Motions in limine can be kind of exciting. The motions and the rulings are typically short, and they are ordinarily filed with the pretrial order just before trial. Unlike most motions, the Court usually rules on them quickly (between the PTO and the trial), sometimes live at the pretrial conference, and the impact is felt almost immediately.
Plus, orders that result from MILs can sometimes have a huge effect on the practical course of the trial by precluding important arguments and evidence, or even by interfering with your trial themes—frequently at the last minute. So it's worth keeping in mind the kinds of things that may come up at the MIL stage.
Last week, Judge Andrews issued his rulings on the motions in limine in Blackbird Tech LLC v. Feit Electric Co., LLC, C.A. No. 15-56-RGA (D. Del.). Here are some quick takeaways.
No, You Cannot Call the Plaintiff a "Patent Troll"
As often happens, the plaintiff moved to preclude the defendant from calling it a "patent troll," and the defendant agreed (as usual). But the plaintiff also disputed the appropriateness of more neutral-sounding words like "patent assertion entity" or "non-practicing entity." Judge Andrews held that those terms are also prohibited:
Defendant agrees that it will not call Plaintiff a “troll,” but it says it ought to be able to call it a “patent assertion entity” or a “non-practicing entity.” While those terms are less objectionable than “troll,” they are also completely unnecessary and will sound like slurs. I think what I said in connection with the Interdigital case still stands; Defendant may refer to Plaintiff as Plaintiff, Blackbird, the business, or the company (or possibly other analogous terms), but, without prior permission, Defendant and its witnesses cannot call Plaintiff anything else.
This issue comes up fairly frequently and defendants most often agree not to use the term "patent troll," possibly after talking to their local counsel. I haven't heard of the District of Delaware permitting that term in a trial, although I know at least one visiting judge has permitted other terms like "non-practicing entity."
Judge Andrews did allow some testimony as to plaintiff's business model:
I also take it that in connection with damages there will be at least some mention that Plaintiff does not practice the asserted claim. Any testimony about [plaintiff] not practicing the patent should be presented matter-of-factly and briefly. (Of course, if Defendant thinks Plaintiff’s case opens the door to evidence that is otherwise excluded, Defendant ought to bring it up outside the presence of the jury and get a ruling.).
He also permitted testimony regarding witnesses' financial interest in the plaintiff, Blackbird:
Defendant says it ought to be able to cross-examine witnesses about their financial interests in Blackbird. Plaintiff opposes . . . , but a financial interest “in the outcome of the litigation” is very relevant to bias, and, while Plaintiff says there would be “prejudice,” the only relevant issue is whether there would be “unfair prejudice.” I do not think there would be, and the introduction of such evidence survives the balancing test of Rule 403.
Inter-Partes Review Proceedings Can Be a Sensitive Subject
Judge Andrews also addressed another topic that tends to come up: the extent to which a patentee may discuss the fact that the patent survived IPR proceedings. Obviously, if the patent survived IPR, that's going to make it sound stronger to a jury.
Here, the defendant's expert had made statements in an in-instituted third-party IPR petition. Plaintiff did not seek to actually discuss the IPR petition, but instead sought to cross examine the expert using statements that he made during the IPR. The judge permitted those kinds of questions:
Defendant’s expert . . . can be cross-examined with any statement he made in the IPR proceeding (just as with any other prior statement he had made), but without reference to the fact that it was made in the IPR proceeding . . . .
Judge Andrews also held, however, that the plaintiff could not refer to the fact that certain prior art references from the trial had been included in that IPR petition, because the PTAB had declined to institute for other reasons.
Judge Andrews' Thoughts on Precluding Evidence of Intent at Trial
Finally, Judge Andrews offered some insight on his thoughts about evidence of intent to infringe. He declined to limit the plaintiff's intent evidence at the MIL stage, despite defendant's argument that the evidence related only to inducement theories that had not been adequately disclosed:
Intent (including knowledge that what Defendant was instructing its customers to do was to infringe . . . is decided based on all the evidence. I do not think a motion in limine is a good vehicle for limiting intent evidence. [But] Defendant is not precluded from objecting at trial if Plaintiff proceeds on undisclosed theories . . . .
The Trial Will Go Forward . . . Eventually
The trial was originally scheduled for January 11, 2021, but was pushed due to defendant's COVID-19 concerns. It is now set for "a date to be determined," with a status report due March 31, 2021.