The opinion of the court was delivered by: CHARLES KOCORAS, District Judge
This matter comes before the court on the parties' motions in limine.
Plaintiff DataQuill Limited ("DataQuill") and Defendant Handspring
Incorporated ("Handspring") have each filed ten motions.
DataQuill is the owner of U.S. Patent No. 6,058,304 ("the `304 patent")
for a handheld data entry system. Its complaint alleges various
infringement theories against Handspring, for products it manufactures,
including those marketed under the names Treo and Visor. In February
2003, Handspring filed a motion for summary judgment, asserting both that
the accused devices did not infringe the `304 patent and that the patent
was invalid for a number of reasons. We granted summary judgment to Handspring on the issue of contributory infringement by the Visor
products as well as invalidity of claims 61 and 62. For the remaining
questions presented in the motion, we found that there were genuine
issues of material fact.
In conjunction with the filing of the final pretrial order, the parties
have each filed ten motions in limine.
The power to exclude evidence pursuant to motions in limine is part and
parcel of a district court's authority to manage trials. Falk v.
Kimberly Servs., 1997 WL 201568, * 1 (N.D. Ill. Apr. 16, 1997).
Motions in limine should be granted only when the evidence under attack
is clearly inadmissible on all potential grounds. Hawthorne Partners
v. A.T. & T. Technologies, Inc., 831 F. Supp. 1398, 1400 (N.D.
Ill. 1993). The admissibility of some proposed evidence cannot be
determined without a proper frame of reference, and motions in limine
pertaining to such evidence should be denied. See Tzoumis v. Tempel
Steel Co., 168 F. Supp.2d 871, 873 (N.D. Ill. 2001). Of course,
such a denial does not mandate that the subject evidence be admitted at
trial; rather, it allows the court to address pertinent questions of
admissibility within a proper context. Hawthorne Partners,
831 F. Supp. at 1400-01. Moreover, a district court can alter a previous
ruling on a motion in limine. Luce v. U.S., 49 U.S. 38, 41-42,
105 S.Ct. 460 (1984). With these principles in mind, we address the
motions before us. DISCUSSION
1. Motion to Exclude Undisclosed Invalidity Contentions and
This motion seeks to exclude certain exhibits illustrating prior art
references. DataQuill contends that Handspring has never disclosed or
articulated the relevance of these items to any of their invalidity
contentions. Handspring claims are relevant to establishing the state of
the art at the time of the invention, which directly pertains to their
previously advanced theories of invalidity due to obviousness. Thus, it
does not appear that the exhibits in question are unrelated to a
contention already advanced, and the motion is accordingly denied.
2. Motion to Exclude Testimony from Jeff Hawkins, Donna Dubinsky,
and Edward Colligan
DataQuilPs second motion is directed at the proposed testimony of three
individuals: Jeff Hawkins, Donna Dubinsky, and Edward Colligan.*fn1 In
support of its motion, DataQuill points to the absence of these names
from Handspring's Rule 26(a) disclosure. While it does not appear that
Handspring ever formally included these three in its disclosure,
DataQuill admits that it had an opportunity to depose Hawkins and Dubinsky as well as Colligan's predecessor. In addition,
DataQuill was not required to limit its deposition inquiry to any
particular subjects. Thus, we conclude that there is no ground for
wholesale exclusion of these witnesses from the stand. Consequently,
DataQuill's second motion in limine is denied.
3. Motion to Exclude Handspring's Patents
DataQuilPs motion to exclude evidence of patents Handspring owns is
denied. As Handspring points out, these are relevant to issues of
willfulness. Furthermore, the concern that the jury will perceive the
existence of Handspring's patents in an improper way is best ...