Chief Judge Leonard P. Stark recently issued the pretrial order resolving motions in limine and setting time allocations for trial. Andover Healthcare, Inc. v. 3M Company, No. 13-843-LPS (D. Del. Oct. 27, 2016). Regarding time for trial, the parties requested 41 hours to be split equally between the parties. Judge Stark rejected this request:
Considering that this is a one patent case, with two asserted claims, four accused products, a single plaintiff and single defendant, at most five invalidity defenses .(written description, enablement, indefiniteness, anticipation, obviousness), damages, and willfulness, and given the number of witnesses the parties intend to call, the Court has determined that the parties will be allocated a maximum of 14 to 16 hours per side for their trial presentations, with the final amount to be determined after further discussion at the pretrial conference.
Id. at ¶ 2.
Regarding plaintiff’s motions in limine, Judge Stark granted plaintiff’s three motions. First, Judge Stark granted plaintiff’s request to exclude evidence of the prior trademark and patent infringement suits brought by 3M, unless plaintiff opens the door to introduction of such evidence. Id. at ¶ 6. Judge Stark also excluded testimony of 3M’s fact witnesses regarding infringement, except that 3M’s witnesses may testify about how 3M “intended to develop, and believes it succeeded in developing, a product without crystallinity, and did so for performance reasons.” Id. at ¶ 7. Testimony that 3M developed their product to avoid infringement would not be permitted because “this would impermissibly permit 3M to use privilege (which 3M repeatedly asserted in its Rule 30(b)(6) deposition) as both a sword and a shield.” Id. Finally, Judge Stark excluded evidence regarding the foreign litigation of the counterpart to the patent-in-suit, because there was minimal probative value outweighed by the risk of jury confusion, unfair prejudice ,and delay. Id. at ¶ 8.
Regarding defendant’s motions in limine, Judge Stark granted 3M’s motion to exclude the PTAB’s decision not to institute IPR. “The PTAB’s decision is not a final decision on validity, is based on different legal standards, and has no estoppel effect.” Id. at ¶ 9. Judge Stark also granted 3M’s motion to exclude testimony “regarding the parties’ previous disputes and alleged actions by 3M,” except that if 3M raises plaintiff’s delay in filing suit, the Court will instruct the jury that any delay is irrelevant, or will allow plaintiff to admit evidence regarding the parties previous disputes in order to explain why it waited to file suit. Id. at ¶ 10. Finally, Judge Stark denied 3M’s third motion regarding plaintiff’s expert’s testimony about “technical facts outside his expert reports[.]” Id. at ¶ 11. Judge Stark found that 3M was belatedly objecting to the expert testifying as a fact and expert witness. “As an expert, Mr. Murphy will be permitted to testify to anything properly disclosed in his reports. He will also be permitted to testify as a fact witness. The Court will rule on objections to specific questions at trial.” Id.