LP, MALLINCKRODT INC. and LIEBELFLARSHEIM COMPANY, Plaintiffs, v. E-Z-EM, INC. and ACIST MEDICAL SYSTEMS, INC., Defendants. § § § § § CIVIL ACTION NO. 2:07-CV-262 (TJW) § § § § § ORDER Before the Court are the parties’ Motions in Limine. [Dkt. Nos. 586, 601, 605] The Court conducted a pretrial hearing on May 28, 2010 during which the Court heard arguments about these motions. The Court ruled from the bench as follows: I. Plaintiffs Motions in limine 1. Preclude defendants from calling “Innovasafe, Inc.” as a witness at trial “If a party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence . . . at a trial, unless the failure was substantially justified or harmless.” Fed. R. Civ. P. 37(c)(1). This motion is GRANTED. 2. Preclude testimony from Lyn Driskill The parties have AGREED to this motion. This motion is GRANTED. 3. Preclude examination of third party witnesses based upon documents that defendants marked Confidential or Highly Confidential Mallinckrodt argues that E-Z-EM revealed to third-party witnesses documents that were marked Confidential but then would not allow Mallinckrodt to cross-examine those witnesses

with other similarly marked documents.

For example, during the deposition of Stephen

Bellofatto who is a product developer by an outside company that implements the use-related features of E-Z-EM’s Empower injectors, Mr. Ruttenberg attempted to question Mr. Bellofatto about a design document. Mr. Bennett allegedly refused to allow Mr. Bellofatto look at the document. To the extent that either party hindered the cross-examination of a witness on a topic, the Court will not allow that party to present the witness’ testimony on that topic at trial. The Court GRANTS this motion in part. 4. Preclude admission of the dollar amounts in settlement agreements made under the threat of litigation Mallinckrodt argues that the evidence of the amounts of prior settlements made under the threat of litigation raises an unreasonable risk of unfair prejudice under Fed. R. Evid. 403. The general rule is that royalties paid to avoid litigation are not a reliable indicator of the value of a patent. See Automation Corp. v. Microsoft Corp., 587 F.Supp.2d 794, 801 (E.D. Tex. 2007). However, where a settlement agreement involves the same patent or technology, they may be highly relevant, notwithstanding their origins. See, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed.Cir.2010); Datatreasury Corp. v. Wells Fargo & Co., 2010 WL 903259 (E.D. Tex. 2010). This motion is GRANTED as to all licenses except those that are sufficiently similar. 5. Preclude evidence and argument concerning product liability lawsuits and judgments This motion is GRANTED per Rule 403. 6. Preclude evidence of reexamination proceedings of the patent-in-suit The fact that there are reexamination proceedings and a decision has been made by the PTO is not probative of any element regarding any claim of invalidity. Procter & Gamble Co. v.

Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed.Cir. 2008) (“a requestor's burden to show that a reexamination order should issue from the PTO is unrelated to a defendant's burden to prove invalidity by clear and convincing evidence at trial”). This motion is GRANTED. 7. Preclude evidence and argument concerning Tyco’s former CEO The parties have AGREED to this motion. This motion is GRANTED. 8. Preclude evidence or testimony regarding any design-around of the patent-in-suit or claim that such design-around is a non-infringing alternative Mallinckrodt sought and E-Z-EM obstructed discovery regarding E-Z-EM’s design-around efforts. E-Z-EM is not permitted to introduce evidence that it declined to produce as requested. See Fed. R. Civ. P. 37(c)(1). This motion is GRANTED as to actual design-around efforts. This motion is denied as to possible non-infringing alternatives. 9. Preclude testimony or evidence regarding alleged spoliation This motion is DENIED. The parties are permitted to present evidence of spoliation. 10. Preclude testimony or evidence to the jury relating to the defenses of laches, equitable estoppel, and inequitable conduct This motion is GRANTED with a narrow exception. E-Z-EM is entitled to present

evidence for the purpose of overcoming the presumption of validity and to rebut the claim of willfulness. 11. Preclude reference to Kirkland’s representation of high-profile clients The parties have AGREED to this motion. 12. Preclude defendants’ experts from testifying beyond the scope of their expert reports The parties have AGREED to this motion. 13. Preclude defendants from presenting evidence or comparing their accused devices with plaintiffs’ products argument

This motion is GRANTED with a narrow exception for limited comparison. Mallinckrodt is seeking lost profits. The parties may present evidence comparing the accused products to the embodying product for the limited purpose of demonstrating (or rebutting) their similarity. The parties may not engage in a claim element-by-claim element comparison of the products. Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, 2010 WL 1644062, at * 15–18 (Fed. Cir. 2010) (allowing product-to-product comparison for the limited purpose of demonstrating lost profits). E-Z-EM is also permitted to show that Plaintiffs’

products do not practice the invention for the purpose of showing the value of the patent. 14. Preclude any experts beyond the maximum number permitted in the Court’s discovery order This motion is GRANTED. The parties are permitted to rely upon the opinions of the first five designated experts. II. E-Z-EM’s Motions in Limine 1. Preclude infringement theories beyond the scope of Mallinckrodt’s infringement contentions This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1). 2. Preclude expert testimony beyond the expert reports or about documents or materials that would not otherwise be admissible This motion is GRANTED in part. See Fed. R. Evid. 703 (“Facts or data that are otherwise inadmissible shall not be disclosed to the jury by the proponent of the opinion or inference unless the court determines that their probative value is assisting the jury to evaluate the expert’s opinion substantially outweighs their prejudicial effect.”); 803 (not excluded from the hearsay rule are “statements contained in published treatises, periodicals, or pamphlets on a subject of . . . science . . . , established as a reliable authority by the testimony or admission of the witness or by other expert testimony”).

3. Preclude testimony about jury consultants and other trial consultants This motion is AGREED and GRANTED. 4. Preclude testimony about counsel’s clients. This motion is AGREED and GRANTED. 5. Preclude testimony about counsel for E-Z-EM and counsel for thirdparty witnesses This motion is GRANTED in PART. To the extent that parties are seeking to introduce evidence tending to show bias, the motion is DENIED. 6. Preclude testimony about counsel’s clients. This motion is AGREED. 7. Preclude testimony about motions in limine, pretrial objections, and objections during depositions This motion is GRANTED per rule 402. Everingham for case-by-case ruling. The Court refers this motion to Judge

8. Preclude evidence not previously produced or disclosed pursuant to discovery obligations This motion is GRANTED. See Fed. R. Civ. P. 37(c)(1). The Court refers this motion to Judge Everingham for case-by-case ruling. 9. Preclude questions “calculated to invoke assertion of the attorney/client privilege or the work-product doctrine in the presence of the jury” This motion should be DENIED. It is unclear how E-Z-EM would establish that suspect questions were “calculated” to achieve an inappropriate result. 10. Preclude testimony about claim constructions that are different from or contrary to the Court’s rulings This motion is GRANTED per the Court’s claim construction order. 11. Preclude testimony about prior legal positions and arguments taken by the parties

As to briefs, pleadings, infringement or invalidity questions and the like, this motion is GRANTED. As to prior depositions, requests for admissions, interrogatories, et cetera, this motion is DENIED. 12. Preclude evidence regarding claims or contentions previously asserted by a party but have been dropped This motion is GRANTED per rule 402 and 403. discourage parties from streamlining issues for trial purposes. 13. Preclude evidence regarding E-Z-EM’s reliance on any opinion of counsel to rebut willful infringement This motion is DENIED per the Court’s order of May 25, 2010. Even if E-Z-EM elects not to pursue the advice-of-counsel defense to the willful infringement claims, it has already waived privilege. 14. Preclude evidence that E-Z-EM is owned by a foreign company This motion is GRANTED with a limited exception. The parties are entitled to voir dire on whether jurors own stock in publicly-traded companies. 15. Preclude evidence regarding fee arrangements of the parties This motion is GRANTED pursuant to rule 402. 16. Preclude evidence regarding correspondence between or among counsel This is GRANTED as it relates to improper evidence of offers of settlement under rule 408. 17. Preclude evidence of E-Z-EM’s knowledge of the patent prior to the lawsuit This motion is DENIED. 18. Preclude evidence that the named inventors advised Plaintiffs’ patent prosecution counsel about the existence and relevance of prior art to the ‘710 patent application This motion is GREANTED. To the extent a witness asserted a claim of privilege during a To allow such evidence would

deposition, the witness is not entitled to testify about the withheld topic on the stand. To allow the witness to testify on those subjects would be allowing a party to use privilege as a sword and shield. See Cunningham v. Chapel Hill, ISD, 438 F.Supp.2d 718, 724 (E.D. Tex. 2006)

(“[Defendant] should not be allowed to prevent Mosely or other trustees from being deposed with regard to the Board’s motivations for denying Cunningham's Level III grievance and then call a trustee at trial to testify about these motivations.”). 19. Preclude testimony that Mr. Humphrey asked the inventors of their awareness of prior art. This motion is GRANTED as to Mr. Humphrey. This motion is DENIED as to all others. 20. Preclude testimony regarding diligence in reduction to practice This motion is GRANTED as to Mr. Humphrey and DENIED as to all others, except to the extent it is covered by a previous ruling. 21. Preclude testimony that draft documents represent the accused products This motion is DENIED. To the extent that a document introduced does not reflect the accused product, E-Z-EM can demonstrate as much during cross-examination. This testimony shows product development and would be relevant to infringement and potentially damages. 22. Exclude deposition testimony of any witness who is to give live testimony at trial except for the limited purpose of impeachment This motion is DENIED provided that the deposition use conforms with the requirements of Fed. R. Civ. P. 32. Permissible uses include: impeachment, deposition of a 30(b)(6) witness, and to present testimony of an unavailable witness. See Fed. R. Civ. P. 32(2)–(4). 23. Preclude reference to prior claims of infringement against E-Z-EM This motion is GRANTED pursuant to rule 402. 24. Preclude evidence of unsigned agreements

The Court refers this motion to Judge Everingham for a case-by-case ruling. 25. Exclude the rebuttal report of Arthur J. Helmicki regarding validity This motion is DENIED. 26. Preclude objections to introduction of metadata This motion is DENIED. The Court refers this to Judge Everingham for a case-by-case ruling.
SIGNED this 7th day of June, 2010.

__________________________________________ T. JOHN WARD UNITED STATES DISTRICT JUDGE

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