Ameritox, Ltd. v. Millennium Health, LLC
Filing
380
ORDER granting #374 Joint Request For Expedited Guidance on Order of Proofs at Trial; denying #246 Motion to exclude testimony of Alan H. Wu, Ph.D.; denying #274 Motion to exclude the expert testimony of Richard F. Bero; reserving on #276 Motion in Limine to exclude improper testimony regarding the U.D. Testing License; denying #277 Plaintiffs' Motion in Limine 1; granting in part and denying in part #278 Motion in Limine to exclude evidence directed to claimed willful infringement; granting in part and denying in part #279 Plaintiffs' Motion in Limine 2; granting in part and denying in part #280 Plaintiffs' Motion in Limine 3; granting in part and denying in part #281 Plaintiffs' Motion in Limine 4; denying #282 Plaintiffs' Motion in Limine 5; granting #283 Motion in Limine to preclude certain expert testimony of Dr. Paul J. Orsulak; denying #285 Plaintiffs' Motion in Limine 6; granting in part and denying in part #286 Plaintiffs' Motion in Limine 7; granting in part and denying in part #287 Plaintiffs' Motion in Limine 8; denying #291 Plaintiffs' Motion in Limine 9; denying #292 Plaintiffs' Motion in Limine 10; granting as unopposed #293 Plaintiffs' Motion in Limine 11; denying #294 Plaintiffs' Motion in Limine 12; granting #295 Plaintiffs' Motion in Limine 13; denying #296 Plaintiffs' Motion in Limine 14; granting as unopposed #300 Motion in Limine to exclude evidence or testimony regarding irrelevant litigation and financial information; denying #303 Motion in Limine to exclude testimony of Carl G. Degen. Whether by phone or in person, the parties shall meet in good faith no later than 5 p.m. on Monday, April 6, 2015, to confer and pare down their exhibit lists further. The parties shall then submit no later than noon on Tuesday, April 7th, revised exhibit lists reflecting exhibits they may actually seek to have admitted at trial and any remaining objections to those exhibits in a form required by this court. Signed by District Judge William M. Conley on 4/3/15. (jat)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN
AMERITOX, LTD., and
MARSHFIELD CLINIC, INC.,
Plaintiffs,
OPINION & ORDER
v.
13-cv-832-wmc
MILLENNIUM HEALTH, LLC,
Defendant.
In advance of the final pretrial conference set for April 7, 2015 at 1:30 p.m., the
court issues the following opinion and order on the parties’ pending motions in limine, as
well as a recently-filed joint request for expedited guidance on “order of proofs” at trial
(dkt. #374). As explained below, the court will bifurcate trial with the first phase solely
consisting of Millennium’s invalidity challenges; assuming the jury finds the ’680 patent
valid, the second phase will concern damages and, if appropriate, willful infringement. As
for the numerous motions in limine, for ease, the court has organized the motions by
primary area of concern, i.e., validity, damages and willful infringement.
OPINION
I. Joint Request for Order of Proofs at Trial
In a joint submission, the parties set forth their respective positions on the order
of proofs. Ameritox seeks to depart from this court’s usual practice by presenting its
willful infringement claim first, followed by Millennium’s invalidity challenges, with both
going to the jury in the first phase of the trial. The second phase of the trial, therefore,
would solely consist of damages. Millennium, on the other hand, wishes to proceed with
invalidity in the first phase of trial, saving both damages and willful infringement for the
second phase.
Since plaintiffs offer no compelling reason to depart from usual practice, this is
not a close question. At the start of the trial, the jury will be informed that the court has
already determined that Millennium infringes the ‘680 patent. The only issue, therefore,
remaining as to liability is Millennium’s invalidity challenges. Because a jury’s finding of
willful infringement is only material in determining the appropriate damages award and
has no impact on any liability issue, the court finds generally that it is best-suited for the
second phase of a bifurcated trial. The argument that “[p]laintiffs traditionally present
first and this case should be no exception because Plaintiffs bear the burden of proof on
willful infringement” (Joint Submission (dkt. #374) 1) is silly. Plaintiffs also have the
burden on proving damages, but that does not serve as a basis for having the jury
consider damages before hearing Millennium’s invalidity challenges.
Moreover, the jury need not reach willful infringement if either (1) the court
determines that plaintiffs have failed to prove by clear and convincing evidence that
Millennium “acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent,” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed.
Cir. 2007) (en banc) (see infra Section IV.A.); or (2) the jury finds in favor of Millennium
on its challenges to the validity of the ’680 patent. Judicial economy, therefore, strongly
favors trying willful infringement as part of the second phase of the trial.
The only credible concern plaintiffs raise is that some of the evidence they wish to
submit in response to Millennium’s obviousness challenge -- namely, evidence of copying
2
-- is also relevant to its claim of willful infringement. See SynQor, Inc. v. Artesyn Techs.,
Inc., 709 F.3d 1365, 1377 (Fed. Cir. 2013) (considering evidence of copying by
competitors as objective evidence of non-obviousness).
To clarify, if the evidence is
relevant to obviousness, nothing about this order precludes plaintiffs from introducing
that evidence in the first phase of the trial. The court, however, will not allow plaintiffs
to present the same evidence twice. Rather, plaintiffs can simply reference testimony and
evidence already received during the first phase of trial in its opening and closing
arguments for the second phase.
This approach also addresses at least some of
Ameritox’s concerns about convenience for Millennium’s witnesses.
II. Plaintiffs’ Defense to Millennium’s Invalidity Claims
A. First Motion in Limine to Exclude Evidence Concerning Certain
Defenses (dkt. #277)
Under Federal Rules of Evidence 402 and 403, plaintiffs seek to exclude evidence
concerning any alleged waiver, laches, license, release, inequitable conduct, lack of
enablement, indefiniteness, lack of utility, lack of patentable subject matter, or noninfringement. (Pls.’ First Mot. (dkt. # 277) 1.) Much of this motion in limine is made
moot by Millennium’s response. (Def.’s Opp’n (dkt. #329) 1-2.)
Specifically,
Millennium has determined “not to present its defenses of inequitable conduct, waiver,
laches, license and release, as well as defenses predicated on Millennium’s proposed claim
construction, including indefiniteness, enablement and utility, following assessment of
the Court’s recent summary judgment orders and its claim construction determinations.”
3
(Id. at 1.) This leaves the issue of whether the motion should be granted to exclude
evidence supporting Millennium’s patent eligibility defense under 35 U.S.C. § 101.
The court will deny this aspect of the motion for two reasons. First, the court
simply denied Millennium’s summary judgment motion on patentable subject matter; it
did not grant summary judgment of no invalidity. (2/19/15 Op. & Order (dkt. #215).)
Second, a motion in limine is not the proper vehicle for excluding Millennium’s § 101
challenge to the ’680 patent. Plaintiffs made no effort to file a motion for summary
judgment on this issue and its de facto use of Rules 402 and 403 will go unheeded.
Accordingly, plaintiffs’ motion as applied to 35 U.S.C. § 101 is denied.
B. Second Motion in Limine to Exclude Arguments Contrary to the Court’s
Claim Construction (dkt. #279)
Plaintiffs seek to exclude Millennium making arguments contrary to the court’s
claim construction opinion. (2/19/15 Op. & Order (dkt. #215).) Millennium opposes
the motion, arguing that plaintiffs have overreached, particularly with respect to willful
infringement.
The parties’ concerns are largely accommodated by the court’s use of a bifurcated
trial. While Millennium will be precluded from interjecting dose-prediction limitations
into the asserted claims at the liability phase of the trial, Millennium will be afforded the
opportunity to rebut plaintiffs’ willful infringement claim with such evidence, as well as
legal argument.
In particular, Millennium may present any additional evidence and
argument on this issue to the court while the jury is deliberating on invalidity and
damages. See, e.g., Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir.
4
2008) (affirming finding of no willful infringement despite rejecting defendant’s claim
construction where that construction was reasonable “in light of the specification and
prosecution history.”).
With the exception of the willfulness phase, Millennium will also be precluded
from (1) cross-examining the inventor Dr. Larson (or any other witness) in any way that
suggests the claimed invention is limited to dose prediction; (2) arguing or suggesting
that Rx Guardian CD, which practices the asserted patent, is intended to or does predict
dose; and (3) offering any evidence or argument suggesting that it does not infringe the
asserted claims.
C. Fifth Motion in Limine to Exclude Preston as Prior Art (dkt. #282)
Plaintiffs seek an order excluding the introduction of the Preston Article.1 While
the motion reads like an unlikely motion for summary judgment, there are some aspects
that go to evidentiary issues worthy of consideration.
As an initial matter, “[w]hen
considering whether a given reference qualifies as a prior art ‘printed publication,’ the key
inquiry is whether the reference was made ‘sufficiently accessible to the public interested
in the art’ before the critical date.” Voter Verified, Inc. v. Premier Election Solutions, Inc., 698
F.3d 1374, 1380 (Fed. Cir. 2012) (citation omitted), cert. denied, 133 S. Ct. 2804 (2013).
Plaintiffs contend that Preston should be excluded for two reasons.
First,
plaintiffs contest a sworn affidavit by a third party, Todd Fenton. (Todd Fenton Affidavit
Preston, K. et al., Methadone and Metabolite Urine Concentrations in Patients Maintained on
Methadone, J. Anal. Toxicol., 27: 332-341 (2003). (See Expert Report of Roger L. Bertholf,
Ph.D. (“Bertholf Rept.”), Ex. G (dkt. #209-7).)
1
5
(“Fenton Affidavit”) (dkt. #313-7).) Mr. Fenton is the librarian at the University of
Minnesota Bio-Medical Library, who averred that the Library made the Preston Article
available to the public no later than August 27, 2003, in advance of the ‘680 patent’s
filing date.
Ameritox argues correctly that the affidavit is inadmissible hearsay at trial. The
hearsay concern has been mitigated by Millennium’s recent response indicating that it
may call Mr. Fenton as a witness if the need arises. (Def.’s 1st Am. Witness List (dkt.
#372) 3.)2 Even if Millennium is unable to produce Mr. Fenton as a witness at trial, the
Fenton Affidavit could still be admissible under the residual exception to hearsay, Fed. R.
Evid. 807, or at least considered if evidence ordinarily relied upon by a previously
disclosed expert, Fed. R. Evid. 703. Alternatively, Fed. R. Evid. 902(11) provides that a
business record is self-authenticating when accompanied by a written declaration by the
custodian or other qualified person that the record in question: (1) was made at or near the
time of the occurrence of the matters set forth by, or from information transmitted by, a
person with knowledge of those matters; (2) was kept in the course of the regularly
conducted activity; and (3) was made by the regularly conducted activity as a regular
practice. See Thanongsinh v. Bd. of Educ., 462 F.3d 762, 777 (7th Cir. 2006).
Without explanation, plaintiffs argue that Mr. Fenton is not a custodian because
he had “only been working at the Library since 2009” and, therefore, cannot authenticate
the Preston Article. (Pl.’s Fifth Mot. (dkt. #282) 2.) What Fenton’s tenure has to do
with his responsibility as custodian of records is wholly unclear, and plaintiffs point to no
Millennium indicates that it had hoped the parties would stipulate to the admissibility
(and authenticity) of the Fenton affidavit, but apparently this has not occurred.
2
6
case law to support this apparent non sequitur.
Indeed, in Thanongsinh, the Seventh
Circuit held that “the custodian need not be the individual who personally gather[ed] . . .
[the] business record.”
462 F.3d at 777 (emphasis added) (alteration in original).
Rather, the custodian “need only be familiar with the company's recordkeeping
practices.” Id. The court finds that as librarian and business manager of the library,
Fenton satisfies this threshold requirement.
Mr. Fenton’s affidavit also meets the other criteria because (1) he avers to having
personal knowledge of the Library’s recordkeeping practices; (2) it attaches a “true and
correct copy” of the date-stamped Preston Article received by the library; and (3) it
explains the library’s practice is to affix date stamps to journal publications as the last
step before they are made available to the general public. (Fenton Aff. (dkt. #313-7) ¶¶
1-5.)
The Fenton Affidavit was also prepared under oath, meeting the declaration
requirement of Rule 902(11).
(See id.)
Assuming plaintiffs may cross-examine Mr.
Fenton as to any of these points, particularly the last one, the affidavit appears to meet
all of the requirements of Rule 902(11).3
In its response, Millennium also challenges plaintiffs’ purported new theory that
the critical date is not August 28, 2003, but rather the earlier invention date
(approximately May 30, 2003). (Def.’s Opp’n (dkt. #332) 9.) Millennium characterizes
this as “litigation-by-ambush” because plaintiffs had given no advance notice of an earlier
invention date until March 5, 2015, when the inventor Dr. Larson filed a declaration.
(Dr. Michael E. M. Larson (“Larson Decl.”) (dkt. #284).) For this reason, Millennium
The court reserves on whether this evidence alone is enough to permit a reasonable jury
to find that Preston article was “sufficiently accessible to the public interested in the art.”
3
7
argues that plaintiffs should be deemed to have waived the right to claim an earlier
invention date, citing several cases to support this position. See Promega Corp. v. Applied
Biosystems, LLC, No. 13-cv-2333, 2013 WL 2898260, at *5 (N.D. Ill. June 12, 2013)
(patentee waived any argument for an earlier priority date where that patentee failed to
provide any evidence of an earlier date in its interrogatory responses and failed to amend
responses in timely fashion), aff’d, 557 F. App’x 1000 (Fed. Cir. 2014); Sanofi-Aventis
Deutschland GMBH v. Genentech, Inc., No. C 08-4909 SI, C 09-4919 SI, 2011 WL
839411, at *27 (N.D. Cal. Mar. 7, 2011) (holding that patentee was “barred from
asserting that it is entitled to an earlier invention date” where assertion was made for the
first time in opposition to summary judgment), aff’d, 716 F.3d 586 (Fed. Cir. 2013); In re
Katz Interactive Call Processing Patent Litig., Nos. 07-ML- 01816-C-RGK, CV 07-4960RGK, 2009 WL 8636007, at *2-3 (C.D. Cal. July 28, 2009) (“To the extent that Katz
believed it had a good faith basis for asserting an earlier priority date, it was obligated to
do so by updating its discovery responses when it became aware of that position.”).
The court finds that the facts in each of the cases cited by Millennium are
inapposite to the present case. In each case, the patentee waived an earlier priority date
because the patentee failed to assert it or produce any evidence of an earlier date when
called upon to do so by Fed. R. Civ. P. 37(c)(1), in response to legitimate discovery or by
virtue of misleading statements to the contrary. Here, Millennium provides no evidence
that plaintiffs failed to meet such an obligation to disclose an earlier filing date. While it
is true that plaintiffs did refer to the August 28, 2003, filing date in their opposition to
Millennium’s motion for summary judgement (see Pls.’ Opp’n (dkt. #172) 25), the court
8
can find no point where plaintiffs were obligated to provide an earlier date or otherwise
placed the proverbial line in the sand for the purpose of binding their position at trial.4
Thus, Millennium’s cries of prejudice fall flat. For some time, and at least before
the close of discovery, Millennium has been made aware of discovery documents
supporting an earlier filing date, as set forth in Dr. Larson’s declaration. (See generally
Larson Decl., Exs. A-C (dkt. ##284-1 to 284-3).)
Millennium certainly could have
sought further discovery on these issues to pin plaintiffs to a specific invention or filing
date but chose not to do so. Millennium’s position is not, therefore, one of prejudice, so
much as one of lost opportunity. For this reason, the court will permit plaintiffs to
introduce evidence of an earlier invention date.
One further, related point is worth addressing before trial. Millennium argues that
whether or not Preston qualifies as prior art (for anticipation or novelty purposes), the
Preston Article indicates the level of ordinary skill in the art around the time of the
alleged invention, and the article can at least be offered and used to prove obviousness.
See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)
(“Obviousness is a question of law based on underlying factual findings: (1) the scope
and content of the prior art; (2) the differences between the claims and the prior art; (3)
the level of ordinary skill in the art; and (4) objective indicia of nonobviousness.” (emphasis
added)).
At summary judgment, neither party moved on novelty or obviousness. The issue of
novelty (and the invention date) is only now before the court.
4
9
Millennium points to a Federal Circuit case holding that references may be used as
“indicators of the level of ordinary skill in the art,” even if they post-date the alleged
invention. See Thomas & Betts Corp. v. Litton Sys., Inc., 720 F.2d 1572, 1581 (Fed. Cir.
1983) (“[T]he M & E criteria, though not technically prior art, were, in effect, properly
used as indicators of the level of ordinary skill in the art to which the invention
pertained.” (citations omitted)); see also Disney Enters., Inc. v. Kappos, 923 F. Supp. 2d
788, 801 (E.D. Va. 2013) (“Publications published after the date of invention have long
been allowed ‘as evidence of the state of the art existing on the filing date of an
application.’”) (quoting In re Hogan, 559 F.2d 595, 605 & n.17 (C.C.P.A. 1977)).
On a facial level, there would seem no reason why the Preston article could not be
admitted for the purpose of determining obviousness. No doubt corroborating testimony
will be required to ascertain what was generally known by the skilled artisan, because the
contents of the entire article could hardly be considered commonly known without more
for the simple reason that an academic journal tends to provide new insights beyond
what was generally known in the scientific literature.5 See In re Omeprazole Patent Litig.,
84 F. App’x 76, 81 (Fed. Cir. 2003) (“Genpharm reads too much into Thomas & Betts
because, unlike here, the document at issue in that case received additional support in
the form of testimony about the state of art at the time of the publication. The level of
skill in the art is a factual question, and the district court did not clearly err in declining to
To this end, Millennium and Ameritox may wish to stipulate whether the Preston
article would be considered within the ordinary skill level of those in field at the time of:
(a) the invention date, and (b) the filing date.
5
10
consider the Up-to-Date disclosure as reflecting the level of skill in the art.”). In any
event, because the Fenton Affidavit may properly authenticate the article, and because
Mr. Fenton will apparently be available to testify, the court will deny plaintiffs’ motion.
D. Sixth Motion to Exclude the George, Preston and Kell References (dkt.
#285)
Plaintiffs also seek to exclude: (1) the George and Preston references for purposes
of anticipation and obviousness, and (2) the Kell reference for purposes of obviousness.
i.
The George Article (anticipation)
Plaintiffs challenge the use of the George Article for the purpose of proving
anticipation on grounds that it is not relevant or would be confusing to the jury. See Fed.
R. Evid. 402, 403. In seeking this exclusion, plaintiffs point to the following:
That the court, in the summary judgment opinion, stated that the George Article
is (1) “[o]ne of the most relevant prior art references in this case” (2/19/15 Op. &
Order (dkt. #215) 8); (2) that the only comparison disclosed in the George Article
is a “patient’s test result to earlier results from that same patient” (id. at 10); and
(3) that the George Article provides that “creatinine normalization was
problematic and ‘for practical purposes . . . the only reliable method available to
monitor methadone compliance is the use of plasma methadone drug testing” (id.
at 53).
That the George Article was the subject of extensive and repeated examination at
the Patent Office. (See, e.g., Rebuttal Expert Report of Dr. Paul Orsulak (dkt.
#118) ¶¶ 81-83 (excerpting portions of the prosecution history to show that
George was considered by three different examiners); Expert Report of Roger L.
Bertholf Ph.D. (dkt. #209) ¶ 48 (acknowledging George Article was “the focus of
two reexaminations” of the asserted patent).)6
The Patent Office concluded that one skilled in the art would interpret the George
Article in relation to claim element step (f), and the related claim element step (b), as
follows:
6
11
Relying on both points, plaintiffs contend that the George Article by itself cannot
be found to anticipate the ’680 patent because step (f) is not disclosed. Because of this,
plaintiffs move the court to exclude the George Article for the purposes of Millennium’s
anticipation defense. For a variety of reasons, the court will deny plaintiffs’ motion in
limine at this time.
As Millennium rightly points out, the court’s discussion of the George Article in
the summary judgment opinion was limited to the specific context of Millennium’s motion
on patent (in)eligibility under § 101. Nowhere did Ameritox put Millennium to its prrof
regarding, nor did the court consider, Millennium’s anticipation defense in light of the
George Article. (2/19/15 Op. & Order (dkt. #215).) Moreover, while Dr. Orsulak was
quoted as asserting that the “George Article only discloses comparing a patent’s test
result to earlier results from the same patient” (id. at 8), Millennium was under no
obligation to proffer any contrary evidence with respect to step (f). See Alice Corp. v. CLS
Indeed in George, no comparison is made between the
metabolite concentration of the 14 control subjects and the
metabolite from any of the 56 drug users in order to ‘quantify
the concentration’ of the test metabolite. Furthermore,
although George suggests that data collected over time from a
single individual could be used to provide the set of known
normative data specific to the reference metabolite, step (b)
of the claims requires the set of normative data to be
collected from a ‘population’ . . . The declaration filed 29
March 2013 by Dr. Michael E. convincingly asserts that one
of ordinary skill in the art would understand “population” as
used in the context of the ’680 patent and claims, to define a
group of more than a single test subject . . . Thus the skilled
artisan would understand the term “population” as . . . a
group of more than one individual.
(Bertholf Rept., Ex. 19 (dkt. #209-19) 4-5.)
12
Bank Int’l, 134 S. Ct. 2347, 2354–55 (2014). Because the comparative step (step (f)) lay
at the core of Millennium’s defense (particularly the first prong), and because the first
prong of Alice (abstractness) is a question of law,7 Millennium was not required to proffer
any evidence that step (f) existed in the prior art for the purposes of its § 101 defense.
Compare 2/19/15 Op. & Order (dkt. #215) 41-42, 44-57, with Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1304 (2012) (“[T]he ‘wherein’ clauses simply tell
a doctor about the relevant natural laws.”).
In fairness to plaintiffs, Dr. Wu opined that step (f) was routine, in addition to
being an abstract mental process, but he did not opine that all six steps of the invention
existed in a single prior art publication. Otherwise, presumably, Millennium would have
moved for summary judgment on novelty grounds (§ 102), not just patent eligibility (§
101). (Dr. Alan H. Wu Invalidity Report (“Wu Invalidity Rept.”) (dkt. #115) ¶ 113.)
Moreover, Millennium’s response, while long on the inappropriateness and timing of
plaintiffs’ sixth motion in limine, was noticeably short on showing that the George Article
Looking to the jury instructions filed to date, both parties seem to agree that the first
prong of Alice is a question of law. (Def.’s Proposed Jury Instructions (dkt. #304) 28
(“[The court has] determined that the claims of the ’680 patent are directed to an
abstract idea.”); (Pls.’ Proposed Jury Instructions (dkt. #290) 35) (“Plaintiffs do not
propose a jury instruction for this issue because it is an issue for the Court, not the
jury.”). Where the parties diverge is with respect to the second prong of inventive
concept, see Alice, 134 S. Ct. at 2354–55, but even this is a mixed question of fact and
law. In re Comiskey, 554 F.3d 967, 975 (Fed. Cir. 2009) (“As a question of law, lack of
statutory subject matter is a ‘ground [for affirmance] within the power of the appellate
court to formulate.’ While there may be cases in which the legal question as to patentable
subject matter may turn on subsidiary factual issues, Comiskey has not identified any
relevant fact issues that must be resolved in order to address the patentability of the
subject matter of Comiskey's application.”) (citations omitted.) During the final pretrial
conference, it will be incumbent on the parties to advise the court of their view as to
what facts remain in dispute for the jury to decide.
7
13
could be read to teach steps (e) and (f) of the claims in the ‘680 patent (i.e., the
combination).
If this cannot be done to the court’s satisfaction before opening
statements, the court will preclude any representation that George anticipates the ‘680
patent during opening statements.
Finally, plaintiffs’ assertion that because the George Article was the subject of
extensive and repeated examination at the Patent Office, it must be excluded from any
discussion on anticipation is a non-starter.
Although the statutory presumption may
make it “especially difficult” for Millennium to overcome the George Article because the
Patent Office reviewed the reference, this does not mean that the issue is entirely
foreclosed from jury determination. See Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d
1312, 1314 (Fed. Cir. 2008). For example, Millennium may proffer evidence at trial that
controverts what the Patent Office has found. This is a question of weight for the factfinder, not admissibility.
ii.
The Preston Article (anticipation)
Plaintiffs contend that the Preston Article should be excluded for purposes of
anticipation for reasons similar to the George Article. First, because Millennium’s expert
Dr. Bertholf opines that “the [George] article draws a similar conclusion” to the Preston
Article, plaintiffs contend that it should “be excluded because it is cumulative.” (Pls.’
Sixth Mot. (dkt. #285) 4) (quoting Bertholf Rept. (dkt. #209) ¶ 89).
If this were
plaintiffs’ only basis for objecting to the use of the Preston Article for purposes of
anticipation, the motion would border on the frivolous.
14
While the court is all for
streamlining the trial, the notion that a defendant can submit only one piece of prior art
to show anticipation is ludicrous.
However, plaintiffs also argue that the Preston Article “cannot anticipate because
it does not disclose the comparison of step (f).”
(Pls.’ Sixth Mot. (dkt. #285) 5)
Millennium counters that “[w]hile the parties may dispute whether the George Article
expressly discloses a step (f) comparison, there can be no question that the Preston
Article expressly discloses the comparison of step (f).” (Def.’s Opp’n (dkt. # 333) 6.)
Millennium supports this position with a quote from the Preston Article: “The present
data should be useful to clinicians as a comparison for their outpatients’ immunoassay
results and to scientists as a basis for addressing the potential utility of urine test for
monitoring compliance with methadone maintenance.” (Bertholf Rept. (dkt. #209) 8.)
Much like George, it is not entirely clear how the Preston passage discloses step (f)
of the ’680 patent. Millennium’s response also provides no real explanation as to on how
its expert Dr. Bertholf equates the disclosure of a comparison of an individual patient’s
results over time with the disclosure of a comparison with a population of patients’
normative results. This creates the same level of doubt as to whether the Preston Article
is relevant to the issue of anticipation as the George Article. As with George, what tips
the scales is that the issue was not raised in a motion for summary judgment. See Fed. R.
Civ. P. 56(a)-(f). Had it been, Millennium would have been expected to come forward
with meaningful rebuttal evidence to ensure that the factual issue on anticipation -whether the Preston Article discloses step (f) -- is disputed, and worthy of jury
determination.
15
Accordingly, because a motion in limine is an inappropriate forum to consider this
issue, and because the court declines plaintiffs’ offer to invite a Rule 56 (f) response from
Millennium at this late date,8 the court will deny Ameritox’s motion in limine at this
time and give Millennium an opportunity to explain at the final pretrial conference why
any statement as to the article anticipating the ‘680 patent should be allowed during
opening statements. (Def.’s Opp’n (dkt. #333) 6.)
iii.
The George, Preston and Kell References (obviousness)
Plaintiffs’ sweeping motion in limine as to the relevance of George, Preston and
Kell for purposes of obviousness is even more premature. Broadly speaking, plaintiffs
contend that all three references -- in isolation or when combined with other references in
the record -- should be excluded because they teach away from the comparison of step (f).
See Illumina Inc. v. Complete Genomics Inc., No. 10-cv-05542, 2013 WL 1282977, at *17
(N.D. Cal. Mar. 26, 2013) (“If a prior art reference ‘teaches away’ from an invention,
that invention is not made obvious by the prior art.”). While the court has reviewed the
George Article in prior opinions, including noting that it teaches away from the use of
creatinine for normalizing urine samples, that analysis was limited to the summary
judgment opinion on the issue of patent eligibility. (2/19/15 Op. & Order (dkt. #215) 910.) Certainly, Millennium should by now be on notice that any evidence proffered at
trial will need to be relatively strong to undermine the express teachings in the George
In its motion, plaintiffs stated in a footnote: “While the Court could exclude George,
Preston, and Kell on evidentiary grounds, the Court would also be well within its
discretion to convert this motion to a motion for summary judgment because Millennium
has notice and a reasonable time to respond.” (Pls.’ Sixth Mot. (dkt. #285) 3 n.1.)
8
16
Article. (Id. at 10 (“[T]here is too large of an interindividual variation to use urinary
excretion concentrations of methadone or EDDP as markers of compliance”; urinary
excretion testing “would point to a lack of suitability of using urine concentrations of
EDDP or methadone as markers of compliance”; and “the only reliable method available
to monitor methadone compliance is the use of plasma methadone drug testing.”).) A
similarly strong showing would also be required with respect to the Preston and Kell
references, if plaintiffs are correct in contending that those references teach away from
the use of creatinine as well.
Once again, however, if plaintiffs wanted a summary
judgment ruling on this issue, they should have put Millennium to its proof by the
deadline for dispositive motions.
Moreover, whether a reference teaches away from a claimed invention is an issue
of fact for the jury. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir.
2006) (“As with other subsidiary obviousness inquiries, ‘[w]hat a reference teaches and
whether it teaches toward or away from the claimed invention are questions of fact.’”
(citation omitted)). As the Federal Circuit explained, “obviousness must be determined
in light of all the facts, and there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness.” Id.9 This case is no exception, particularly when
plaintiffs seek to dispose of the obviousness issue not by way of a summary judgment
motion, but by way of motion in limine.
In this case, there are several references that teach away, not just a single one -- so
Medichem perhaps has less persuasive weight. But given that the court has yet to hear
testimony from Millennium’s expert(s) on obviousness, the more prudent approach is to
allow all three references come in for the purposes of obviousness at this time.
9
17
Accordingly, the court denies Ameritox’s motion to exclude all three references as
to obviousness at this time.
Given the case law, the court will also not preclude
Millennium from referencing its obviousness defense in opening statements.10
E. Thirteenth Motion to Exclude Evidence of Commercial Success During
the Liability Phase (dkt. #295)
Next, plaintiffs seek to exclude argument or evidence concerning the commercial
success of their products or concerning the means by which they allegedly achieved that
success during the liability phase of the trial. Typically, a patentee is the party seeking to
proffer evidence of commercial success to show non-obviousness. Here, the opposite is
true: plaintiffs are arguing that Millennium should be precluded from proffering any
evidence of commercial success. Plaintiffs represent that this evidence would include
without limitation (1) the 2010 Bain Study, (2) Ameritox’s salesforce.com data, (3)
Millennium’s test drive data, (4) pleadings from a prior false advertising case between
Ameritox and Millennium, (5) expert testimony or reports from the prior Florida
litigation, (6) testimony from Millennium witnesses concerning Millennium’s commercial
success or marketing messaging, (7) Millennium’s website, (8) Appendix 5 to the Bero
Because the issue of patent eligibility is decided under a different standard than
obviousness -- requiring that the additional element or combination of elements be “well
known” in the art, not simply known -- Millennium may want to refrain voluntarily from
referencing its patent eligibility defense in its opening statement in recognition that the
court might ultimately conclude that no reasonable jury could find in its favor on that
defense on the record at trial. See Mayo, 132 S. Ct. at 1298 (explaining the requirement
for “well understood, routine, conventional activity previously engaged in by scientists
who work in the field” when undertaking the inventive concept analysis).
10
18
Report (dkt. #237-10), and (9) Bero’s commercial success expert report and the evidence
cited therein (Expert Report of Richard F. Bero (dkt. #263)).
Consistent with the limited case law on this subject, see Miles Labs., Inc. v. Shandon
Inc., 997 F.2d 870, 878 (Fed. Cir. 1993) (while “indicia of non-obviousness” weigh in
favor of finding non-obviousness, “the lack of such evidence does not weigh in favor of
obviousness”), Millennium consents to this outcome.11 (Def.’s Opp’n (dkt. # 354) 24.)
At the same time, Millennium states that “[e]vidence such as testimony from Millennium
witnesses regarding marketing messaging, as well as pleadings from previous false
advertising litigation are relevant to rebut any copying theory presented at trial by
explaining that Millennium was positioning itself as different from Ameritox, not copying
RX Guardian CD, the science and technology of which Millennium was challenging in
court and in the marketplace.” (Id. at 24-25.) Accordingly, the court will grant plaintiffs’
motion to the extent that Ameritox does not open the door by proffering evidence on
commercial success or copying.
F. Plaintiffs’ Motion to Exclude Millennium’s Expert: Alan H. Wu, PH.D.
(dkt. #246)
Ameritox seeks to exclude Dr. Wu from testifying at trial. The admissibility of
expert testimony in federal courts is governed principally by Federal Rule of Evidence
702 and Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993). Rule 702
provides:
The court addresses whether evidence of commercial success may be admissible in the
second phase of trial below. See infra Sections III.A., III.B., VI.A.
11
19
A witness who is qualified as an expert by knowledge, skill,
experience, training, or education may testify in the form of
an opinion or otherwise if:
(a) the expert’s scientific, technical, or other specialized
knowledge will help the trier of fact to understand the
evidence or to determine a fact in issue;
(b) the testimony is based on sufficient facts or data;
(c) the testimony is the product of reliable principles and
methods; and
(d) the expert has reliably applied the principles and methods
to the facts of the case.
A district court functions as a “gatekeeper” regarding expert testimony; the court
must determine whether a party’s proffered expert testimony is relevant and reliable.
Daubert, 509 U.S. at 589; see also United States v. Johnsted, 30 F. Supp. 3d 814, 816 (W.D.
Wis. 2013) (the expert testimony must be “not only relevant, but reliable.”). Although
expert testimony is “liberally admissible under the Federal Rules of Evidence,” Lyman v.
St. Jude Med. S.C., Inc., 580 F. Supp. 2d 719, 723 (E.D. Wis. 2008), it must nevertheless
satisfy the following three-part test:
(1) the witness must be qualified “as an expert by knowledge,
skill, experience, training, or education,” Fed. R. Evid. 702;
(2) the expert’s reasoning or methodology underlying the
testimony must be scientifically reliable, Daubert, 509 U.S. at
592-93; and
(3) the testimony must assist the trier of fact to understand
the evidence or to determine a fact in issue. Fed. R. Evid.
702.
Ervin v. Johnson & Johnson, Inc., 492 F.3d 901, 904 (7th Cir. 2007). “Vigorous crossexamination, presentation of contrary evidence, and careful instruction on the burden of
20
proof are the traditional and appropriate means of attacking shaky but admissible
evidence.” Daubert, 509 U.S. at 596.
Plaintiffs argue that Dr. Wu’s opinions should be excluded under Federal Rule of
Evidence 702 because they are “fundamentally unreliable.” (Pls.’ Br. (dkt #247) 3.)
Because many of the opinions originally proffered by Dr. Wu have been rendered moot
by the court’s summary judgment opinion, “Dr. Wu’s testimony will now be limited in
scope.”
(Def.’s Opp’n (dkt. # 351) 2.)12
Specifically, Millennium consents to his
testimony being restricted to just two areas: (1) patentable subject matter, and (2) the
limited purpose of defending against Ameritox’s case for willful infringement with regard
to the reasonableness of his claim construction and non-infringement opinions. (Id.)
Still, plaintiffs take issue with the reliability of these remaining opinions.
Before addressing whether Dr. Wu’s opinions in these areas are reliable, some
context is appropriate.
With respect to patentable subject matter, Dr. Wu generally
opined on creatinine normalization, the sources of variability in urine drug
concentrations and the capabilities of urine drug testing. (Dr. Alan H. Wu Invalidity
Report (“Wu Invalidity Rept.”) (dkt. #115) ¶¶ 59-85.) He also opined that creatinine
normalization of urine samples was generally known at the time of the ’680 patent. (Id.
at ¶ 112.) These opinions are certainly relevant to remaining issues of patentability and
non-infringement.
Specifically, Millennium has determined “not to present its defenses of inequitable
conduct, waiver, laches, license and release, as well as defenses predicated on
Millennium’s proposed claim construction, including indefiniteness, enablement and
utility, following assessment of the Court’s recent summary judgment orders and its claim
construction determinations.” (Def.’s Opp’n (dkt. #329) 1.)
12
21
Dr. Wu’s evidence regarding claim construction and non-infringement -- in
support of Millennium’s defense to willful infringement -- is also relevant. Although Dr.
Wu’s claim constructions were rejected at summary judgment, the Federal Circuit has
held that reasonable claim constructions -- even if not adopted -- can show that there is
no objectively high likelihood of infringement.
See Cohesive Techs, 543 F.3d at 1374
(finding no willful infringement, despite rejecting defendant’s claim construction, where
that construction was reasonable “in light of the specification and prosecution history”);
Douglas Dynamics, LLC v. Buyers Prods. Co., 747 F. Supp. 2d 1063, 1113 (W.D. Wis.
2010).13
Because Dr. Wu’s opinions would be relevant for the limited purposes that
Millennium now proposes to advance them, the court turns to whether his evidence is
reliable and the specific reasons plaintiffs advance to exclude them. First, plaintiffs argue
that Dr. Wu is biased based on a theory that he had been a colleague of Millennium’s
former laboratory director, Dr. Amadeo Pesce. (Pls.’ Mot. (dkt. #246) 5.) In reviewing
the parties’ materials, there is simply no support in the case law for excluding an expert
based on bias of this nature. The best that Ameritox can muster is a law digest. See
Robert A. Matthews, Jr., Annotated Patent Digest, § 44:43.150 (2014). Not only is this
reference unpersuasive, it runs counter to other, more persuasive authorities: “[I]t is wellestablished that an expert’s bias is not a proper basis to bar testimony under Daubert.”
Of course, to the extent that Dr. Wu is giving evidence with respect to the objective
prong of willfulness, that prong will be examined solely by the court, somewhat
ameliorating plaintiffs’ concerns as to admissibility or at least allowing the court to hear
testimony before ruling on admissibility.
13
22
See Cage v. City of Chi., 979 F. Supp. 2d 787, 827 (N.D. Ill. 2013) (citing DiCarlo v. Keller
Ladders, Inc., 211 F.3d 465, 468 (8th Cir. 2000)); see also In re Unisys Savings Plan Litig.,
173 F.3d 145, 166 n.11 (3d Cir. 1999) (“Courts have held in numerous other cases that
credibility is irrelevant to determining whether a proposed expert witness’s testimony is
admissible under Rule 702, and particularly whether it is based on reliable methodology .
. . . For example, expert witnesses cannot be excluded on the basis of bias.” (citations
omitted)).14 Moreover, during his deposition, Dr. Wu flatly denied the accusation of bias
and stated that he had not even discussed his opinions with Dr. Pesce. (01/30/15 Wu
Dep. (dkt. #205) 89:12-21 (“Q. Did your relationship with Dr. Pesce impact your
opinions in this case? A. No.”).)
As such, plaintiffs’ motion to exclude Wu’s testimony
on the basis of bias is essentially frivolous.15
Second, plaintiffs contend that Dr. Wu’s opinions are unreliable because he
estimated that he only spent thirty hours working on the case. (Id. at 70:17-21.) Based
on this estimate, plaintiffs speculate that Dr. Wu’s opinions cannot be his own and, thus,
are unreliable.
Again, this argument is void of citation to case law, which is hardly
surprising since case law suggests that the amount of time Dr. Wu spent on this case is
Further, plaintiffs argue bias based on the fact that Dr. Wu is the laboratory director
for a pain management practice -- the Puana Pain Management Group -- that uses
Millennium as its reference laboratory, among other relatively insignificant accusations of
bias. (Pls.’ Br. (dkt. #247) 5.) Not only is the evidence of bias weak, but any evidence
of bias would again simply go to weight and does not serve as a basis to exclude Dr. Wu’s
testimony.
14
The court is hopeful that counsels’ predilection on both sides to “throw in the kitchen
sink” will end with their overblown motions in limine and unfiltered exhibit lists.
Regardless, the court will end any failure to reasonably narrow and refine their
submissions to the jury.
15
23
not a proper ground for exclusion. See Ernst v. City of Chi., 39 F. Supp. 3d 1005, 1011
(N.D. Ill. 2014) (“The thoroughness of [an expert’s preparation] goes to the weight of his
testimony rather than its admissibility.” (citation omitted)).
Particularly given that
plaintiffs do not dispute that Dr. Wu did spend 30 hours on his opinions in this matter,
the holding in Ernst generally seems sensible and certainly seems reasonable here.
Third, plaintiffs contend that Dr. Wu’s inability to recall at deposition a specific
document -- the reexamination certificate of the ’680 patent -- necessarily means that he
did not independently form his opinions or draft his expert reports.
(Pls.’ Br. (dkt.
#247) 8-11.) As an initial matter, this accusation does not entirely match the record.
Throughout the deposition, Dr. Wu testified that he was aware the patents-in-suit
underwent reexamination. (See, e.g., 01/30/15 Wu Dep. (dkt. #205) 182:4-7.) Dr. Wu
also testified that he had considered claims added during reexamination as part of his
analysis. (Id. at 213:1-17.)16
Even if Dr. Wu were unaware of the reexamination certificate, his inability to
recall the reexamination certificate would have marginal (if any) bearing on his opinions
under § 101 since the parties’ dispute on patent eligibility centered on claim 1 (which
was not amended during the reexamination process with respect to the ’680 patent).
And again, whether his opinions should be excluded for the purposes of the objective
Dr. Wu’s expert report also states that he considered the claims added during the
reexaminations of the patents-in-suit. (Dr. Alan H. Wu Rebuttal Report (“Wu Rebuttal
Rept.”) (dkt. #116) ¶¶ 62-70, 79-87) (assessing non-infringement of claims added during
reexaminations of the patents-in-suit).)
16
24
prong regarding willfulness, is mollified by the fact that this prong will not be heard by
the jury. See supra Section II.B.; infra Section IV.A.
Fourth, plaintiffs cite to testimony by Dr. Wu indicating confusion as to certain
legal terms and regarding areas in which he did not render opinions in his expert reports.
The court also finds such confusion more an issue of weight, than of exclusion.
See
Sunbeam Prods., Inc. v. Homedics, Inc., 670 F. Supp. 2d 873, 882-83 (W.D. Wis. 2009),
aff’d, 412 F. App’x 263 (Fed. Cir. 2010). To address briefly just one of the challenges
going to this issue, plaintiffs question Dr. Wu’s overall reliability because he “didn’t
know” the meaning of certain claim steps or claim terms.17 (Pls.’ Br. (dkt. #247) 7-8, 1617.)
As a result, plaintiffs now assert that Dr. Wu’s non-infringement opinions are
unreliable because he consistently opined that step (f) of the ‘680 claim is indefinite, but
did not know what the plain and ordinary meaning of step (f) was.
The court finds this attack essentially frivolous as well. During deposition, Dr.
Wu indicated that he only understood step (f) as meaning a dose or dose range.
(01/30/15 Wu Dep. (dkt. #205) 218:16-219:1 (“Q. Do you have an opinion if
Millennium practices step (f) of the asserted claims of the Larson's patent if the court
does not adopt your proposed claimed construction? A. If the court does not adopt my
interpretation that [step] (f) means finding a dose or a dose range, then I would have to
be told what [step] (f) means because it then becomes ambiguous. And, therefore,
without knowing what [step] (f) means, I can't answer your question.”).) In short, Dr.
Ameritox also pedantically argues that because Dr. Wu did not give opinions on
anticipation and obviousness in his report, his deposition testimony stating that he did
renders him unreliable.
17
25
Wu rendered no opinion on the plain and ordinary meaning of step (f) except that step
(f) was dose specific. Naturally, he found step (f) was indefinite. (Wu Invalidity Rept.
(dkt. #115) ¶ 26.) Because of this, there was no inconsistency between his expert report
and his deposition testimony. Indeed, the fact that Dr. Wu did not view the claims as
having meaning (other than “dose specific”) could be relevant for the “limited purpose of
demonstrating the reasonableness of Millennium’s interpretation of the ’680 patent
claims upon which a noninfringement determination would be based.” (Def.’s Opp’n
(dkt. # 351) 12); see also Douglas Dynamics, 747 F. Supp. 2d at 1113 (“[b]ecause the
claim language was susceptible to Buyers’ reasonable construction and acceptance of that
construction at most would have led to a finding of noninfringement (and at least have
created a very close call on infringement), there was no objectively high likelihood of
infringement.”)).
Fifth, plaintiffs contend that Dr. Wu’s opinions should be excluded as unreliable
because allegedly (1) Millennium selected the materials reviewed by Dr. Wu in forming
his opinions and (2) he conducted no independent investigation of the facts underlying
his opinions. (Pls.’ Br. (dkt. #247) 11-12.) As an initial matter, Millennium did not
select all of the materials Dr. Wu reviewed. As he explained at deposition, Dr. Wu asked
for “additional documents that [he] felt were necessary, or at least asked if they existed.”
(01/30/15 Wu Dep. (dkt. #205) 62:11-16.)
Even if Dr. Wu had only reviewed
documents provided by Millennium’s counsel, that alone would not render his opinions
so unreliable that they should be excluded. The case law cited in plaintiffs’ own brief
states as much. See R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244, 269 (S.D.N.Y. 2010)
26
(“Defendants urge that the testimony of plaintiff’s expert is inherently unreliable because
plaintiff’s counsel provided almost all of the data on which they based their opinions . . .
. Unless the information or assumptions that plaintiff’s experts relied on were ‘so
unrealistic and contradictory as to suggest bad faith,’ inaccuracies in the underlying
assumptions do not generally render an expert’s testimony inadmissible.”) (citing Zerega
Ave. Realty Corp. v. Hornbeck Offshore Transp., LLC, 571 F.3d 206, 214 (2d Cir. 2009)).
Since there is nothing in plaintiffs’ submissions supporting a finding of “bad faith,” any
notion that Dr. Wu’s opinions must be excluded because Millennium selected materials
for him to consider in forming his opinion is without merit.
Plaintiffs’ additional argument is that Dr. Wu’s opinions are unreliable because he
conducted no independent investigation since he acknowledged not doing any such
investigation.
(01/30/15 Wu Dep. (dkt. #205) 44:9-14. (“Q. What research or
investigation have you performed in the context of this litigation? A. I’ve done no
research
in
the
context
of
this
investigation.
I
have
rendered
opinions.”).)
Notwithstanding this, Dr. Wu is free to testify why this was not necessary, as well as to
his requests for Millennium to run literature searches on his behalf. (01/30/15 Wu Dep.
(dkt. #205) 63:17-64:24.)
The request for such searches demonstrates independent thought and cuts against
plaintiffs’ theory that he “considered only Millennium’s cherry-picked information to
parrot Millennium’s beliefs.” (Pl’s Br. (dkt #247) 11.) But even if he failed to request the
searches, and only accepted information provided by Millennium, the case law suggests
that this concern also goes to weight, “rather than . . . admissibility.” NutraSweet Co. v.
27
X-L Eng'g Co., 227 F.3d 776, 789 (7th Cir. 2000) (expert used data obtained by plaintiff's
hydrologists rather than data he generated himself, creating an issue of weight, not
admissibility).18
Sixth, plaintiffs make one final argument styled as a ‘catch all’ that essentially
accuses Dr. Wu of allowing his report to be ghost-written. (See, e.g., Pls.’ Br. (dkt #247)
8 (discussing “Wu’s substantial lack of participation in forming his opinions or drafting
his expert reports”).) This accusation stems largely from testimony already addressed
above. There is, however, no evidence in the record that would justify striking Dr. Wu’s
report altogether. To justify that result, plaintiffs would have to show that Millennium
exerted some level of undue influence or that Dr. Wu signed the opinion to appease
Millennium. See Trigon Ins. Co. v. United States, 204 F.R.D. 277, 292 (E.D. Va. 2001) (a
“distinction [exists] between those opinions that an expert ‘freely authorized and
adopted as his own’ and those that are done ‘merely for appeasement or because of
intimidation or some undue influence by the party or counsel who has retained him.’”).
The other cases that plaintiffs cite addressing this point are unavailing. Not only were
they district court cases from other circuits, but none was set in the context of patent
invalidity. Cf. R.F.M.A.S., Inc. v. So, 748 F. Supp. 2d 244, 257 (S.D.N.Y. 2010) (involves
expert calculating damages and not reviewing materials beyond those provided by
counsel); State Farm Fire & Cas. Co. v. Electrolux Home Prods., Inc., 3:08-CV-436, 2013 WL
5770343, at *5 (N.D. Ind. June 17, 2013) (expert calculating damages attributable to
fires caused by electrical goods where expert failed to verify data and cross-reference with
other sources); Hot Wax, Inc. v. Warsaw Chem. Co., 45 F. Supp. 2d 635, 638 (N.D. Ill.
1999) (expert being informed of a position by defendant’s company and basing his report
that wax existed in defendant’s product without further testing or verification).
18
28
That evidence does not exist here.19 Accordingly, Dr. Wu will be permitted to testify at
trial consistent with his written report.
III. Millennium’s Damages Defense
A. Motion to Exclude the Expert Testimony of Richard F. Bero, CPA, CVA
Proffered by Millennium Health, LLC (dkt. #274)
Plaintiffs seek to exclude the testimony of Millennium’s damages expert Richard
Bero as unreliable and irrelevant under Rule 702 and Daubert.
Plaintiffs’ challenge
centers on Bero’s analysis of the Georgia-Pacific factors and his conclusion of a reasonable
royalty rate in a hypothetical negotiation, positing three reasons to exclude Bero’s
testimony in whole or in part.
First, plaintiffs contend that Bero’s testimony on non-infringing alternatives to
Millennium’s RADAR report should be excluded because (1) he failed to prove the
existence of non-infringing alternatives available on the market during the time of the
hypothetical negotiation; and (2) Millennium admits no non-infringing alternatives exist.
In addition to the fifteen Georgia-Pacific factors, plaintiffs acknowledge that a jury may
also consider the existence of non-infringing alternatives when determining a reasonable
royalty. See Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1571-72 (Fed. Cir. 1996). This is in
recognition of the fact that an infringer in a hypothetical negotiation “would have been
in a stronger position to negotiate for a lower royalty rate knowing it had a competitive
noninfringing device ‘in the wings.’” Id.
Importantly, it is plaintiffs’ burden to show a
Plaintiffs’ cases are wholly inapposite. See, e.g., Numatics, Inc. v. Balluff, Inc., No. 1311049, 2014 WL 7211167, at *5 (E.D. Mich. Dec. 16, 2014) (the expert admitted that
counsel actually typed the expert’s reports and the stricken report adopted discovery
responses and invalidity contentions verbatim).
19
29
lack of noninfringing alternatives. Cohesive Techs., Inc. 543 F.3d at 1373 (“[T]he patent
owner must show either that (1) the purchasers in the marketplace generally were willing
to buy the patented product for its advantages, or (2) the specific purchasers of the
infringing product purchased on that basis.”) (quoting Standard Hvens Prods., Inc. v.
Gencor Indus., Inc., 953 F.2d 1360, 1373 (Fed. Cir. 1991)).
Millennium argues that plaintiffs are conflating two distinct questions:
(1)
whether there is no design-around for the patent-in-suit and (2) whether there is no noninfringing substitute.
In support, Millennium specifically takes issue with plaintiffs’
reliance on certain deposition testimony of Millennium’s President:
Q.
Does Millennium understand what steps would be
required or necessary to design around the patents-in-suit?
...
A. Again, that’s a hard question to answer, because we
haven’t done any work to do any design-around.
(Deposition of Howard Appel (dkt. #201) 66; see also Pls.’ Mot. to Exclude Bero, Ex. D
(dkt. #275-4) (responding to interrogatory 24: “Millennium states that it has not
attempted to design-around the patents-in-suit.”).) As Millennium correctly points out,
this testimony concerned Millennium’s efforts to design around the patents in suit, not
whether there were non-infringing alternatives. (Def.’s Resp. (dkt. #354) 9 p.5.) As
such, the court rejects plaintiffs’ argument that Millennium has somehow conceded that
there are no non-infringing alternatives.
Relatedly, Millennium is right to criticize plaintiffs’ position that the “only
possible acceptable noninfringing substitute would be a urine drug test report delivering
30
range-based results.” (Def.’s Opp’n (dkt. #354) 9.) “[A] noninfringing substitute need
not have the patented feature in order to be deemed ‘acceptable.’” Apple, Inc. v. Samsung
Elecs. Co., No. 11-CV-01846-LHK, 2013 WL 5958178, at *2 (N.D. Cal. Nov. 7, 2013);
see also SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161, 1166 (Fed. Cir.
1991) (“[Plaintiff] argues in effect that the noninfringing products lacked one or more
features of the patented invention and, therefore, would not be deemed part of the
market. However, by definition, noninfringing products do not represent an embodiment
of the invention.”). Still, plaintiffs are correct in asserting that “buyers must view the
substitute as equivalent to the patented device.” (Pls.’ Br. (dkt. #275) 7 (quoting Am.
Seating Co. v. USSC Grp., Inc., 514 F.3d 1262, 1270 (Fed. Cir. 2008)).)
Whether the jury will accept Millennium’s RADAR report without graphed results
of a normalized population of comparable drug users as a noninfringing alternative is not
for the court to determine. See Am. Seating Co., 514 F.3d at 1270. Rather, it will be up
to the jury to determine whether the RADAR report within the range-based results
“possess[es] characteristics significantly different” from the patented product so as not to
be an acceptable substitute. Cent. Soya Co., Inc. v. Geo. A. Hormel & Co., 723 F.2d 1573,
1579 n.4 (Fed. Cir. 1983). At least at this stage, Millennium has also put forth sufficient
evidence that it sells a product without the graphed or range-based results to allow Bero’s
testimony about the availability of this purported non-infringing alternative to go to the
jury. (Def.’s Opp’n (dkt. #354) 12.) Accordingly, the court rejects Ameritox’s first basis
for excluding Bero’s testimony.
31
Second, plaintiffs take issue with Bero’s lump-sum annual royalty analysis, arguing
that Bero improperly converted a running royalty as the starting point for determining a
reasonable royalty under a hypothetical negotiation. The first two Georgia-Pacific factors
consider “[t]he royalties received by the patentee for the licensing of the patent in suit,
proving or tending to prove an established royalty” and “[t]he rates paid by the licensee
for the use of other patents comparable to the patent-in-suit.” 318 F. Supp. at 1120.
Under these factors, however, the trier of fact may decide “whether the licensor and
licensee would have agreed to a lump-sum payment or instead to a running royalty based
on ongoing sales or usage.” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1326 (Fed.
Cir. 2009).
As the Lucent court explained, there are “[s]ignificant differences” between a
running royalty license and a lump-sum license, in part because under the latter, “the
licensee is obligated to pay the entire, agreed-upon amount for the licensed technology,
regardless of whether the technology is commercially successful or even used.” Id. On
the flip side, if the licensed technology is “wildly successful, . . . the licensee may have
acquired the technology for far less than what later proved to be its economic value.” Id.
In reaching his opinion, Bero relied on the lump-sum annual royalty for the
infringed product entered into between Ameritox and Marshfield Clinic. In contrast,
Ameritox’s expert as described below relies on a running royalty licensing arrangement
with U.D. Testing, Inc. See supra Section IV.B. Plaintiffs argue that Ameritox assumed
certain risk in entering into the licensing agreement with Marshfield Clinic on the patent
in suit, resulting in “Ameritox paying less expensive royalties to Marshfield than it was
32
paying to U.D. Testing.” (Pls.’ Br. (dkt. #275) 13.) As an initial matter, Millennium is
correct to point out that the Marshfield licensing agreement is different from the
traditional lump-sum royalty challenged in other cases.
The Marshfield licensing
agreement involves smaller payments on an annual basis, rather than an up-front lump
sum payment. Even putting this distinction aside, plaintiffs are free to present to the
jury their argument that Bero failed to account for the risk involved in the Marshfield
licensing agreement in converting that licensing arrangement to a running royalty rate,
but that does not render Bero’s opinion unreliable; rather, any criticisms of relying on a
licensing agreement which provided for annual lump-sum payments are ripe grounds for
cross-examination and go to the weight to be given Bero’s testimony by the jury.20
Plaintiffs also take issue with Bero’s methodology in converting a lump-sum
annual royalty license to a running royalty. The focus of this argument again concerns
whether Bero adequately considered the risk assumed by Ameritox in entering into the
licensing agreement with Marshfield. So, too, is the court’s ruling: while fodder for
cross-examination, this criticism does not render Bero’s report unreliable or otherwise
serve as a basis for excluding his testimony under Rule 702 or Daubert. Ultimately, it will
be for Bero to explain, and the parties to argue over, whether that agreement applies to
the facts of this case. Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10, 30 (Fed. Cir.
2012) (“[L]ump sum payments similarly should not support running royalty rates
without testimony explaining how they apply to the facts of the case.”).
This is yet another example of a fairly rudimentary principle of evidence. The court
will expect more of counsel going forward.
20
33
Third, related to plaintiffs’ motions to exclude evidence on commercial success
(dkt. ##294, 296), plaintiffs seek to exclude Bero’s testimony on the lack of commercial
success of Ameritox’s Guardian Rx CD product. If the court allows commercial success
testimony generally, plaintiffs contend in the alternative that the court should still
exclude testimony on the commercial success of the Guardian product as unreliable, since
Bero simply adopted another expert’s opinions without conducting any independent
investigation. Bero, however, testified at his deposition to his (or his office’s) analysis of
the data provided in the other expert’s report, and indicated in his own report that he
reviewed other experts’ reports, including those of plaintiffs’ experts, in reaching his
conclusions on the commercial success (or lack thereof) of Ameritox’s products,
presumably including Guardian. (Def.’s Opp’n (dkt. #354) 19.) Moreover, as an expert,
Bero can rely on information for which he does not have first-hand knowledge.
See
Daubert, 509 U.S. at 592 (“Unlike an ordinary witness, see Rule 701, an expert is
permitted wide latitude to offer opinions, including those that are not based on firsthand
knowledge.”).
Finally, plaintiffs argue that evidence as to Factor 8 of the Georgia-Pacific analysis
(concerning the profitability of the patented product, its commercial success and its
current popularity) should be excluded on relevance grounds because both experts opine
that the factor is neutral. While Millennium concedes that there is no dispute as to the
weight that should be given this factor, the court agrees with Millennium that Bero’s
testimony on this factor is still relevant because “even though [both experts] concluded
the factor was neutral in their own analysis, it is not necessarily the case that Millennium
34
agrees that the factor is neutral in relation to the starting point of Plaintiffs’ expert.”
(Def.’s Opp’n (dkt. #354) 21.) Moreover, the jury is allowed to weigh the credibility
and analysis of the sides’ experts on all Georgia-Pacific factors, including those on which
they may ultimately agree.
Accordingly, the court will deny Ameritox’s motion to exclude the testimony of
Millennium’s damages expert Richard Bero.
B. Twelfth Motion in Limine: Preclude Both Parties from Presenting
Evidence Concerning Georgia-Pacific Factor 8 (dkt. #294)
As explained above, Ameritox also seeks an order precluding both parties from
presenting evidence concerning Georgia-Pacific Factor 8. For the reasons explained above,
the court agrees with Millennium that even though both experts find this factor to be
neutral, Millennium’s expert should be allowed to describe how the factor is not neutral
with respect to Ameritox’s starting royalty rate of $6.00 per accused sample.
As for plaintiffs’ concern that this evidence will turn into a “sideshow involving
tangential issues already litigated in the prior Florida litigation” (Pls.’ Twelfth Mot. (dkt.
#294) 3), it is largely unwarranted. As far as the court can discern, Factor 8 concerns the
patented product’s commercial success at the time of the start of infringement, not the
infringing product’s subsequent commercial success, and therefore Millennium’s
subsequent market performance and the reasons for that performance are not relevant, at
least with respect to that factor. Of course, Millennium’s success in selling the RADAR
reports and the reasons for that success -- in particular, the disputed importance of nonpatented components of the invention -- are relevant to Factor 13 (concerning the
35
portion of profits attributable to the patented invention), but that “sideshow” is not
avoided by excluding evidence as to Factor 8; in any event, the court will expect counsel
to be as brief and to the point as possible on all factual issues at trial, and it will entertain
cumulative or relevance objections if any party goes too far afield or is repetitive. The
court sees no basis for excluding all evidence on this factor before trial, however.
Accordingly, the court will deny Ameritox’s twelfth motion in limine as well.
C. Fourteenth Motion In Limine: Exclude Millennium’s Test Drive Data
(dkt. #296)
Citing to Federal Rules of Evidence 403, 802 and 803, plaintiffs seek an order
excluding evidence of customers’ opinions based on “test drives” of Millennium’s
RADAR report product. Beginning in 2009, Millennium offered these “test drives” so
that the potential customer could appreciate the service Millennium offers. The results
of these test drives -- whether the potential customer chose Millennium or another
laboratory and the reason or reasons for the customer’s decision -- were collected in
spreadsheets. (Declaration of Mark T. Smith, Ex. O (dkt. #307-15).) Given customer
statements suggesting that turnaround time, customer service, and the ability to test with
less urine were the drivers for customers’ decisions, Millennium points out that the
“graphed results” are mentioned only three times in 435 lines of test drive information.
(Def.’s Opp’n (dkt. #338) 3.) Millennium’s damages expert Bero relied in part on this
data, along with other sources of information, to opine that customers select
36
Millennium’s RADAR report for other reasons than the graphed results. Millennium
contends that this information is pertinent to Factor 8 of the Georgia-Pacific factors.21
Plaintiffs contend that this “data presents two levels of hearsay:
(1) the
customer’s statement to a Millennium sales representative, and (2) the sales
representative’s entries into the spreadsheet.” (Pls.’ Fourteenth Mot. (dkt. #296) 2.) As
to the customer’s statements, plaintiffs simply argue the statements do not fall within
any of the hearsay exceptions. In response, Millennium directs the court to cases in
which courts, including the Seventh Circuit, have held that customer survey responses
fall within the state of mind exception to hearsay under Federal Rule of Evidence 803(3).
See Grove Fresh Distribs., Inc. v. New Eng. Apple Prods. Co., 969 F.2d 552, 556 (7th Cir.
1992); see generally 6 McCarthy on Trademarks and Unfair Competition § 32:168 (4th
ed. 2014) (“[C]ases are now unanimous that evidence of the state of mind of persons
surveyed is not inadmissible as hearsay.”). (See also Def.’s Opp’n (dkt. #338) 6 (citing
cases).) As Millennium also argues, the customer statements need not be admitted for
the truth of the matter asserted to be probative. Instead, the evidence collected up until
June 2011 (the date of the hypothetical negotiation) could be relevant to “demonstrating
Millennium’s understanding of market drivers” going into negotiations, regardless of
whether the customers’ purported reasons for selecting Millennium or one of its
competitors were the true reasons. (Id. at 8.)
As for the second basis, plaintiffs anticipate Millennium’s response that the
spreadsheet itself falls within the business record exception under Rule 803(6), arguing
21
Once again, the court questions whether this evidence goes to Factor 8, but still finds it
arguably relevant to the jury’s consideration of Factor 13.
37
instead that the evidence is “anecdotal, subjective, unverified and unused” and, therefore,
is not “trustworthy.” (Pls.’ Fourteenth Mot. (dkt. #296) 3.) While the spreadsheets
may contain anecdotal and subjective information that Millennium’s President does not
use in the course of his duties, Millennium represents that it will present evidence
through a qualified witness that the test drive spreadsheets were “made at or near the
time by -- or from information transmitted by -- someone with knowledge,” were “kept in
the course of a regularly conducted activity of” Millennium, and were made as “a regular
practice” of Millennium. (Def.’s Opp’n (dkt. #338) 8-9.) Assuming Millennium can lay
this foundation, the court sees no basis to prohibit consideration of this evidence
altogether, although plaintiffs are welcome to challenge its probative value given the
arguable incentive that Millennium had even then to elicit helpful responses.
D. Eighth Motion in Limine: Exclude Argument that Removing the
Infringing Graphed Results is a Non-Infringing Substitute and Evidence
of Millennium’s Alleged “Revised Report” (dkt. #287)
Plaintiffs seek an order barring Millennium from introducing into evidence revised
RADAR reports, which consistently offer no graphed results, or otherwise arguing to the
jury that these revised reports are an acceptable non-infringing alternative.
Plaintiffs
posit three core reasons for this motion: (1) the RADAR report without the comparative
graph does not constitute a non-infringing substitute or alternative; (2) Millennium failed
to disclose this revised graph before the close of discovery; and (3) any probative value of
these reports would be outweighed by unfair prejudice to Ameritox and confusion of the
jury.
38
On the first issue, as explained above, whether the RADAR report without the
comparative graph constitutes an acceptable substitute is a question of fact for the jury to
consider.22 See supra Section III.A. While plaintiffs maintain that customers buy the
RADAR Report for that comparative graph, Millennium represents that 54% of issued
RADAR reports do not contain the accused graph. (Def.’s Opp’n (dkt. #334) 4 (citing
Declaration of Mark T. Smith, Ex. J (dkt. #307-10) Suppl. Answ. No. 7); see also
Declaration of Rebecca Mandel, Ex. 18 (dkt. #360-18).) Ultimately, it will be up to the
jury to decide whether reports without comparative graphs constitute acceptable
substitutes.
Millennium also seeks to introduce a newly-revised RADAR report that it recently
created, produced and filed.
(Revised RADAR Report (dkt. #325-1).)
Millennium
contends that it produced this report on the heels of the court’s March 6, 2015, opinion
and order and rolled it out to customers on March 9th.
(Notice Regarding Revised
RADAR Report (dkt. #325).) In response to plaintiffs’ claim that the revised report is
untimely, having been produced after the close of discovery on February 27, 2015,
Millennium contends that Rule 26(e) contemplates supplementation of discovery
responses up to the time of trial. Millennium’s reliance on that section is odd, since it
applies to mandatory disclosures of incomplete or incorrect responses, and its previous
Plaintiffs also appear to agree that a RADAR Report revised to remove a comparative
graph is non-infringing. Regardless, that would almost certainly be a question for the
court alone, given its finding that the original RADAR Report infringed as a matter of
law, so that if in dispute the issue could be argued to the court after the jury proceeds to
deliberate on invalidity.
22
39
disclosures were apparently neither until after the close of discovery.
As a result,
Millennium’s disclosure obligation was certainly not untimely.
Putting aside this issue, Millennium has nevertheless failed to demonstrate why
this report (as opposed to the previously disclosed, long-offered reports) is relevant to its
reasonable royalty calculation.
Millennium appears to concede it is not, contending
instead that the March 2015 revised report is relevant to willfulness because it
demonstrates that Millennium “ceased using the accused graphed portions of the
RADAR Report promptly after this Court rejected Millennium’s claim construction.”
(Def.’s Opp’n (dkt. #334) 9.) The fact that Millennium changed its behavior after the
court found infringement, however, is not relevant to the jury issue on willful
infringement:
whether the “objectively-defined risk [of infringement] . . . was either
known or so obvious that it should have been known to the accused infringer.” In re
Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc).
Finally, Millennium contends that the creation of this new report is relevant to the
jury’s calculation of damages because it creates an end date -- the date on which
infringement ceased. On this much, the court agrees. Millennium may submit testimony
and evidence establishing that it ceased production of the infringing report on March 9,
2015. Accordingly, plaintiff’s motion is denied in part and granted in part. Millennium
may submit evidence and introduce argument about the timely-produced, long offered
RADAR reports that do not contain the graphed results as evidence of a non-infringing
substitute during the damages phase of the trial. Millennium may also produce evidence
and testimony that it ceased production of the infringing report on or about March 9,
40
2015, for purposes of arguing for an end date for any damages calculation. In all other
respects, plaintiff’s motion is granted.
E. Ninth Motion in Limine: Exclude Evidence that Millennium Customers
Can Opt Out of Receiving Graphed Results and Argument that the
Number of Infringing Products Is Inflated (dkt. #291)
Plaintiffs seek an order excluding: (1) evidence that Millennium’s customers could
opt out of receiving a RADAR report without comparative graph results; and (2) any
argument by Millennium that the number of infringing products is inflated, on the basis
that Millennium could have tracked the number of customers who opted out of receiving
the infringing graphed results, but failed to do so. Given its failure to track opt-outs,
plaintiffs contend that any uncertainty in the amount of infringing sales must be
construed against Millennium. (Pls.’ Ninth Mot. (dkt. #291) 2-3 (citing cases).) For the
same reasons, plaintiffs further argue that Millennium should not be allowed to introduce
evidence that Millennium’s customers have the ability to opt out of receiving graphed
results, because that would invite the jury to speculate as to the number of non-infringing
products sold.
In response, Millennium concedes that it did not track the type of report it sold
on an ongoing basis between June 2011 to March 17, 2012, but was able to “derive” the
number of RADAR reports issued with graphed results, and from that, was able to
estimate the breakdown of graphed versus ungraphed reports over the course of the
infringing period. (Def.’s Opp’n (dkt. #335) 2-3.) The court agrees with Millennium
that as long as a witness -- likely Diane Hancock, Director of Engineering at the time of
41
implementation of the accused graphs -- provides an adequate foundation for this
analysis, Millennium is free to introduce both evidence that it sells a RADAR report
without the graphed results and the estimated breakdown of reports with and without the
graphed results during the infringing period.
Ameritox remains free to challenge the
weight the jury should give to this estimation through cross-examination. Plaintiffs are,
of course, free to argue that any uncertainty or confusion as to the amount of
Millennium’s sales of RADAR reports containing the graphed results should be construed
against Millennium for failing to keep precise records of such sales. Plaintiffs may also
provide the court with legal authority for a jury instruction to the same effect outside the
context of spoiliation, which they have not shown. Accordingly, the court will deny this
motion in limine.
F. Tenth Motion in Limine: Exclude Evidence that Other Companies Do or
Do Not Offer Graphed Results (dkt. #292)
Plaintiffs seek an order excluding evidence of other companies offering reports
that do or do not contain graphed comparative results, but fails to develop any argument
in support of this motion. Moreover, as Millennium points out, this evidence is relevant
to several damages considerations, including whether the claimed invention was a sales
driver in the market, the availability of noninfringing alternatives, and how consumers
make purchasing decisions.
The court finds no basis for plaintiffs’ concern that this
evidence will result in mini-trials about whether other parties are infringing, especially
since infringement is no longer at issue in this case. Even if such a concern had merit, it
is outweighed by the probative value of this evidence. The court also denies plaintiffs’
42
motion to the extent that they open the door as to secondary considerations of
obviousness. (See Def.’s Opp’n (dkt. #336) 2.).
G. Eleventh Motion in Limine: Exclude Testimony or Evidence Concerning
Ameritox’s Investors (dkt. #293)
Plaintiffs seek an order excluding evidence pertaining to Ameritox’s investors, in
particular Bain Capital. In response, Millennium indicates it has no intent to submit this
evidence, but does seek clarification as to two pieces of evidence it intends to submit.
First, Millennium intends to introduce testimony and evidence that the former President
of U.D. Testing, Robert Bennett, who signed the license agreement between Ameritox
and U.D. Testing, obtained a 25% ownership stake in Ameritox subsequent to the
execution of that license agreement. Because plaintiffs’ damages expert relies on that
license agreement, Millennium asserts without explanation that “[t]his evidence bears
directly on the comparability (or lack thereof) of the U.D. Testing license to the
hypothetical negotiation.” (Def.’s Opp’n (dkt. #337) 2.) This argument seems a bit of a
stretch, since Millennium offers no evidence that Bennett: (1) planned to obtain an
interest in Ameritox at the time he negotiated the license for U.D. Testing; or (2)
received his interest for less than full value. Absent such details, Bennett’s subsequent
acquisition of an ownership interest in Ameritox could just as easily suggest how much he
values its technology, as he obtained a deal that was not arms-length. In case the court is
missing some nuance to Millennium’s argument, the court will reserve on this particular
issue pending further argument at the final pretrial conference.
43
Second, Millennium seeks to introduce a report prepared by Bain & Company as
a consultant for Ameritox in 2010, shortly before the date of the hypothetical
negotiation. Bain & Company appears to be a separate entity from Bain Capital. See
“Bain & Company,” Wikipedia (last visited Mar. 26, 2015) (“Bain & Co. is an entirely
separate entity from Bain Capital. Bain Capital is a private investment firm specializing
in private equity (PE), public equity, leveraged debt asset, venture capital, and absolute
return investments. Bain Capital does not provide management consulting services to its
clients.”). Regardless, Millennium may introduce this report without needing to make
any reference to the fact that Bain Capital is an Ameritox investor.
Accordingly, the court will grant as unopposed Ameritox’s eleventh motion in
limine, reserving on the issue of whether Millennium may introduce evidence or
testimony that the former President of Testing became an investor in Ameritox after the
parties entered into a license agreement.
H. Millennium’s Motion in Limine to Exclude Expert Testimony of Carl D.
Degen (dkt. #303)
Millennium asserts two main reasons for the motion: (1) Degen’s testimony is
unreliable because he failed to apportion the reasonable royalty to the patented
invention, ignoring the entire market rule; and (2) Degen’s testimony on the U.D.
Testing License should be excluded because it rests on unreliable underlying information.
Millennium’s motion actually conflates two concerns.
The first is that Degen
failed to consider the fact that Millennium sells products without the graphed results, but
that does not impact the royalty rate analysis. Instead, that information may be relevant
44
to the jury’s overall determination of the royalty base.
The second concern is that
Degen failed to account properly for that portion of the royalty rate not attributable to
the patented invention.
This dispute is really about whether Degen could rely on the
underlying license as a starting point to calculate a reasonable royalty for the patented
invention or whether that license is for a broader product. Millennium is certainly free to
cross-examine Degen on this issue or otherwise argue that the $6 royalty rate used in the
U.D. Testing product reflects an entire product, and not just the value of the patented
invention. In particular, Millennium may challenge the basis for Degen’s understanding
that the other rights conveyed in the U.D. Testing License were included at no additional
cost, or that the upfront $2 million payment covered those other rights, as well as
challenge his ultimate conclusion that $6 per sample fee is an accurate reflection of the
value of the patented technology alone.
Ultimately, however, whether the RADAR reports with graphed results contain
other information may not matter since the royalty rate under the U.D. Testing license
appears to be for technology comparable to that of the patented invention.
While
Millennium is free to offer evidence and argue otherwise, that argument goes to weight,
not admissibility.
I. Millennium’s Motion in Limine to Exclude Improper Testimony
Regarding the U.D. Testing License (dkt. #276)
Relatedly, Millennium seeks to exclude testimony from two witnesses, Harry
Leider and Todd Gardner, regarding Ameritox’s license negotiation and subsequent
license agreement with U.D. Testing, Inc., on the basis that neither has personal
45
knowledge regarding this topic as required by Rule 602.23
Millennium also seeks to
exclude Carl Degen from purporting to rely on conversations with these two individuals
in forming his reasonable royalty calculation.
The crux of Millennium’s argument is that neither Leider nor Gardner was an
Ameritox employee at the time of the negotiation and execution of that licensing
agreement in 2005, and more importantly, they both testified during their respective
depositions that they lacked knowledge about the licensing agreement because it
predated both of them. (Def.’s Br. (dkt. #352) 4-8.) In response, plaintiffs contend that
during the course of Dr. Leider’s employment with Ameritox, he has developed
knowledge about U.D. Testing’s technology at the time of the negotiation, in particular
its commercial readiness, and it is that knowledge Degen is relying upon for purposes of
his royalty opinion. At the very least, plaintiffs contend that they should be afforded an
opportunity to lay the foundation for Leider’s personal knowledge of the U.D. Testing
license and Degen’s reliance on it. The court agrees. Plaintiffs should make an advance
proffer as to Leider’s personal knowledge of the commercial readiness of U.D. Testing’s
technology in and around March 2005, as well as how that knowledge relates to those
who actually negotiated the license.
As for Gardner, plaintiffs contend that in his role as Chief Financial Officer and
Chief Operating Officer since April 2006, Gardner has personal knowledge of Ameritox’s
performance under the U.D. Testing license and can also testify about Ameritox’s
consideration of the licensing agreement in its negotiations with Marshfield on the
Gardner was Ameritox’s corporate designee under Rule 30(b)(6) on the topic of any
license between Ameritox and U.D. Testing, among other topics.
23
46
licensing of the patent-in-suit. The court agrees that this appears to be a proper area of
testimony for Gardner and will not exclude it on 602 grounds. Plaintiffs further contend
that “Gardner’s high-level position as the Chief Operating Officer has provided him with
admissible personal knowledge of the UDT License and terms thereof even though he
may have learned this information from another source.” (Pls.’ Opp’n (dkt. #352) 8.)
This contention will also require an advance proffer for the court to assess.
Accordingly, the court will reserve on Millennium’s motion to exclude Leider and
Gardner’s testimony. Moreover, if Ameritox fails to submit admissible evidence forming
the basis of Degen’s opinion testimony on the UD Testing license agreement, the court
will entertain a renewed motion by Millennium to strike that testimony as well.
IV. Plaintiffs’ Willful Infringement Claim
A. Motion in Limine to Exclude Evidence of Claimed Willful Infringement
(dkt. #278)
Plaintiffs have alleged and intend to pursue at trial a claim that defendants’
infringement was willful, thereby permitting (but not requiring) the court to award
enhanced damages. 35 U.S.C. § 284 (“[T]he court may increase the damages up to three
times the amount found or assessed.”); Beatrice Foods Co. v. New Eng. Printing &
Lithographing Co., 923 F.2d 1576, 1578 (Fed. Cir. 1991) (“It is well-settled that
enhancement of damages must be premised on willful infringement or bad faith.”)
(citations omitted).
Millennium seeks to exclude any evidence or argument on
Ameritox’s willfulness claim on the basis that Ameritox cannot meet the threshold of the
objective inquiry for willfulness as a matter of law. Alternatively, Millennium asks the
47
court to prohibit Ameritox from introducing this evidence until after the jury has
deliberated on liability.
To establish willful infringement, Ameritox “must show by clear and convincing
evidence” that (1) “the infringer acted despite an objectively high likelihood that its
actions constituted infringement of a valid patent,” and (2) “this objectively-defined risk .
. . was either known or so obvious that it should have been known to the accused
infringer.” In re Seagate Tech., 497 F.3d at 1371. This motion in limine concerns the first
prong -- the “objective determination of recklessness” -- which is a question for the court,
not the jury. Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003,
1006-07 (Fed. Cir. 2012).
“[T]he ‘objective’ prong of Seagate tends not to be met where an accused infringer
relies on a reasonable defense to a charge of infringement.”
Id. at 1005-06 (internal
citation and quotation marks omitted); see also Spine Solutions, Inc. v. Medtronic Sofamor
Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010) (overturning jury’s finding of
willful infringement, finding that defendant raised a “substantial question as to the
obviousness” of the patent in suit); Douglas Dynamics, 747 F. Supp. 2d at 1112 (granting
summary judgment on willful infringement claim where there was “reasonable difference
of opinion” and a “close question”).
Millennium contends that plaintiffs cannot meet the objective prong of willful
infringement with regard to the ’680 patent because its § 101 defense and alternative
claim construction (as well as its related defenses of noninfringement, enablement, and
utility) were objectively reasonable.
As an initial point, plaintiffs respond that
48
Millennium’s § 101 defense cannot protect it from a willful infringement claim after the
Supreme Court’s decision in Alice Corporation v. CLS Bank International, 134 S. Ct. 2347
(2014), decided three years before the infringement at issue here. While the court cited
several recent cases in its discussion of Millennium’s § 101 challenge in the court’s
summary judgment opinion, the core requirement that an invention must supply a “new
and useful” result to be patent eligible dates back to the nineteenth century. See Le Roy v.
Tatham, 55 U.S. 156, 159 (1852). As such, the court rejects plaintiffs’ argument that
Millennium cannot rely on a § 101 defense to rebut a claim that its position was not
objectively reasonable.
While the court agrees with Millennium that it may consider whether its § 101
defense was objectively reasonable, the court declines to do so at this time. Instead, the
court will hear the evidence presented at the liability phase of the trial -- and perhaps
evidence while the jury is deliberating on liability that goes specifically to willful
infringement -- before determining whether Millennium’s § 101 defense was objectively
reasonable.
As for Millennium’s argument that its claims construction was also objectively
reasonable, the court declines to decide the issue on the eve of trial. As described in the
court’s opinion granting plaintiffs’ summary judgment on infringement of the ‘680
patent described, Millennium’s defense primarily relied on an argument that it does not
know the actual dosage taken by those individuals making up the comparison population.
(3/6/15 Op. & Order (dkt. #256) 3 n.1.) Even if Millennium’s argument that the patent
claims (rather than the examples in the specification) disclose a comparison population
49
for a known prescribed dose, Millennium presents no credible basis to hold that the
patent also claims known actual dosage for the comparison population, much less
expressly narrows its claims in that way. (Id. at 4.) Moreover, Millennium’s utility and
enablement defenses -- both of which it is no longer pursuing -- focus on its failed claims
construction argument for the “quantifying” step. As described in the court’s summary
judgment decision, Millennium’s claims construction was deeply flawed (2/19/15 Op. &
Order (dkt. #215) 24-27), making it difficult for Millennium to overcome Ameritox’s
evidence that Millennium’s construction of step (f) was not objectively reasonable.
In its motion, Millennium also seeks an order prohibiting any evidence of willful
infringement until after the jury has determined liability. As described above, the court
has already granted that request. See supra Section I. As for Millennium’s remaining
request, the court will reserve on the issue of whether Ameritox has demonstrated
through clear and convincing evidence that Millennium acted despite an objectively high
likelihood that its actions constituted infringement of a valid patent at least until the
close of evidence on the liability phase of trial. To the extent necessary, the court will
hear any additional testimony on the objective prong of the willful infringement claim
while the jury is deliberating on validity.
B. Motion in Limine to Preclude Certain Expert Testimony of Dr. Paul J.
Orsulak (dkt. #283)
Millennium seeks an order excluding plaintiffs’ liability expert, Dr. Paul Orsulak,
from testifying in the willful infringement part of this trial. Millennium contends that
Dr. Orsulak’s opinion on willfulness is simply a “regurgitation of the documentary
50
record,” namely the timeline of Millennium’s awareness of the ‘680 patent and its
development of the RADAR report, “culminating in Dr. Orsulak’s one paragraph opinion
that it ‘looks like’ Millennium’s launch of the RADAR Report was ‘suspiciously quick.’”
(Def.’s Mot. (dkt. #283) 4 (quoting Orsulak Rebuttal Report (dkt. #118) ¶ 213).)
Millennium posits three main reasons for excluding this testimony: (1) Dr. Orsulak was
not disclosed -- and plaintiffs disavowed his role -- as an expert on willfulness; (2) the
testimony falls outside of his areas of expertise; and (3) such testimony would be
substantially more prejudicial than probative under Rule 403.
In response, plaintiffs explain that they simply disavowed offering Dr. Orsulak’s
opinion on Millennium’s subjective intent or state of mind, but that they reserved the
possibility of calling Dr. Orsulak to testify about Millennium’s “awareness and copying of
the Rx Guardian CD product, and Millennium’s timeline to launch the infringing
service.” (Pls.’ Opp’n (dkt. #340) 1 (emphasis removed).) Plaintiffs further argue that
these areas fall within Dr. Orsulak’s area of expertise and are relevant to plaintiffs’ willful
infringement claim.
The court agrees with Millennium that the Dr. Orsulak’s recitation of the
documentary record is not helpful to the trier of fact, even if it is necessary to involve the
jury in a willfulness determination.
Expert testimony will not assist the jury in its
consideration of the timing of Millennium’s knowledge of the ’680 patent and its actions
in developing the RADAR Report to determine whether the “objectively-defined risk [of
infringement]. . . was either known or so obvious that it should have been known to the
accused infringer” -- the subjective prong of the willful infringement claim. Accordingly,
51
the court will grant this motion in limine, but will allow Dr. Orsulak to testify briefly to
the court on the objective prong.
V. Millennium’s Willful Infringement Defense
A. Plaintiffs’ Third Motion in Limine: Exclude Advice of Counsel Defense
(dkt. #280)
Plaintiffs contend that Millennium waived its advice of counsel defense through
its President Howard Appel’s testimony that he had no knowledge that Millennium
sought any sort of advice concerning potential infringement.
#280) 2.)
(Pls.’ Third Mot. (dkt.
Plaintiffs also request that the court bar any testimony “related to
Millennium’s belief concerning infringement or the validity of the asserted patent,” since
that “necessarily implicates advice of counsel” as well. (Id.)
In its response, Millennium does not object to the core of plaintiffs’ motion,
stating that it does not intend to raise an advice of counsel defense.
however, opposes the second part of Ameritox’s motion.
Millennium,
The court agrees with
Millennium that plaintiffs’ attempt to block all evidence or testimony concerning
Millennium’s belief of noninfringement or invalidity of the ‘608 patent goes too far.
Accordingly, the court will grant in part and deny in part this motion in limine.
Millennium will not be allowed to present evidence or argue that it relied on the advice
of counsel -- a defense it has disavowed -- but Millennium may present evidence and
testimony during the second phase of trial with regards to its belief that the ‘680 patent
was invalid and the RADAR report did not infringe that patent. The court will await
52
further argument from counsel, but it appears that this evidence and testimony goes to
the objective prong of the willful infringement claim.
B. Plaintiffs’ Seventh Motion in Limine: Exclude Evidence Concerning the
Alleged Reasonableness of Millennium’s Litigation Defenses, Argument
that Plaintiffs Must Prove Copying to Prove Willfulness, and Any
Mention of Potential Treble Damages (dkt. #286)
This motion covers three separate areas of evidence and testimony.
First,
plaintiffs seek to exclude evidence concerning the alleged reasonableness of Millennium’s
litigation defenses. The court agrees that this evidence should be excluded from the jury
because it goes to the objective element of the willful infringement claim, which is a
question for the court, not the jury. The court, however, will consider this issue while
evidence is presented to the jury on liability. To the extent the parties wish to submit
additional evidence solely concerning the objective prong of the willful infringement
claim, the court will also hear that evidence while the jury is deliberating on liability.
Accordingly, the court will grant this portion of the motion as to introduction of this
evidence to the jury, but deny it in all other respects.
Second, plaintiffs seek to exclude any argument that Ameritox “must prove
Millennium copied Ameritox’s Rx Guardian CD service to prove willful infringement.”
In support of this motion, plaintiffs contend that the proper inquiry is not whether the
defendant copied a competitor’s commercial embodiment, but rather whether they knew
or should have known that it was infringing a valid patent. As Millennium points out,
however, copying an alleged invention can form the basis of a willful infringement
finding.
(Def.’s Opp’n (dkt. #347) 7 (citing Knorr-Bremse Systeme Fuer Nutzfahrzeuge
53
GmbH v. Dana Corp., 383 F.3d 1337, 1348-49 (4th Cir. 2004) (“There are many
circumstances that may create an appropriate predicate for a finding of willful
infringement, and hence punitive damages, including deliberate copying . . . .”)).) If
plaintiffs open the door by presenting evidence that Millennium copied the Rx Guardian
CD product, then Millennium is of course free to put forth evidence refuting this claim.
Ultimately, however, the jury will be instructed on the proper standard for considering
the subjective prong of the willful infringement claim, which does not require a finding of
copying. Accordingly, the court will grant in part and deny in part the second portion of
this motion.
Third, plaintiffs seek an order barring Millennium from informing the jury that a
willfulness finding comes with a potential trebling of damages, citing Rules 402 and 403.
Millennium opposes this portion of the motion, arguing that this information is
appropriate, citing pattern jury introductory instructions informing the jury of the
possibility of treble damages upon a finding of willful infringement. (Def.’s Opp’n (dkt.
#347) 7-8 (quoting Federal Jury Practice & Instructions, 3A Fed. Jury Pract. & Instr. Ch.
158 Instructions (6th ed. 2014) (“The court may, in its discretion, increase the damages
up to three times the amount found or assessed.
A finding of willful infringement
authorizes enhanced damages, but does not mandate an award of increased damages.”)).)
Notably, this instruction comes from lengthy pattern introductory instructions, covering
a variety of areas of patent law, but is not located in any substantive instructions on
willful infringement in this or any other set of pattern instructions reviewed by this court.
54
The court finds no basis for informing the jury of the possible impact of its
decision on the subjective element of the willful infringement claim. The jury’s role will
be limited to determining whether any objectively-defined risk of infringement (assuming
the court finds one) was either known or so obvious that it should have been known to
Millennium. Millennium articulates no reason for the jury to be advised of the possible
impact of its decision on this issue. The court also agrees with Ameritox that awareness
of the possibility of treble damages may prejudice the jury. Accordingly, the court will
grant this portion of the motion in limine.
VI. Miscellaneous Motions In Limine
A. Plaintiffs’ Fourth Motion in Limine: Exclude Evidence Concerning Prior
Litigations Involving Ameritox and Millennium (dkt. #281)
Plaintiffs’ seek an order excluding evidence of prior litigation between Ameritox
and Millennium, most notably Millennium’s false advertising claim against Ameritox
filed in November 2010 in the District of Maryland.
Millennium Laboratories, Inc. v.
Ameritox, Ltd., Civil Action No. 1:10-cv-3327 (D. Md.). Plaintiffs argue that that this
evidence is not relevant and, even if relevant, any probative value would be outweighed
by the prejudice to Ameritox. There appears to be agreement that any specific reference
to that lawsuit has no place in this trial. Millennium contends that certain evidence,
admissions or arguments made by Ameritox in that litigation are relevant to its
obviousness claim and to plaintiffs’ damages and willfulness claims.
In particular,
Millennium directs the court to evidence submitted by Ameritox during that trial
indicating the “overuse or underuse, or other capabilities of comparison, did not drive
55
purchasing decisions.”
(Def.’s Opp’n (dkt. #349) 4.)
Millennium argues that this
evidence would be relevant to rebut a claim of commercial success due to copying.
Consistent with the court’s discussion above (see supra Section II.E.), the jury will be
instructed that in considering whether an invention was not obvious, they may consider
whether the claimed invention was commercially successful. Should plaintiffs open the
door and present evidence of the commercial success of the patented invention as part of
their defense to Millennium’s obviousness claim, then Millennium may introduce
evidence that Ameritox, its employee(s) and its expert(s) previously disclaimed in a prior
litigation that the patented invention drove the sales of its products. Preferably this will
be done by impeachment or reading in sworn statements by a party opponent, but the
court would also consider some other, more direct statement from the parties.
Accordingly, the court directs the parties to attempt to agree on a joint, straightforward
statement, or failing that, to submit alternative statements to the court on or before
Thursday, April 9th.
In addition, Millennium contends that this same evidence is relevant to the
damages phase of the trial.
In particular, Millennium argues this evidence bears on
Georgia-Pacific Factor 8, the commercial success of the patented product.
The court
agrees. Millennium may introduce evidence of Ameritox’s admissions in a prior lawsuit
that the patented invention did not drive sales of its Rx Guardian CD product. The
parties are to agree jointly on an appropriate statement on this subject as well, or
alternatively submit separately-proposed statements, for the court’s consideration by
April 9th.
56
Finally, Millennium contends that Ameritox took the position in the false
advertising case that its Rx Guardian and Rx Guardian CD products “could determine
dose compliance,” and that this evidence is relevant to showing Millennium’s
“reasonable, good faith belief” that it “was not doing what Ameritox was doing.” (Def.’s
Opp’n (dkt. #349) 7.) As an initial matter, the court is concerned that this argument
veers too closely to Millennium’s failed claims construction argument. In particular, the
court is concerned with Millennium’s continuing efforts to conflate normalized data of
patients’ metabolization of a particular drug with individualized data monitoring actual
compliance.
Even if this argument had merit in the willfulness context, whether
Millennium’s belief that the RADAR reports did not infringe the ‘680 patent was
reasonable or held in good faith would go to the objective prong of the willfulness claim
and, therefore, will only be considered by the court outside the jury’s consideration of
that claim.
Accordingly, for the reasons described above, the court will grant in part and deny
in part Ameritox’s motion.
B. Motion In Limine to Exclude Irrelevant Litigation and Financial
Information (dkt. #300)
Finally, Millennium seeks to exclude evidence or testimony regarding “irrelevant”
litigation and financial information pursuant to Federal Rules of Evidence 401, 402, and
403. In particular, Millennium seeks to exclude evidence or reference to the (1) unfair
competition lawsuit between Millennium and Ameritox in the Middle District of Florida,
and in particular the jury verdict (entered against it) and an allegation of spoliation of
57
evidence, (2) Department of Justice investigations into both parties, and (3) litigation
involving former Millennium employees. Plaintiffs also wish to “avoid all of these issues
during trial in this case.”
As such, the court will grant Millennium’s motion as
unopposed.
In opposing the motion, however, plaintiffs also direct the court to two types of
evidence they seek to introduce as part of their damages cases. The first apparently was
introduced in the Florida litigation and involves net revenue per specimen in March
2005, when Ameritox entered into a licensing agreement with U.D. Technology,
compared to June 2011, the date of the hypothetical negotiation in 2011. Plaintiffs
would offer this evidence to rebut the testimony of Millennium’s expert Bero that the
U.D. Technology license is not comparable because of changing market conditions.
Moreover, plaintiffs also seek to admit evidence of Ameritox’s and Millennium’s
respective average net revenue per specimen of approximately $210 in June 2011 in order
to demonstrate that the $6 royalty rate sought by Ameritox is reasonable. The court
agrees with Ameritox that this evidence may well be relevant to its damages claim. That
ruling takes it outside the court’s grant of Millennium’s motion to exclude “irrelevant”
litigation or financial information. To the extent either side is somehow confused about
that, hopefully this clarification is sufficient.
Second, plaintiffs seek to introduce evidence demonstrating that Millennium
relied on the infringing graphed results to seek refinancing beginning in October 2011,
shortly after the date of the hypothetical negotiation, and again as recently as March
2014.
The court again agrees with plaintiffs that this evidence is at least arguably
58
relevant to how Millennium valued or at least purported to value the infringing portion
of its RADAR Reports product, and accordingly may counter evidence Millennium seeks
to present -- and for which the court has denied plaintiffs’ motions in limine -- that the
value of the RADAR Reports is in the non-infringing portions. Although this too has
nothing to do with Millennium’s motion, the court further clarifies that this financial
information may also be admissible.
VII. Exhibits
Given that the parties have now submitted exhibit lists totaling 1,334 (plaintiffs:
237; defendant: 1,097), the court is concerned that the parties have (1) not taken
sufficient time to actually consider what exhibits will realistically be moved into evidence
at this trial, as opposed to used for impeachment or other purposes; (2) failed to consider
adequately more practical, effective means to present evidence to a jury, including use of
summaries under Fed. Evid. R. 1006; and (3) made little effort to govern their
submissions based on likely, meritorious objections by the other side.
That concern
remains notwithstanding the unsolicited assurances to the contrary by defendant’s
counsel. (Dkt. #377.) The court is, however, hopeful that as a result of its rulings on
the parties’ motions in limine as set forth above, many of the proposed exhibits will be
withdrawn.
The court is also amenable to a designation of exhibits that will not be
offered into evidence during the first phase of trial (validity), so that the focus of the
pretrial conference can be on a more discrete list of exhibits, with the remainder (going to
damages and willfulness) addressed during jury deliberations on validity.
59
Accordingly, whether by phone or in person, the court directs the parties to meet
(again) in good faith no later than 5 p.m. on Monday, April 6, 2015, to confer and pare
down their exhibit lists further. The parties shall then submit no later than noon on
Tuesday, April 7th, revised exhibit lists reflecting exhibits they may actually seek to have
admitted at trial and any remaining objections to those exhibits in a form required by
this court.
ORDER
IT IS ORDERED that:
1)
The parties’ joint request for expedited guidance on order of proofs at trial
(dkt. #374) is GRANTED. The court will follow its usual practice.
2)
Plaintiffs Ameritox, Ltd. and Marshfield Clinic, Inc.’s motion to exclude
testimony of Alan H. Wu, Ph.D. (dkt. #246) is DENIED.
3)
Plaintiffs’ motion to exclude the expert testimony of Richard F. Bero (dkt.
#274) is DENIED.
4)
The court RESERVES on defendant Millennium Health, LLC’s motion in
limine to exclude improper testimony regarding the U.D. Testing License
(dkt. #276).
5)
Plaintiffs’ motion in limine 1 (dkt. #277) is DENIED.
6)
Defendant’s motion to exclude evidence directed to claimed willful
infringement (dkt. #278) is GRANTED IN PART AND DENIED IN PART
as set forth above.
7)
Plaintiffs’ motion in limine 2 (dkt. #279) is GRANTED IN PART AND
DENIED IN PART as set forth above.
8)
Plaintiffs’ motion in limine 3 (dkt. #280) is GRANTED IN PART AND
DENIED IN PART as set forth above.
9)
Plaintiffs’ motion in limine 4 (dkt. #281) is GRANTED IN PART AND
DENIED IN PART as set forth above. The parties shall attempt to agree on
a joint, short statement on statements made or positions taken by parties in
previous litigation, or submit for the court’s consideration alternative,
proposed statements on or before April 9, 2015.
10)
Plaintiffs’ motion in limine 5 (dkt. #282) is DENIED.
11)
Defendant’s motion in limine to preclude certain expert testimony of Dr.
Paul J. Orsulak (dkt. #283) is GRANTED as set forth above.
12)
Plaintiffs’ motion in limine 6 (dkt. #285) is DENIED.
13)
Plaintiffs’ motion in limine 7 (dkt. #286) is GRANTED IN PART AND
DENIED IN PART as set forth above.
14)
Plaintiffs’ motion in limine 8 (dkt. #287) is GRANTED IN PART AND
DENIED IN PART as set forth above.
15)
Plaintiffs’ motion in limine 9 (dkt. #291) is DENIED.
16)
Plaintiffs’ motion in limine 10 (dkt. #292) is DENIED.
17)
Plaintiffs’ motion in limine 11 (dkt. #293) is GRANTED as unopposed.
18)
Plaintiffs’ motion in limine 12 (dkt. #294) is DENIED;
19)
Plaintiffs’ motion in limine 13 (dkt. #295) is GRANTED.
20)
Plaintiffs’ motion in limine 14 (dkt. #296) is DENIED.
21)
Defendant’s motion in limine to exclude evidence or testimony regarding
irrelevant litigation and financial information (dkt. #300) is GRANTED as
unopposed.
22)
Defendant’s motion in limine to exclude testimony of Carl G. Degen (dkt.
#303) is DENIED.
23)
Whether by phone or in person, the parties shall meet in good faith no later
than 5 p.m. on Monday, April 6, 2015, to confer and pare down their exhibit
lists further.
24)
The parties shall then submit no later than noon on Tuesday, April 7th,
revised exhibit lists reflecting exhibits they may actually seek to have
admitted at trial and any remaining objections to those exhibits in a form
required by this court.
Entered this 3rd day of April, 2015.
BY THE COURT:
/s/
__________________________________
WILLIAM M. CONLEY
District Judge
61
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?