A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: MIL

Judge Williams: Evidence of Plaintiff's Investors and Litigation Funding is Admissible at Trial

Andrew E. Russell, April 19, 2023
Litigation Funding MIL

"Your honor, we move to turn the apple, so that the jury can only see the side that's not rotten." Giuseppe CUZZOCREA, Unsplash

Yesterday, Judge Williams issued an opinion ruling on motions in limine for the trial starting next week in Cirba Inc. (d/b/a DENSIFY) v. VMWare, Inc., C.A. No. 19-742-GBW (D. Del.) (a case we've discussed several times before).

In it, he addressed several MILs. These opinions are always interesting, but given all of the recent discussion of litigation funding, I thought Judge Williams' order on the plaintiff's litigation funding MIL is worth noting.

Plaintiffs in the case moved in limine to preclude reference to their litigation funding arrangements:

With respect to Plaintiffs …
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Judge Andrews Grants Motions in Limine Regarding Prior Proceedings and Total Revenues—Here's Why These Are Helpful Motions

Andrew E. Russell, Nov. 16, 2022
Trial Practice Trial Procedure

"Sure our damages figure sounds big, but look how big this other number is!" AI-Generated, displayed with permission

This week, Judge Andrews issued an order on the six motions in limine that the parties filed in Sprint Communications Company, L.P. v. Mediacom Communications Corp., C.A. No. 17-1736-RGA (D. Del. Nov. 14, 2022).

The order is short and to the point, and doesn't identify what the MILs relate to. But if the docket shows that there are at least two MILs here worth mentioning, if only because they come up so often.

Prior Proceedings

The defendant first moved to exclude the outcomes of multiple prior cases, as well as pending cases against co-defendants. Plaintiff responded that the prior …

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Court Permits Reliance on Non-Prior Art Documents as Evidence of Prior Art

Andrew E. Russell, Sept. 28, 2022
FRE 803 Hearsay

AI-generated image of a defendant relying on non-prior art documents as evidence of prior art
AI-generated image of a defendant relying on non-prior art documents as evidence of prior art Andrew E. Russell, displayed with permission

Judge Stark issued an oral order yesterday addressing a motion in limine in Otsuka Pharmaceutical Co., Ltd. v. Zenara Pharma Private Ltd., C.A. No. 19-1938-LPS (D. Del.).

According to the briefing, plaintiff sought to exclude two exhibits that were dated after the priority date of the patent.

The first was a 2005 "review article" published just months after the priority date. According to defendants' brief, "does not present original data" and instead "discusses the information known in the art before the priority date."

The second exhibit was published in 2021 and includes a "history of research …

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No damages? No problem.

Andrew E. Russell, June 29, 2022
Damages Expert Witness

Dollar Bills
Sharon McCutcheon, Unsplash

Judge Bryson resolved a large pile of motions in limine this month in IOEngine, LLC v. Paypal Holdings, Inc., C.A. No. 18-452-WCB (D. Del. June 15, 2022). What's a large pile, you say? About nineteen motions in limine total if I'm counting correctly.

The opinion hits a number of the old stand-by MILs, including that the accused infringer cannot call the patentee names like "patent troll" (we've discussed that before), that PTAB and IPR proceedings do not come in and the parties cannot talk about inequitable conduct (common results), and that general evidence about the parties' size/net worth is precluded (also not uncommon).

There were a number of interesting motions, though, …

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Your IPR Succeeded? Congrats! Now Go to Trial on Infringement, But You're Estopped from Claiming Invalidity

Andrew E. Russell, Feb. 8, 2022
Collateral Estoppel IPR

PTAB trailhead
PTAB trailhead Joshua Sukoff, Unsplash

During some research the other day, I came across the below order that Judge Noreika issued last summer.

A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?

No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:

Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …
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Disappointing Rule 36 Affirmance of Exclusion of Japanese Patent Office Publication - A Missed Opportunity for a Federal Circuit Opinion

Andrew E. Russell, Sept. 13, 2021
§ 102 FRE

JP 1992-136787

Last year, we posted about an interesting result in a Delaware patent trial, where Judge Connolly excluded a Japanese Patent Office Utility Model Publication after the defendant failed to offer sufficient evidence of public accessibility (and actually offered some evidence of inaccessibility).

As we explained at the time, the defendant had tried to avoid IPR estoppel by arguing that it could not have found the reference in a reasonable search, but then argued that the reference was sufficiently publicly accessible to be a prior art reference. The Court rejected that argument, holding that the JPO publication was not publicly accessible and couldn't be used as prior art.

We noted this was a great opportunity for the the Federal Circuit to …

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Judge Stark Bars Late-Disclosed Witnesses from Trial

David M. Fry, Aug. 4, 2021
Pennypack MIL

Ref
Nathan Shively, Unsplash

We've written several times about the Pennypack factors—the Third Circuit standard for determining whether to exclude late-disclosed evidence. Although the standard itself is fairly lenient (focusing on prejudice and whether it can be cured), the D. Del. judges have shown an increasing willingness to exclude evidence under Pennypack in recent years.

Earlier today, for example, Judge Stark applied Pennypack to preclude four witnesses from testifying at an upcoming jury trial (two from each side). The witnesses were disclosed months after the close of fact discovery, and Judge Stark refused to force the parties to use their limited trial prep time for clean-up discovery: "there is not sufficient time in the 12 remaining days before trial …

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Judge Andrews Rejects Theory that Prior Expert Testimony Was a Party Admission

Andrew E. Russell, May 10, 2021
Motion in Limine MIL

Last week, Judge Andrews addressed a serious of motions in limine in Astrazeneca AB v. Zydus Pharms. (USA) Inc., C.A. No. 18-664-RGA (D. Del.). These rulings are often interesting; here, Judge Andrews excluded some former expert testimony as hearsay, rejecting the idea that the testimony was a party admission:

Defendant seeks to exclude testimony and evidence that relate to positions it and its experts took in relation to the patent-in-suit (as prior art) in District of New Jersey litigation involving other patents. . . . The evidence, which is described as trial transcripts, expert reports, invalidity contentions, proposed findings of fact and conclusions of law, and “support documents” (consisting altogether of about fourteen proposed exhibits) is …
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Prior Expert Testimony from IPR Inadmissible in District Court Action

Andrew E. Russell, April 19, 2021
Trial Motion in Limine

Arrows on Sign
Adrià Tormo, Unsplash

In another ruling from the In Re ChanBond litigation as it approaches trial, Judge Andrews today issued an in-depth opinion granting a motion in limine to exclude reference to prior expert testimony from a related IPR proceeding, on the grounds that the testimony is hearsay.

Plaintiff sought to admit the material as former testimony under FRE 804(b)(1), because it is helpful to its infringement case. The rule requires, however, that the former testimony was offered against the parties' predecessor who had "an opportunity and similar motive to develop it."

Here, Judge Andrews found that an IPR petitioner's motive in developing expert testimony to show invalidity is different from a defendant's motive developing its non-infringement position:

I …
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No, You Cannot Call the Plaintiff a "Patent Troll" at Trial (and Other Recent In Limine Results)

Andrew E. Russell, Dec. 21, 2020
Trial Trial Calendar

Bridge
Jamie Street, Unsplash

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 …

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