Plew v. Limited Brands,INC., et al

Filing 185

MEMORANDUM OPINION & ORDER re: 118 MOTION in Limine to Prevent Plaintiff from Calling Ms. Lori Greeley to Testify at Trial filed by Victoria's Secret Direct Brand Management, L.L.C., Intimate Brands, INC., Victoria's Secret Store s Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L.L.C., 122 MOTION in Limine to Prevent Plaintiff from Advancing Arguments at Trial Inconsistent with this Courts Claim Construc tion Order filed by Victoria's Secret Direct Brand Management, L.L.C., Intimate Brands, INC., Victoria's Secret Stores Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L. L.C., 108 MOTION in Limine filed by Katerina Plew, 164 MOTION in Limine to Prevent the Admission of Evidence Concerning Indemnification or Subsequent Remedial Measures to Show Wrongful Conduct filed by Victoria's Secret Direct Brand M anagement, L.L.C., Intimate Brands, INC., Victoria's Secret Stores Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L.L.C., 130 MOTION in Limine To Preclude (1) Plaintiffs Ex perts From Offering Any Testimony Outside The Scope Of Their Expert Reports, And (2) Plaintiff From Offering Any Testimony Inconsistent With The Expert Reports. MOTION in Limine To Preclude (1) Plaintiffs Experts From Offering Any Testimony O utside The Scope Of Their Expert Reports, And (2) Plaintiff From Offering Any Testimony Inconsistent With The Expert Reports filed by Victoria's Secret Direct Brand Management, L.L.C., Intimate Brands, INC., Victoria's Secret Stores Bra nd Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L.L.C., 114 MOTION in Limine to Prevent the Use of Pejorative Terms or Phrases at Trial filed by Victoria's Secret Direct Br and Management, L.L.C., Intimate Brands, INC.,, Victoria's Secret Stores Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L.L.C., 103 MOTION to Bifurcate Liability from Damag es and Willfulness filed by Victoria's Secret Direct Brand Management, L.L.C., Intimate Brands, INC., Victoria's Secret Stores Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret St ores, L.L.C., 126 SUPPLEMENTAL MOTION in Limine to Strike Expert Report and Exclude Trial Testimony of Plaintiffs Damages Expert Tomima Edmark filed by Victoria's Secret Direct Brand Management, L.L.C., Intimate Brands, INC., Victoria&# 039;s Secret Stores Brand Management, INC., Limited Brands Store Operations, INC., Limited Brands,INC., Victoria's Secret Stores, L.L.C. For the reasons state above, Plaintiffs motion in limine is denied in full. Defendants' motion to pre vent the use of pejorative terms is granted. Defendants' motion to prevent Plaintiff from calling Ms. Greeley is granted. Defendants' motion to prevent Plaintiff from advancing arguments at trial inconsistent with the Court's claim c onstruction order is denied. Defendants' motion to strike the expert report and exclude the expert testimony of Ms. Edmark is denied. Defendants' motion to preclude Plaintiff and her experts from offering testimony inconsistent with or out side the expert reports is granted in part, and denied in part. Defendants' motion to prevent the admission of evidence concerning indemnification and subsequent remedial measures is granted. Defendants' motion to bifurcate the trial on lia bility from willfulness and damages issues is denied. This memorandum opinion resolves docket entries no. 103, 108, 114, 118, 122, 126, 130, and 164. The final pre-trial conference in this case is scheduled for February 23, 2012, at 10:30 a.m. ( Final Pretrial Conference set for 2/23/2012 at 10:30 AM before Judge Laura Taylor Swain.) (Signed by Judge Laura Taylor Swain on 2/6/2012) (mro) Modified on 2/6/2012 (mro).

IDJITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

----------------------------------------------------------)(
KATERINA PLEW,
Plaintiff,
No. 08 Civ. 3741 (LTS)(MHD)

-v-

LIMITED BRANDS, INC., INTIMATE
BRANDS, INC., LIMITED BRANDS
STORE OPERATIONS, INC., VICTORIA'S
SECRET STORES BRAND MANAGEMENT,
INC., VICTORIA'S SECRET DIRECT
BRAND MANAGEMENT, LLC AND
VICTORIA'S SECRET STORES, LLC,
Defendants.

----------------------------------------------------------x
MEMORANDUM OPINION AND ORDER

Plaintiff Katerina Plew ("Plew" or "Plaintiff') brings this action against Limited
Brands, Inc., Intimate Brands, Inc., Limited Brands Store Ope rations, Inc., Victoria's Secret Stores
Brand Management, Inc., Victoria's Secret Direct Brand Management, LLC and Victoria's Secret
Stores, LLC (collectively "Victoria's Secret" or "Defendants") alleging patent infringement.
Specifically, Plaintiff asserts that the Defendants' Very Sexy 100-Way Brassiere ("IOO-Way Bra")
infringes Plaintiff's U.S. Patent no. 6,733,362 (the "'362 patent"), which describes an adjustable
type of brassiere. To resolve certain evidentiary questions in advance of trial, Plaintiff has filed a
single motion in limine seeking two evidentiary rulings; Defendants have filed six separate motions
in limine seeking a total of twelve evidentiary rulings. In addition, Defendants have filed a motion
to bifurcate the trial ofliability issues from that of willfulness and damages. The Court has

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considered carefully all of the parties' submissions and arguments, and presumes familiarity with
the general factual background 0 f the parties' dispute. I Each motion is addressed below.
DISCUSSION

1.

Plaintiffs Motion In Limine
A.

Request to Exclude Evidence and Testimony Regarding Victoria's Secret's
Licensing Agreement with Pleasure State
Plaintiff has signaled her intent to rely on the Pleasure State license royalty as a

baseline for her calculation of damages. Plaintiff now seeks to bar Defendants from offering
evidence contesting the Pleasure State license's reliability as a comparator on the grounds that
Defendants stipulated, at a June 5, 2009, hearing, that they would not advance such an argument
and that, based on this stipulation, Judge Dolinger denied Plaintiffs request for discovery of
documents necessary to establish the license's reliability. Defendants do not address Plaintiffs
assertion ofprejudice; instead, they deny that they made a stipulation and reiterate their
contention that the Pleasure State license is irrelevant to calculating what a reasonable royalty
would have been for Plaintiff.
Defendants' attempt to recast their statements before Judge Dolinger as
something other than a stipulation is inconsistent with the record. At the June 5, 2009,
conference, Plaintiff sought a court order directing Defendants to produce correspondence
concerning the negotiations of Victoria's Secret's licensing agreement with Pleasure State.
Plaintiff clearly explained that she intended to use the Pleasure State license as a comparator to
calculate a reasonable royalty, and that the requested correspondence was necessary to answer

See the Court's Memorandum Opinion and Order of August 4, 2010. (ECF
docket entry no. 87).
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Defendants' anticipated objection that the Pleasure State license was not analogous to any
hypothetical agreement between Ms. Plew and Victoria's Secret. The following exchange
ensued:
THE COURT: Is the defendant going to be taking the position that this agreement, that
we are talking about, is not a reasonable comparator for the purpose of determining a

reasonable royalty?

MR. ZINNA: I am not sure what you mean by comparator, I'm sorry.

THE COURT: A piece of data that would guide and can appropriately guide the

determination of what a reasonable royalty should be in this case.

MR. ZINNA: We will not dispute that.
(Conference of June 5, 2009 Tr. 8:4-14). On the basis of this unambiguous exchange, Judge
Dolinger deemed the requested correspondence duplicative and denied Plaintiffs motion. Days
later, Defendants served the expert report of Dr. Patrick Kennedy, which advanced the very
argument Defendants had disclaimed: that the subject matter of the Pleasure State license was
"not comparable to the technology in Ms. Plew's patent," and that "the royalty amounts included
in the [Pleasure State license] cannot be used to calculate a hypothetical royalty" for Ms. Plew's
patent. (Expert Report of Dr. Patrick J. Kennedy ("Kennedy Report") at 11: 13-19.)
Defendants' volte-face, however, does not warrant exclusion. "Exclusion of
expert testimony is a drastic remedy" and is inappropriate where the movant could easily have
cured the prejudice by seeking more discovery. RMED Int'I, Inc. v. Sloan's Supermarkets, Inc.,
No. 94 Civ. 5587 (PKL), 2002 WL 31780188, at *3 (S.D.N.Y. Dec. 11,2002). Plaintiffhad
ample opportunity to request additional discovery after Defendants revealed that they would
challenge the relevance of the Pleasure State license. Dr. Kennedy's report was served a mere
five days after the conference before Judge Dolinger. It is telling that, rather than renew her

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discovery application after receiving the report, Plaintiff chose to wait more than two years
until the eve of trial

to plead unfairness. The Court will not reward Plaintiffs tactical choice

by excluding highly probative testimony.
Accordingly, Plaintiffs request is denied.
B.

Request to Exclude Testimony or Argument About Statutory Equivalents
Plaintiff seeks to bar Defendants from offering testimony or argument that the

100-Way Bra does not embody the statutory equivalents of the claims in the' 362 Patent.
Plaintiff argues that Defendants' infringement expert di d not discuss whether the 100-Way Bra
incorporates statutory equivalents to the "means plus function" claim terms and that the expert
is, accordingly, barred under Federal Rules of Civil Procedure 26(a)(2)(B) and 37(c)(l) from
offering such testimony at triaL Defendants contend that their expert responded to Plaintiff s
statutory equivalence arguments with respect to each element.
The Court has reviewed Defendants' expert report and concludes that the expert
opined to various degrees on statutory equivalence with respect to each element of the claim.
Expert Report of Joyce Baran at 16-22, attached as Ex. K to Pl.s' Mot. in Limine).
Accordingly, the request is denied.
II.

Defendants' Motions in Limine
A.

Motion to Prevent Use of Pejorative Terms or Phrases
Defendants move to prevent Plew from using pejorative terms or phrases at triaL

Specifically, Defendants contend that Plew is likely to repeat al1egations she has made in the
press that Victoria's Secret "stole" her bra. Courts may prohibit the use of pejorative terms
under Federal Rule of Evidence 403 "when such categorizations [are] inflammatory and
unnecessary to prove a claim." Aristocrat Leisure Ltd. v. Deutsche Bank Tmst Co. Ams., No. 04
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Civ. 100 14(PKL), 2009 WL 3111766, at *7 (S.D.N.Y. Sept. 28, 2009) (prohibiting use of the
term "tax haven"); A.LA. Holdings, S.A. v. Lehman Bros., No. 97 Civ. 4978(LMM), 2002 WL
31655287, at *2-3 (S.D.N.Y. Nov. 21,2002) (prohibiting use of the phrase "rat trading"). The
Court agrees that characterizing Victoria's Secret actions as "stealing" risks prejudicing the jury
and will not aid in its finding of facts. Accordingly, Defendants' motion is granted.
B.

Motion to Prevent Lori Greeley From Testifying
Defendants seek to prevent Plaintiff from calling Victoria's Secret's CEO, Lori

Greeley, to testify at trial. Defendants argue that Plaintiff has failed to show that Greeley
possesses unique information about the patent-in-suit, that Plaintiff failed to disclose her as a
potential witness in a timely fashion, and that Plaintiffs true purpose is harassment.
Courts must be mindful of the potential for harassment and disruption to business
affairs when highly-placed executives are forced to testify.

Six West Retail Acquisition v.

Sony Theatre Management Com., 203 F.R.D. 98,102 (S.D.N.Y. 2001). Where a plaintiff fails
to make any demonstration that the executive possesses "some unique knowledge of the issues in
the case, it may be appropriate to preclude a redundant [examination] of [a] highly-placed
executive." Id. (internal quotation marks omitted).
There is insufficient evidence in the record to persuade the Court that Greeley
possesses unique information relevant to this case. While several Victoria's Secret witnesses
stated in their depositions that Greeley was part of the division responsible for commercializing
the 100-Way Bra, none has provided any detail as to her role in that process. Plaintiff has
already deposed two senior executives with knowledge of the product, but has made no effort to
depose Greeley.
Accordingly, the Court will grant the motion, provided that Plaintiff may make an
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application, upon two business days' advance notice to the Court and opposing counsel, to call
Ms. Greeley as a witness. In any such application, Plaintiff must make a proffer sufficient to
demonstrate that Ms. Greeley has personal knowledge of matters relevant to this action and that
the probative value of her proposed testimony is not substantially outweighed by any potential
unfair prej udice, the risk of undue delay, waste of time, or the presentation of cumulative
evidence.
C.

Motion to Prevent Arguments Inconsistent with the Claim Construction Order
Defendants seek to preclude Plew from making arguments that Defendants

contend are inconsistent with the Court's April 2, 2009, claim construction order. "[M]atters of
claim construction, even those aided by expert testimony, are questions for the court." Marknlan
v. Westview Instruments, Inc., 517 U.S. 370, 387 (1996). Due to the risk ofjury confusion,
expert witnesses are not permitted to offer testimony that conflicts with the Court's construction
of the claim. Rentrop v. Spectranetics Corp., 514 F. Supp. 2d 497,505 (S.D.N.Y. 2007);
CytoLogix Corp. v. Ventana Med. Systems, Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005).
The dispute here centers on the construction of the word "hidden," which the
Court, pursuant to a stipulation, has defined as "concealed from sight." Claim 1 requires "a strip
of fabric loops extending along, and just below so as to be hidden by, the free upper edges of the
body-facing surfaces of the pair of torso bands and the free upper edges of the body-facing
surfaces of the pair of cups." The parties agree that the loops on the 100-Way Bra can be seen,
but Plew's expert intends to testify that they are not noticeable or recognizable as such

in other

words, that the loops are "camouflaged." Defendants contend that the two concepts are distinct
and incompatible, illustrating their point with various military and "Where's Waldo" analogies.
To paraphrase: a soldier crouched in a foxhole is "concealed from sight," whereas a soldier in
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camouflage

like Waldo in "Where's Waldo" - is visible to anyone who looks hard enough.

Plaintiff responds that Defendants are conflating "concealed from sight" with "invisible."
Before wading into this dispute, it is worth emphasizing that the claim
construction order provides that all the terms defined therein will be "construed according to
their plain and ordinary meaning." With that preface in mind, the Court finds that Plaintiff's
expert testimony that the loops are "camouflaged" is consistent with the claim construction
order. Defendants' fixation on the supposed paradox of something being simultaneously visible
and "concealed from sight" ignores how these words are used in ordinary speech to describe
perception. If an observer looked directly at a chameleon on a log yet discerned nothing but
moss and wood, it would perfectly good English to describe the reptile as "hidden" or
"concealed from sight." One could say that the chameleon is "concealed from sight" by the
resemblance between its skin tones and the background. Plaintiff's expert's contention

that the

loops are designed to blend in with the trim such that an observer would look upon them and
discern only trim - is no different.
Accordingly, Defendants' motion is denied.
D.

Motion to Strike Testimony and Expert Report ofTomima Edmark
Defendants move to exclude the expert report and testimony of Plainti ff' s

damages expert, Tomima Edmark, on the grounds that (1) she lacks the requisite experience and
knowledge to qualify as a patent damages expert, and (2) her methodology is inadequate. In
addition, Defendants move to strike Ms. Edmark's Supplemental Report, asserting that it is
untimely and an impermissible "sur-rebuttaL"
Federal Rule of Evidence 702 pelmits a "witness who is qualified as an expert by
knowledge, skill, experience, training, or education" to testify ifher "scientific, technical, or
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other specialized knowledge will help the trier of fact to understand the evidence or to detennine
a fact in issue," and if:
[1] the testimony is based on sufficient facts or data, [2] the testimony is the product of
reliable principles and methods, and [3] the witness has reliably applied the principles
and methods to the facts of the case.
Fed. R. Evid. 702 (2011). The Court exercises a "gatekeeping" function in connection with
expert testimony. See =-='-'-'-=-=="'-, 522 U.S. 136, 142 (1997); Daubert v. Merrell Dow Phann.,
Inc., 509 U.S. 579, 589 (1993). To this end, the trial judge must "ensur[e] that an expert's
testimony rests on a reliable foundation and is relevant to the task at hand." Kumho Tire Co. v.
Cannichael, 526 U.S. 137, 141 (1999). This gatekeeping obligation "applies not only to
testimony based on 'scientific' knowledge, but also to testimony based on 'technical' and 'other
specialized' knowledge." Id. at 141.
1.

Qualifications

As a threshold matter, the Court must first assess whether the witness has the
requisite qualifications. Courts in this Circuit have liberally construed expert qualification
requirements when assessing whether a witness can be deemed an expert under Rule 702.
Cary Oil Co., Inc. v. MG Refining & Marketing, Inc., No. 99 Civ. 1725(VM), 2003 WL
1878246, at *1 (S.D.N.Y. April 11, 2003); Sullivan v. Ford Motor Co., No. 97 Civ. 0593(RCC),
2000 WL 343777, at *4 (S.D.N.Y. Mar. 31,2000) ("One knowledgeable about a particular
subject need not be precisely infonned about all details of the issues raised in order to offer an
opinion."); Canino v. HRP, Inc., 105 F. Supp. 2d 21,27 (N.D.N.Y. 2000) ("liberality and
flexibility in evaluating qualifications should be the rule").
The Court finds Plaintiffs expert sufficiently qualified. Ms. Edmark has decades
of experience in the industry. She is the founder of the Andra Group, a parent company of two
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internet retail apparel websites, through which she sells bras and lingerie. As the chief executive
officer, she regularly meets with bra manufacturers to review products and she has initiated
many distribution arrangements with national and international distributors. She analyzes sales
trends, prices, and profitability of sales for her company's products. Defendants are correct that,
although Ms. Edmark has filed several patents, she has never licensed one. However, she is not
unacquainted with the licensing process, having licensed a trade name for TopsyTail®; nor is
she unfamiliar with the patent process, having filed for several herself. Defendants are free to
attack her inexperience in negotiating patent licenses in particular at trial, but whatever gaps
exist in her qualifications are not enough to justify excluding her testimony. See McCullock v.
H.B. Fuller Co., 61 F .3d 1038, 1044 (2d Cir. 1995) ("Disputes as to the strength of [an expert
witness's] credentials ... go to the weight, not the admissibility, of [her] testimony.").
2.

Methodology

Defendants attack the methodology of Ms. Edmark's first report on the grounds
that (1) she arrives at a reasonable royalty calculation by improperly assuming that Victoria's
Secret would have agreed to the same royalty rate as Ce Soir, d/b/a Fashion Farms (a third-party
with which Ms. Plew negotiated a license), and (2) the report fails to mention any of the factors
enumerated in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116
(S.D.N.Y. 1970); =~= Unisplay, S.A. v. American Electronic Sign Co., Inc., 69 F.3d 512,
517 n.7 (Fed. Cir. 1995) (recognizing that Georgia-Pacific contains the comprehensive list of
relevant factors in determining a reasonable royalty). However, Ms. Edmark's Supplemental
Report analyzes each of the Georgia-Pacific factors and explains why, in her opinion, Ms. Plew

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would have received the same royalty rate from Victoria's Secret. 2 Thus, if the Court finds that
the Supplemental Report is admissible, it need not decide whether the initial report's
methodology satisfied the requirements of Rule 702.
3.

Admissibility of the Supplemental Report

Plaintiff concedes that the Supplemental Report was served after the close of
expert discovery but argues that the delay was due to Defendants' refusal to afford Ms. Edmark
access to documents necessary to complete her report. Defendants respond that Ms. Edmark
could have discussed a majority of the George-Pacific factors before she received access to the
withheld documents, and that her failure to do so constitutes a violation of Rule 26(a)(2)(B)'s
command that an expert report contain "a complete statement of all opinions the witness will
express and the basis and reasons for them." Fed. R. Civ. P. 26(a)(2)(B)(i) (emphasis added). In
addition, Defendants argue that the Supplemental Report should be struck because it is sur­
rebuttal masquerading as a supplement.
Neither argument establishes a basis for excluding the report or testimony.
"Exclusion of expert testimony is a drastic remedy." See RMED Int't Inc. v. Sloan's
Supermarkets, Inc., No. 94 Civ. 5587(PKL), 2002 WL 31780188, at *3 (S.D.N.Y. Dec. 11,
2002) (internal citations and quotation marks omitted). Courts will not automatically resort to
exclusion for failure to strictly comply with Rule 26, especially where doing so would "frustrate
the Federal Rules' overarching objective of doing substantial justice to litigants." In re Kreta

To the extent that Defendants contend Ms. Edmark's claims here are speculative
or based on improper assumptions, Defendants are free to expose such flaws at
triaL See Daubert, 509 U.S. at 596 ("Vigorous cross-examination, presentation of
contrary evidence, and careful instruction on the burden of proof are the
traditional and appropriate means of attacking shaky but admissible evidence.").
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Shipping, S.A., 181 F.R.D. 273, 277 (S.D.N.Y. 1998). Thus, when determining whether to
exclude expert testimony, courts must consider (1) the prejudice suffered by the party against
whom the excluded witness would testify, (2) the availability of options, short of exclusion, to
cure the prejudice, (3) the impact of permitting (or excluding) the testimony on the orderly and
efficient trial of the case, and (4) bad faith or willfulness in failing to comply with the court's
order. Id. In general, absent prejudice and bad faith, courts will not resort to exclusion.
~

Johnson Electric North America, Inc. v. Mabuchi Motor America Corp., 77 F. Supp. 2d.

446,458 (S.D.N.Y. 1999) (Precluding evidence "that was not disclosed in discovery is a drastic
remedy and will apply only in situations where the failure to disclose represents flagrant bad
faith and callous disregard for the rules.").
Defendants have failed to identify any prejudice, nor have they demonstrated that
Plaintiff acted in bad faith. Defendants cannot claim that they were blind-sided by the
Supplemental Report: it was served prior to the close of fact discovery and depositions, and well
before the deadline for final pre-trial disclosures. Ms. Edmark's initial report clearly disclosed
that it was preliminary and that a second report would follow Defendants' production of
additional, responsive documents. Five days after the Supplemental Report was served,
Defendants deposed Ms. Edmark and had a full opportunity to question the Report's
conclusions. As for Defendants' argument that the Supplement Report is sur-rebuttal, only one
paragraph of the entire Supplemental Report references testimony by Defendants' experts and
Defendants have failed to show that this single paragraph prejudices them in any way.
Accordingly, Defendants' motion is denied.
Motion to Preclude Plaintiffs Expert From Offering Testimony Outside The
Scope of or Inconsistent With The Expert Report

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Defendants seek to preclude Ms. Plew from advancing a reasonable royalty
calculation higher than that advanced by Plaintiffs damages expert, Ms. Edmark. Ms. Plew
proffers that she will base her testimony on calculations in the Pleasure State license. However,
the license document was produced under an "Attorney's Eyes Only" confidentiality
designation. Ms. Plew cannot offer testimony based on the contents of a document that she is
not allowed to view. See Fed. R. Evid. 602 (A witness may testify to a matter only if evidence is
introduced sufficient to support a finding that the witness has personal knowledge of the
matter. ").
Accordingly, the request is granted.
Motion to Preclude Arguments about Potential Design-Around
Alternatives/Demand For Patented Features of the Bra/Secondary Indicia of Non-

Defendants move to preclude Plaintiff from (I) challenging the efficacy or value
of the potential design-around alternatives relied on by Defendants' damages expert, Dr.
Kennedy, (2) making any reference to consumer demand for the patented features of Victoria's
Secret's accused bra, and (3) making any arguments regarding secondary indicia of nonobviousness. Defendants contend that Plaintiffs experts failed to address any of those points.
Plaintiff replies that she should be permitted to offer layperson testimony as to each. The Court
grants each of Defendants' requests to the extent that they seek to bar Plaintiffs experts from
testifying. However, Plaintiff may offer her own testimony on these SUbjects. Plaintiff may also
cross-examine Defendants' witnesses about design-around, customer demand, and secondary
indicia of non-obviousness if the subjects are broached by those witnesses on direct. If Plaintiff
wishes to reference any of these topics in her opening, she must provide two business days'
advance notice to the Court and defense counsel, identifying the subject matter and foundation of
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the statement she plans to make.
Accordingly, the request is granted with the conditions and modifications set
forth above.
G.

Motion to Preclude Expert Testimony Regarding Victoria's Secret's Allegedly
Willful Or Reckless Conduct
Defendants seek to bar Plaintiff's experts from offering testimony regarding

Victoria's Secret's allegedly willful or reckless conduct on the grounds that (1) the expert reports
and depositions fail to address the matter, and (2) Plaintiff's experts lack personal knowledge of
the facts of this case and, thus, may not testify as lay witnesses. See Fed. R. Evid. 701. These
requests are premised on a misapprehension of the law of wilful infringement. An expert need
only review the patent description and the accused product to offer probative testimony on the
objective inquiry as to willfulness - she need not know anything about the parties' transaction.
See In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) ("[T]o establish
wil1ful infringement, a patentee must show by clear and convincing evidence that the infringer
acted despite an objectively high likelihood that its actions constituted infringement of a valid
patent. ... The state of mind of the accused infringer is not relevant to this objective inquiry.").
A willfulness finding hinges, in large part, on how closely the patent and accused product
resemble each other. Id. Plaintiff's expert report addresses that question directly.
Accordingly, this motion is denied.
H.

Motion to Prevent Admission of Evidence Concerning Indemnification and
Subsequent Remedial Measures
Defendants requests that Plaintiff be barred from: (1) arguing that Defendants'

decision not to seek indemnification from DB Apparel UK, Ltd. ("DBA") is evidence that
Defendants engaged in culpable conduct; (2) arguing that Defendants' decision to discontinue sales
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of the 100-Way Bra is evidence that Defendants believed that the bra infringed on Plaintiff s
patent-in-suit; and (3) arguing that the 7-Way Bra was specifically designed to avoid infringing the
patent-in-suit.
1.

DBA

The contract that DBA and Defendants signed for the resale of the 100-Way Bra
included an indemnification provision covering patent infringement claims that arose out of
DBA's

but not Victoria's Secret's

intellectual property. Defendants have claimed that DBA

designed the 100-Way Bra and supplied it to Victoria's Secret for resale. Plaintiff has signaled
her intent to use Defendants' decision not to seek indemnification as evidence that DBA did not
design the bra, but rather, that Defendants "stole" the design from Plaintiff.
Defendants' motion is premised on Federal Rule of Evidence 411, which
provides:
Evidence that a person was or was not insured against liability is not admissible
to prove whether the person acted negligently or otherwise wrongfully. But the
court may admit this evidence for another purpose, such as proving a witness's
bias or prejudice or proving agency, ownership, or control.
Fed. R. Evid. 411 (2011). Plaintiff argues that the indemnification agreement is not "insurance"
for the purposes of Rule 411, and that, even ifit is, evidence concerning that the agreement is
permissible to show ownership.
The Court need not reach the issue of whether the indemnification agreement is
subject to exclusion under Rule 411 because it finds that evidence of the agreement is in any
event inadmissible under Rule 403. The question before the jury is whether Plaintiffs patent
was valid and whether the 100-Way Bra infringed it, not the means by which Defendants
acquired the design. Allowing Plaintiff to introduce evidence about the latter risks inviting a

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mini-trial on an issue that is both legally inconsequential and potentially unfairly prejudicial.
Those risks substantially outweigh any probative value of the evidence. Accordingly, the
request is granted.
2.

Discontinuation of the 100-Way Bra

Defendants seek to bar Plaintiff from introducing evidence, to show culpable
conduct, of Victoria's Secret's decision to discontinue the sale of the 100-Way Bra. Federal
Rule of Evidence 407 provides that "[ w]hen measures are taken that would have made an earlier
injury or harm less likely to occur, evidence of the subsequent measures is not admissible to
prove negligence; culpable conduct; a defect in a product or its design; or a need for a warning
or instruction." Fed. R. Evid. 407 (2011). In her response, Plaintiff disclaims any intention of
using the discontinuation to show culpable conduct and indicates that she will introduce the
dates of sale for the limited purpose of showing the duration of the sales of the 100-Way Bra,
presumably for damages purposes. That purpose is consistent with Rule 407. Accordingly, the
motion is granted to the extent that Plaintiff may only introduce the termination date of the 100­
Way Bra sales to define the duration of those sales.
3.

7-Way Bra Design

Defendants seek to bar Plaintiff from introducing evidence of design changes to
the product that became the 7-Way Bra to show culpable conduct. Plaintiff indicates that she
intends to argue that Defendants altered the design of the 7-W ay Bra after suit was filed in this
case in order to avoid further infringement. Such argumentation is clearly prohibited by Rule
407. Accordingly, the request is granted.
III.

Defendants' Motion to Bifurcate the Trial on Liability from Damages and Willfulness
Defendants have moved pursuant to Federal Rule of Civil Procedure 42(b) to

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bifurcate the trial ofliability from that of damages and willfulness issues. Rule 42(b) provides
that a court may order a separate trial "[f]or convenience, to avoid prejudice, or to expedite and
economize." Fed. R. Civ. P. 42(b) (2011). Defendants contend that bifurcation is necessary to
avoid jury confusion and to prevent Plaintiff from prejudicing the jury with false and
inflammatory testimony.
"[W]hether to bifurcate a trial ... is a matter within the sound discretion of the
trial court." Getty Petroleum Corp. v. Island Transp. Corp., 862 F.2d 10, 15 (2d Cir. 1988).
Courts generally consider three factors in assessing the appropriateness of bifurcation: "1)
whether significant resources would be saved by bifurcation, 2) whether bifurcation will increase
juror comprehension [or prevent jury bias], and 3) whether bifurcation will lead to repeat
presentations of the same evidence and witnesses." Gaus v. Conair Corp., No. 94 Civ.
5693(KTD), 2000 WL 1277365, at *3 (S.D.N.Y. Sept. 7,2000). "Bifurcation in patent cases, as
in others, is the exception, not the rule," and "[t]he moving party bears the burden of establishing
that bifurcation is warranted." WeddingChannel.com, Inc. v. The Knot. Inc., No. 03 Civ.
7369(RWS), 2004 WL 2984305, at *1 (S.D.N.Y. Dec. 23, 2004) (internal quotations omitted).
The first and third of the Gaus factors cut against bifurcation. Rather than
conserving judicial resources, bifurcation would extend the duration of the trial and require the
parties to re-present witnesses and evidence. Defendants downplay the extent of this
duplication, asserting that there is little, if any, overlap between liability and
damages/willfulness evidence. Federal Circuit law on willfulness belies that contention. Under
In re Seagate Technology, LLC, a patentee who alleges willful infringement must show "that the
infringer acted despite an objectively high likelihood that its actions constituted infringement of
a valid patent" and that "this objectively defined risk (determined by the record developed in the
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infringement proceeding) was either known or so obvious that it should have been known to the
accused infringer." 497 F.3d 1360, 1371 (Fed. Cir. 2007) (emphasis added). As the
parenthetical makes clear, the willfulness determination is "inextricably bound to the facts
underlying the alleged infringement." Computer Associates Intern., Inc. v. Simple.com, Inc.,
247 F.R.D. 63, 67-68 (E.D.N.Y. 2007) (quoting THK America, Inc., v. NSK Co. Ltd., 151
F.R.D. 625, 629 (N.D. Ill. 1993»).

id. ("The overlap of evidence on the issues of liability

and willfulness in this case, heavily disfavors ... bifurcation.");

~=~-"'-""='-'-""'~~~'-.:.

eSpeed, Inc., 431 F. Supp. 2d 834, 841 (N.D. Ill. 2006) (same); Gaus, 2000 WL 1277365, at *3
(same).
Defendants argue that bifurcation is necessary to ensure jury comprehension. The
inherent complexity of patent cases, the argument goes, imposes an "extraordinary burden" on
the jury; bifurcation is necessary to break up the case into digestible pieces. That argument is
most persuasive where the action involves an esoteric technology. Its persuasive force is much
diminished in a case, such as this, where the technology at issue is something as low-tech as
ladies' undergarments. See, e.g., Computer Associates Intern, 247 F.R.D. at 68 (E.D.N.Y. 2007)
(bifurcation less appropriate when subject matter is a familiar technology);
WeddingChannel.com, 2004 WL 2984305, at *2 (same);

2000 WL 1277365, at *3

(S.D.N.Y. Sept. 6, 2000) (bifurcation inappropriate where the case "involves only one patent and
a relatively simple theory of damages, reasonable royalties").
Defendants' final argument in support of bifurcation is that Ms. Plew will
prejudice the jury by making "false and inflammatory remarks" that Victoria's Secret "stole
[her] bra." However, the Court has addressed this risk by granting Defendants' motion in limine
barring Plaintiff from using pejorative phrases. The Court is confident that any remaining
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potential prejudice can be dealt with by proper trial management. Accordingly, the motion is
denied.
CONCLUSION
For the reasons state above, Plaintiffs motion in limine is denied in full.
Defendants' motion to prevent the use of pejorative terms is granted. Defendants' motion to
prevent Plaintiff from calling Ms. Greeley is granted. Defendants' motion to prevent Plaintiff
from advancing arguments at trial inconsistent with the Court's claim construction order is

denied. Defendants' motion to strike the expert report and exclude the expert testimony of Ms.
Edmark is denied. Defendants' motion to preclude Plaintiff and her experts from offering
testimony inconsistent with or outside the expert reports is granted in part, and denied in part.
Defendants' motion to prevent the admission of evidence concerning indemnification and
subsequent remedial measures is granted. Defendants' motion to bifurcate the trial on liability
from willfulness and damages issues is denied.
This memorandum opinion resolves docket entries no. 103, 108, 114, 118, 122,
126, 130, and 164.
The final pre-trial conference in this case is scheduled for February 23,2012, at
10:30 a.m.
SO ORDERED.
Dated: New York, New York
February 6,2012

~-A-I-N--United States District Judge

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