissible on all possible grounds. Moreover, the Court does not have copies of the

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exhibits CRI is challenging—because CRI did not provide them—so the Court cannot

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evaluate CRI’s arguments about each individual piece of evidence. This motion is

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accordingly denied without prejudice.

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In its second motion in limine, CRI asks the Court to exclude physical exhibits and

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evidence of alleged versions of early CAT tourniquets. (ECF No. 201 at 9-12.) Recon

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counters that, as to the physical exhibits, there is deposition testimony establishing that

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the exhibits are what Recon claims they are, and there is no requirement that an exhibit

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must be authenticated pretrial in a deposition to be admissible at trial. (ECF No. 214 at

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10-14.) The Court again agrees with Recon. Recon can attempt to admit the physical

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exhibits at trial. Further, this motion in limine also argues for the exclusion of particular

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exhibits that the Court does not have because CRI did not submit copies of them along

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with its motion, so the Court denies this motion in limine without prejudice to the extent

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CRI seeks exclusion of particular exhibits. And in sum, the Court denies CRI’s second

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motion in limine.

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In CRI’s third motion in limine, CRI asks the Court to preclude Recon from arguing

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at trial that the asserted patents are invalid as indefinite because the claim language mixes

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apparatus and method steps. (ECF No. 201 at 12-13.) Recon counters that it may still

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argue indefiniteness at trial because the Court denied its prior motion for summary

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judgment rather than affirmatively granting a motion filed by CRI declaring that the

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asserted claims are not indefinite. (ECF No. 214 at 14.) While the Court agrees with Recon

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to a point, the Court will nonetheless grant this motion in limine because the Court explicitly

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rejected Recon’s argument that the asserted patents are invalid as indefinite because the

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claim language mixes apparatus and method steps in the orders docketed at ECF Nos.

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152 at 10-14, and 159 at 2-3. Thus, the Court grants CRI’s third motion in limine only to

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the extent necessary to make clear that Recon may not argue that the asserted patents

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are invalid as indefinite because the claim language mixes apparatus and method steps

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at trial.

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In CRI’s fourth motion in limine, CRI asks the Court to exclude evidence regarding

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the quality of both CRI’s product that allegedly embodies the asserted claims and Recon’s

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allegedly infringing product—for example, seeking to admit evidence that Recon’s

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tourniquet is better-made than CRI’s tourniquet—because such evidence is irrelevant to

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patent infringement and prejudicial. (ECF No. 201 at 13-14.) And CRI again asks the Court

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to exclude two exhibits that CRI did not provide copies of along with its motion. (Id.)

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Recon counters that the superior quality of Recon’s products is relevant to the

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public interest prong of the test governing whether CRI is entitled to a permanent

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injunction. Said otherwise, Recon argues the public interest may be harmed if it is ordered

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to stop selling its products, because Recon argues they are better than CRI’s products,

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and CRI may not be able to meet market demand for these potentially lifesaving first aid

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products if Recon is not allowed to sell its competing products. (ECF No. 214 at 15-16.)

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The Court again agrees with Recon. Evidence about the relative quality of the

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parties’ products may be relevant to the public interest prong, and the Court declines to

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exclude it pretrial. See Datascope Corp. v. Kontron Inc., 786 F.2d 398, 401 (Fed. Cir.

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1986) (affirming on abuse of discretion review the district court’s decision not to issue a

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preliminary injunction because the defendant “has also made some showing that the

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public will be harmed by an injunction in that some physicians prefer defendant’s” product).

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And, as previously noted as to the first few motions in limine, the Court cannot rule on the

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specific exhibits CRI challenges in this motion because CRI did not provide the Court with

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copies of them along with its motion. Thus, the Court denies CRI’s fourth motion in limine.

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In CRI’s fifth through 17th motions in limine, CRI also seeks the exclusion of specific

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exhibits that it did not provide the Court with copies of along with its motion. (ECF No. 201

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at 14-19.) The Court denies all of these motions in limine without prejudice to CRI objecting

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to the admissibility of these exhibits at trial because the Court cannot adequately assess

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CRI’s arguments on them. Moreover, some of these motions in limine are moot because

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Recon responds it does not intend to offer certain challenged pieces of evidence at trial.

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This reminds the Court that CRI did not include a declaration stating that it met and

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conferred with Recon prior to filing its consolidated motions in limine in its consolidated

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motion as required under LR 16-3(a). The Court ordered CRI to do this in ECF No. 179.

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The purpose of this requirement is to avoid filing motions on moot issues, like CRI

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apparently did here. The Court directs CRI to follow the Court’s orders, comply with the

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local rules, and work collaboratively with Recon’s counsel to the extent possible going

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forward, particularly to avoid bringing moot issues to the Court to adjudicate.

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In CRI’s 18th motion in limine, “CRI objects to the introduction of the deposition

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testimony offered by Recon (unless for impeachment) unless and until Recon

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demonstrates that the witness is unavailable as required by Fed. R. Civ. Pro. 32(a)(4)[,]”

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and then offers specific objections and counter-designations to Recon’s proposed

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deposition testimony. (ECF No. 201 at 19.) Recon opposes this motion in limine. (ECF No.

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214 at 20-21.) The Court denies CRI’s 18th motion in limine as moot because the parties

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subsequently submitted new deposition designations and objections. (ECF Nos. 213, 215,

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221, 222.) The Court will address those separately.

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B. Recon’s Motion (ECF No. 202)

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In Recon’s first motion in limine, Recon asks the Court to exclude all evidence from

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Matt Cuppelli regarding infringement of the ’807 Patent because he was not disclosed as

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an expert, though the deadline for expert disclosure has long passed, and, to the extent

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CRI offers him as a lay witness, his testimony should be excluded under Federal Rules of

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Evidence 602 and 701 because he has no personal knowledge of Recon’s manufacturing

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methods. (ECF No. 202 at 6-9.) CRI counters that Recon’s expert witness argument is

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beside the point because Mr. Cuppelli is not an expert witness, and the Court should not

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exclude him as a lay witness because he has inspected Recon’s tourniquets (except for

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Gen 4, which does not materially differ from the versions he did inspect) and therefore has

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personal knowledge of whether they must have been made using the process described

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in the ’807 patent. CRI further argues that Mr. Cuppelli does not need to have visited

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Recon’s vendor’s factory in China under any applicable law, especially considering the

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Court’s statement in the summary judgment order that “a reasonable person could

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determine how the allegedly infringing tourniquets were assembled from a visual

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inspection.” (ECF No. 212 at 3-6.)

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The Court agrees with CRI and therefore denies Recon’s first motion in limine. Even

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Recon appears to agree that Mr. Cuppelli can testify to facts perceived from his own

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senses, and Recon does not offer any caselaw to support its extrapolative argument that

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Mr. Cuppelli must have gone to China to see how Recon’s vendor makes Recon’s

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tourniquets. (ECF No. 202 at 7-8.) Mr. Cuppelli can testify to what he sees based on his

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inspection of Recon’s allegedly infringing tourniquets. Moreover, the Court agrees with

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CRI that Mr. Cuppelli did not need to separately review Recon’s Gen 4 tourniquet because

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the Court has ruled that CRI may argue at trial that Recon’s Gen 4 tourniquet also infringes

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the asserted claims and Recon’s witness testified that Gen 4 only differs from the previous

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generations in that includes a pen. (ECF No. 198-1 at 4.)

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In its second motion in limine, Recon asks the Court to exclude evidence of CRI’s

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contract or contracts with the military. (ECF No. 202 at 9.) CRI counters in pertinent part

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that this motion in limine is moot because CRI has dropped its damages claim and is now

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seeking injunctive relief on its patent infringement claim only in this case. (ECF No. 212 at

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6.) The Court agrees with CRI and denies Recon’s second motion in limine as moot.

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Recon’s third motion in limine asks the Court to preclude CRI from offering any

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evidence supporting an infringement theory under the doctrine of equivalents because

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CRI insufficiently disclosed that theory in its infringement contentions. (ECF No. 202 at 9-

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10.) CRI responds that it did not need to disclose that it was alleging infringement under

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the doctrine of equivalents because it is not a separate claim under Ferring B.V. v. Watson

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Lab’ys, Inc. - (FL), Case No. 3:11-CV-00481-RCJ, 2013 WL 2325111, at *2 (D. Nev. May

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28, 2013), or, alternatively, because it did disclose that it was alternatively pursuing a

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doctrine of equivalents infringement theory in ECF Nos. 132-1 at 21 and 134 at 15. (ECF

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No. 212 at 7.)

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The Court agrees with Recon and therefore grants its third motion in limine. CRI

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may not argue infringement at trial under the doctrine of equivalents. Under the current

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version of the Patent Local Rules, made effective after Ferring B.V. issued, CRI had to

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disclose, “[w]hether each limitation of each asserted claim is alleged to be literally present

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or present under the doctrine of equivalents in the Accused Instrumentality[.]” LPR 1-6(e).

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In the documents that the parties proffer, CRI did not do this. (See ECF Nos. 76-1 at 20,

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132-1 at 21 and 134 at 15.) Moreover, Recon proffers an amended set of infringement

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contentions that are more recent than the set that CRI proffers where CRI does not state

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that it is pursuing a doctrine of equivalents theory. (Compare ECF No. 132-1 at 21, 23

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(proffered by CRI and dated September 11, 2017) with ECF No. 76-1 at 20, 22 (proffered

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by Recon and dated March 7, 2018).) CRI therefore inadequately disclosed that it is

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pursuing a doctrine of equivalents theory under LPR 1-6(e), and the Court grants Recon’s

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third motion in limine for that reason.

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Recon’s fourth motion in limine essentially asks the Court to preclude CRI from

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accusing Recon’s Gen 4 tourniquet of infringing at trial. (ECF No. 202 at 10-13.) However,

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and as CRI points out (ECF No. 212 at 8-9), the Court has already ruled that CRI may

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accuse Recon’s Gen 4 tourniquet of infringement at trial (ECF Nos. 199, 210 at 2). Recon’s

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fourth motion in limine is accordingly denied.

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Recon’s fifth motion in limine asks that the Court’s summary judgment order (ECF

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No. 152) be excluded from introduction as evidence at trial because it is irrelevant and

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potentially prejudicial. (ECF No. 202 at 13-14.) CRI counters that the summary judgment

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order is relevant because the Court granted CRI summary judgment on its trademark and

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federal unfair competition claims therein, and Recon applies the wrong standard as to Fed.

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R. Evid. Rule 403, characterizing it as potentially prejudicial instead of more prejudicial

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than probative. (ECF No. 212 at 9-10.)

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The Court agrees with Recon. Indeed, CRI’s own argument in response to this

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motion in limine basically concedes that the summary judgment order is not relevant to

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the remaining patent claim it will pursue at trial. The fact that the Court already determined

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CRI prevailed on its trademark and federal unfair competition claims is not relevant to the

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only remaining claim in this case, seeking an injunction because of alleged patent

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infringement. And were the Court to allow CRI to introduce evidence that the Court found

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in CRI’s favor on its trademark and unfair competition claims, the jury may improperly infer

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that CRI is therefore entitled to prevail on its patent infringement claim. That would be a

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prejudicial error that would outweigh the nonexistent probative value of the fact that CRI

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prevailed on claims arising from distinct intellectual property rights at summary judgment.

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That said, and as previously noted, the parties may not relitigate issues that the Court

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decided in the summary judgment order. The Court is referring specifically to its finding

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that Recon may not argue that the asserted patents are invalid as indefinite because the

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claim language mixes apparatus and method steps at trial. Subject to that caveat, Recon’s

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fifth motion in limine is granted.

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Recon’s sixth and final motion in limine asks that the Court preclude all evidence

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and argument on the “planar transition area” limitation of claim 1 and the “elevation

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transition area” limitation of claim 9 of the ’253 Patent because CRI insufficiently disclosed

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specifically where each of these limitations can be found in Recon’s accused products.

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(ECF No. 202 at 14-17.) CRI counters that it sufficiently disclosed where these two

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limitations can be found in Recon’s accused products. (ECF No. 212 at 10-14 (relying in

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pertinent part on ECF No. 132-1 at 9-13, 32-33).) The Court agrees with CRI that it

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sufficiently disclosed where these two limitations can allegedly be found in Recon’s

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accused products. (See ECF No. 132-1 at 9-13, 32-33.) The Court accordingly denies

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Recon’s sixth motion in limine.

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IV.

CONCLUSION

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The Court notes that the parties made several arguments and cited to several cases

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not discussed above. The Court has reviewed these arguments and cases and determines

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that they do not warrant discussion as they do not affect the outcome of the motions before

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the Court.

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It is therefore ordered that CRI’s consolidated motions in limine (ECF No. 201) are
granted in part, and denied in part, as described herein.

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It is further ordered that Recon’s consolidated motions in limine (ECF No. 202) are

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granted in part, and denied in part, as described herein.

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DATED THIS 22nd Day of November 2021.

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MIRANDA M. DU
CHIEF UNITED STATES DISTRICT JUDGE

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