Eldrige Sales v. Azen, 6:11cv599 (11/14/13)
Judge: Michael Schneider
Holding: Orders on Multiple Pretrial Motions
I posted last week on the verdict in Judge Schneider’s court in Tyler in this case. One thing that I like to do is go through the pretrial rulings for cases that resulted in a verdict, to see how commonly raised issues in patent cases are dealt with in trial. Sometimes significant issues such as motions to exclude expert testimony and summary judgment motions are ruled on from the bench at the pretrial conference and result in relatively short written rulings which are often collected into one opinion. The following are a few rulings on pending motions made at the pretrial conference that are worth noting
Defendants Motion To Exclude Opinions Of Plaintiff’s Damages Expert
Judge Schneider denied the motion to exclude the opinions of the plaintiff’s damages expert, finding that his opinions did not violate the entire market value rule, and were founded in valid economic principles and thus admissible for the jury’s consideration.
Defendants Motion To Exclude Opinions Of Plaintiffs Invalidity Expert
Defendant next sought to exclude some of the bases for the plaintiff’s invalidity expert’s opinions as hearsay. Judge Schneider denied that motion, noting that under Fed. R. Evid. 703 an expert can base his opinion on facts or data that are not otherwise admissible.
Plaintiff’s Motion For Partial Summary Judgment
Judge Schneider granted the plaintiff’s motion for partial summary judgment that the rigs at issue were subject to the Patent Act. The issue here was whether rigs, which are located in the Gulf of Mexico were subject to the laws of the United States, and Judge Schneider concluded that they were under the Outer Continental Shelf Lands Act. There were no genuine disputes of material fact as to this issue, the court noted.
Defendants’ Motion For Summary Judgment
The defendants’ omnibus motion for summary judgment asserted several grounds. For purposes of this post, most of the grounds were denied because the court concluded that there were genuine disputes of fact, while another was denied because it was basically a cross motion as to the Patent Act’s applicability to these offshore rigs.
Judge Schneider also noted that defendants asserted invalidity for lack of written description in this motion for the first time in the case, and denied this portion of the motion for failure to timely disclose this invalidity theory, which was also not present in the defendants invalidity contentions, nor had leave been sought or granted to add it.
Defendants’ Motion In Limine To Exclude Evidence Regarding Re-Examination
In this case defendants instituted an inter partes reexamination of the patent in suit before the US PTO. The PTO granted review, and confirmed the patentability of the claims. Judge Schneider held that evidence of the re-examination was admissible, and that the risk of confusion was minimal because a lower threshold of proof is required to show invalidity before the PTO than is required by defendants in this court.
Plaintiff’s Motion In Limine Regarding Opinions Of Counsel
Plaintiff asked the Court to exclude evidence of opinions of counsel which were never communicated to clients. Judge Schneider held that the expert could testify, but given that opinions of counsel that are not communicated to clients are not relevant to the willfulness analysis, the proper foundation must be laid for admission of the letter at issue before it could be discussed at trial.
Plaintiff’s Supplemental Motion In Limine
The substance of this motion is not relevant since the court’s denial was based on its being filed after the deadline for the filing of motions in limine, and without a request for leave to file after that date.