United States District Court, N.D. Illinois
May 7, 2004.
DATAQUILL LIMITED, Plaintiff,
HANDSPRING, INC., Defendant
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
A. DataQuill's Motions
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 addressed by
an appropriate jury instruction if the necessity arises.
4. Motion to Exclude Evidence of DataQuill's Commercialization
With this motion, DataQuill wishes to bar any evidence of their efforts
to build and commercialize an embodiment of the `304 patent. The breadth
of material that could be included within this category is too vast for a
preliminary ruling of complete inadmissibility. As is the case with the
motion to exclude Handspring's patents, any misconceptions the jury might
gain about the proper use of this evidence can be addressed with a
suitable instruction. Thus, the motion is denied. 5. Motion to Exclude Claim Construction Issues First Disclosed
During Expert Discovery
Here, DataQuill insists that Handspring should be precluded from
asserting interpretations of claim terms other than the six identified in
Handspring's answer to DataQuill's Interrogatory number 3. According to
DataQuill, this result is appropriate because 1) Handspring is judicially
estopped from doing so, and 2) any other terms were not properly
disclosed during discovery. With respect to the first ground, we agree
with Handspring that they have not taken an inconsistent position on the
terms listed within DataQuill's motion, so the doctrine of judicial
estoppel does not apply. As for the second ground, the parties'
submissions do not provide sufficient information to enable the court to
decide the issue. Accordingly, the court will entertain brief oral
argument on that issue at time of trial.
6. Motion to Exclude Evidence and Argument Denigrating the PTO or
Next, DataQuill wishes to exclude testimony expected to be given by
George Gerstman. In its motion, DataQuill avers that Gerstman will
testify regarding general problems at the Patent and Trademark Office,
such as overwork and limitations in time spent reviewing applications. In
response, Handspring represents that Gerstman will restrict his testimony
to specific problems he contends occurred during the prosecution of the
`304 patent. Because we cannot conclude at this time that any testimony
in this vein will be inappropriate, the motion is denied. However,
Handspring is cautioned that we will not look favorably on Gerstman
straying into areas beyond those indicated in its response.
7. Motion to Exclude Evidence and Arguments on "Touch Screen" and
Lack of Written Description
DataQuill's seventh motion revolves around the sufficiency of the
written description of the `304 patent with respect to claims 9, 40, and
61-63. The basis of their argument is that our opinion on the motion for
summary judgment forecloses Handspring from contending that those claims
are invalid for lack of a written description. Specifically, they suggest
that our statement "the specification clearly explains how a touch screen
can supplement or altogether replace the bar code reader" contains an
implicit conclusion that the five disputed claims meet the requirements
of 35 U.S.C. § 112 ¶ 1 as a matter of law.
This argument is incorrect for two reasons. First, we were not asked to
consider the sufficiency of the written description at the summary
judgment stage. Moreover, because of its dependence on the state of the
art at the time of the invention, this type of determination is seldom
amenable to resolution on summary judgment. See Moba, B.V. v.
Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003).
Consequently, DataQuill's theory of an implicit conclusion on this issue
is inappropriate. Second, the cited portion of our opinion addressed
the issues of new matter and infringement with respect to these claims.
These considerations can be made separate and apart from a decision on
whether the written description contained in the patent specification
will pass muster under § 112 ¶ 1. See id at 1320-21;
Gentry Gallery. Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir.
1998). The issues we decided in ruling on the motion for summary judgment
do not necessarily affect the question we did not address: whether claims
9, 40, and 61-63 of the `304 patent are invalid because they lack an
adequate written description. Thus, DataQuill's motion to exclude
evidence pertaining to this issue is denied.
8. Motion to Exclude Handspring's New Noninfringement and
Invalidity Claims/Defenses Disclosed After Discovery
Despite its genericized title, this motion boils down to an attack on
certain theories advanced by Handspring's putative experts Allais and
Cheponis. With respect to Allais's obviousness theories, we have already
decided the issue in Handspring's favor. With respect to Cheponis's
nonenablement contentions, there is nothing improper about an expert
advancing an independent opinion, even if that opinion does not precisely
track the interrogatory responses given by the party tendering the
expert. Thus, this motion is denied. 9. Motion to Exclude Arguments Relating to Inequitable
The question of inequitable conduct has been bifurcated from the issues
to be presented to the jury in this case. DataQuill moves to exclude this
issue from the upcoming jury trial. Handspring agrees, as it must, that
the issues pertaining to DataQuill's allegations of inequitable conduct
have no place in front of a jury. Consequently, this motion is granted.
10. Motion to Exclude Advice of Counsel or Other Matters That
Handspring Asserted Were Privileged
With its final motion in limine, DataQuill seeks to preclude Handspring
from advancing advice of counsel as a defense to any of the claims in
this suit, particularly willful infringement. The motion is predicated on
Handspring's earlier disavowal of any intention to advance this ground in
presenting its defense as well as Handspring's refusal to permit
discovery into any legal advice it received in this case. Handspring does
not appear to quibble with this motion to the extent it encompasses
advice of counsel. However, there is a concern on Handspring's part that
the evidence excluded not extend to other defenses it may have to a claim
of willful infringement. DataQuill's motion, by its terms, does not
extend beyond the issue of advice of counsel. The motion is granted. As
none of the other potential issues causing Handspring's unease are
properly before us, we express no opinion on their applicability or
admissibility. B. Handspring's Motions
1. Motion to Exclude Testimony of Edward Koch
Handspring objects to two items of proposed testimony from Edward Koch:
1) matters outside his expert report and deposition, and 2) his opinion
on the weight of the evidence presented by DataQuill. With respect to the
latter, the motion is granted. Despite DataQuill's argument that Koch is
qualified to include his opinion of whether the evidence is sufficient to
surpass the applicable "clear and convincing" standard, we agree with
Handspring that it is the province of the jury to decide this for
themselves. To allow Koch, as an expert, to opine in this area is fraught
with danger that the jury will not thereafter be able to reach an
independent conclusion on that issue. With respect to the former, the
motion is denied. The potential evidence and testimony within its reach
is too extensive for us to categorically exclude it at this point.
2. Motion to Exclude Evidence of Inducement of Infringement by
Handspring Treo Products
This motion was prompted by DataQuill's inclusion of an inducement to
infringe claim with respect to Handspring's line of Treo products.
Handspring seeks to exclude this theory, attesting that this is the first
appearance of the theory and thus comes too late to be included in the
upcoming trial. We agree. As was apparent from the parties' submissions and our opinion deciding the motion for summary
judgment, DataQuill did not contend at that time that its inducement
theory extended to the Treo line, despite the fact that Handspring's
noninfringement challenge contained no restriction to certain brands or
products. Therefore, we disagree with DataQuill's assertion that this
claim has been in the suit all along; rather, it appears it made its
debut in the proposed jury instructions. Consequently, this motion is
3. Motion to Exclude Evidence Relating to Handspring Treo 300 and
Treo 600 Products
In this motion, Handspring challenges the inclusion of evidence with
respect to two of its Treo line of products, which were not released
until well after this suit was underway. Because these products
necessarily could not have been included in the parties' fact discovery,
Handspring contends that they cannot find their way into the trial.
DataQuill counters that the two products were fair game during expert
discovery and were explored to some extent at that time. Furthermore, it
does not appear that these two products are so radically different from
their predecessors that wholescale exclusion of them would be warranted
based on their somewhat tardy arrival. Accordingly, this motion is
denied. 4. Motion to Exclude Evidence of Direct Infringement Relating to
Handspring Visor Product Combinations
In its response to this motion, DataQuill states that it does not
intend to revisit our prior rulings that it is limited to asserting
inducement to infringe with respect to Visor product combinations. In
light of this representation, we grant Handspring's motion to exclude
evidence pertaining to direct infringement of the `304 patent by
combinations of Visor products.
5. Motion to Permit Testimony of Donna Dubinsky and Jeff
This motion is the converse of DataQuill's second motion. As stated in
our earlier discussion, both Dubinsky and Hawkins will be allowed to
testify. Accordingly, this motion is granted.
6. Motion to Exclude Evidence of Glenayre Sales of Handspring
Visor Products and Wireless Modems
Handspring's sixth motion pertains to evidence of sales of a
combination product manufactured by a company called Glenayre Electronics
("Glenayre") that includes its Visor product. Sale of the finished
product is permitted by a license DataQuill granted to Glenayre. Despite
this, DataQuill claims that Handspring should be subject to a claim for
inducing Glenayre customers to use the final product and thus to infringe
the `304 patent to the extent that that Visor product is included.
However, if there can be no infringement by the finished product, we fail to
see how a customer can be induced to do something that is not itself
possible. Thus, this motion is granted.
7. Motion to Exclude Evidence of Foreign Sales
In this motion, Handspring seeks to prevent DataQuill from including
within its damage calculation any sales of products that were
manufactured and sold entirely outside of the United States. The motion
contends that these sales cannot be considered because of the territorial
nature of patent rights. DataQuill counters that its calculations are
allowable because they can be tied to an offer to sell by Handspring
within the boundaries of this country, thus potentially bringing it
within the ambit of 35 U.S.C. § 271. In this instance, DataQuill has
the better of the argument. As discussed at length in a case cited by
Handspring, the predecessor of the current § 271 limited infringing
activities to manufacture, use, or sale within the United States.
Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251-57
(Fed. Cir. 2000). However, the addition of the "offers to sell" language
expanded the types of activities within our borders that can support
damages for infringement. As a result, we cannot say at this stage that
the foreign sales Handspring cites could not possibly fall within the
scope of § 271. The motion is therefore denied. 8. Motion to Exclude Evidence of Inducement of Infringement
With this motion, Handspring attempts to bar DataQuill from presenting
any evidence of inducement of infringement. It argues that DataQuill has
not identified evidence of specific intent to induce infringement or
actual infringement by a third party who was induced by Handspring's
actions. We disagree that there is no evidence whatsoever bearing on
these two issues; whether it will be enough to allow DataQuill to carry
the day is a separate question that cannot be resolved on a motion in
limine. Thus, the motion is denied.
9. Motion to Exclude Testimony of N. Rhys Merrett, Mark Milhench,
and Ian Harris
In response to this motion, DataQuill represents that it will not call
these witnesses during the jury portion of the trial. The motion is
10. Motion to Exclude Evidence of Secondary Considerations of
The responses to Handspring's Interrogatory No. 14 contain explication
and examples regarding DataQuill's contentions of secondary
considerations of nonobviousness. While we express no opinion regarding
the strength of this support, we will not exclude DataQuill from
presenting it at trial. The motion is denied.
Based on the foregoing analysis, DataQuilPs first, second, third,
fourth, sixth, seventh, and eighth motions in limine are denied. Its
ninth and tenth motions are granted. The court will entertain brief oral argument on
DataQuill's fifth motion in limine at time of trial.
Handspring's third, seventh, eighth, and tenth motions in limine are
denied. Its second, fourth, fifth, sixth, and ninth motions are granted.
Its first motion is denied in part and granted in part as discussed
within the court's opinion.