The opinion of the court was delivered by: RICHARD A. POSNER, Circuit Judge
MEMORANDUM OPINION & ORDER
Pinpoint Incorporated ("Pinpoint") sues Amazon.com, Inc.,
Babiesrus.com, LLC, Borders Group, Inc., Borders, Inc., BeMusic,
Inc. (incorrectly identified as CDnow, Inc.), Egghead.com, Inc.,
Target Corporation, Toys "R" Us, Inc., Toysrus.com, Inc., Virgin
Group Ltd. and Walden Book Company, Inc. (incorrectly identified
as Walden Books, Inc.) (collectively, "Amazon") for patent
infringement pursuant to 35 U.S.C. § 271 et seq.*fn1
Pinpoint charges Amazon with infringement of two Pinpoint
patents. Specifically, Pinpoint claims Amazon's website contains
technology providing personalized book and music video
suggestions for customers that infringe U.S. Patent Nos.
5,758,257 ("the '257 patent"), 6,088,722 ("the '722 patent"), and
5,754,939 ("the '939 patent"). Amazon denies infringing the
patents and argues the patents' claims are invalid and
unenforceable. On August 31, 2004, this court granted Amazon
summary judgment motion on the issue of invalidity of claims 1-7 of the
'939 patent. Amazon's summary judgment motion was denied as to
non-infringement and invalidity of the '257 and '722 patents.
Both parties move in limine to bar evidence at trial.
Evidence is excluded on a motion in limine only if the
evidence is clearly inadmissible for any purpose. See Hawthorne
Partners v. AT&T Technologies, 831 F. Supp. 1398, 1400 (N.D.
Ill. 1993). Motions in limine are disfavored; admissibility
questions should be ruled upon as they arise at trial. Id.
Accordingly, if evidence is not clearly inadmissible, evidentiary
rulings must be deferred until trial to allow questions of
foundation, relevancy and prejudice to be resolved in context.
Id. at 1401. Denial of a motion in limine does not indicate
evidence contemplated by the motion will be admitted at trial.
Instead, denial of the motion means the court cannot or should
not determine whether the evidence in question should be excluded
before trial. United States v. Connelly, 874 F.2d 412, 416 (7th
II. Inequitable Conduct Attorney-Witnesses
Pinpoint moves to exclude the expert reports and testimony of
Mark Nusbaum, an attorney-witness Amazon offers to support its
inequitable conduct defense. In turn, Amazon moves to exclude the
expert reports and testimony of William Ellis, an
attorney-witness Pinpoint offers to oppose Amazon's inequitable
conduct defense. The parties' arguments to exclude the attorney witnesses
substantially overlap. Accordingly, the court addresses the
Pinpoint seeks to exclude Mark Nusbaum's opinions about Patent
and Trademark Office ("PTO") procedures and inequitable conduct
legal standards. Pinpoint seeks to exclude Nusbaum's opinions to
the extent they: (1) explain general PTO practices; (2) summarize
prosecution histories; (3) explain duty of disclosure and
materiality standards; and (4) opine on the materiality of
undisclosed prior art. Pinpoint contends Nusbaum's opinions
regarding PTO procedures inappropriately criticize the PTO and
summarize a variety of patent law issues. Pinpoint cites an
opinion excluding Nusbaum's testimony that insinuated the PTO
does not do its job properly. See Applied Materials, Inc. v.
Advanced Semiconductor Materials Am., Inc., No. 92-20643 RMW,
1995 WL 261407, at *3 (N.D. Cal. Apr. 25, 1995). Pinpoint
contends Nusbaum's explanation of patent law is unnecessary
because the court does not need his explanations of the legal
requirements of an applicant's duty to disclose or the
materiality of undisclosed prior art; Nusbaum admitted he lacks
technical qualifications or skill in the art. Pinpoint asserts
his testimony would be cumulative of Amazon's technical expert
about the same prior art references. Finally, Pinpoint argues
summaries of prosecution histories are unnecessary because the
histories are self-explanatory and will be trial exhibits.
Amazon responds that expert testimony on PTO operations can be
helpful, citing Chamberlain Group, Inc. v. Interlogix, No. 01 C
6157, 2002 U.S. Dist. LEXIS 6998, at *3-4 (N.D. Ill. Apr. 18, 2002). Amazon contends Nusbaum
does not criticize the PTO. Rather, he notes the time constraints
patent examiners face to demonstrate why the PTO must rely on the
duty of disclosure and candor. Further, Amazon contends Nusbaum,
a former PTO examiner, member of the Board of Patent Appeals and
Interferences, patent attorney, and author of PTO Computer
Programming Guidelines, is qualified to provide expert opinion
testimony regarding undisclosed prior art. Amazon asserts Nusbaum
will explain the PTO's incorporation of law into the procedures
and practices used to examine patents, but will not testify about
regulations and case law. In addition, Amazon argues Nusbaum's
testimony summarizing the patent histories is not merely a
"factual narrative," as Pinpoint alleges. Rather, Amazon contends
his testimony focuses the trier of fact's attention on the
relevant issues buried in the histories, which may be helpful to
understanding the issues in this patent infringement action.
Chamberlain Group, 2002 U.S. Dist. LEXIS 6998, at *3-4.
Finally, Amazon notes courts only discourage the use of patent
lawyers as experts when they seek to provide opinions on the
interpretation of a claim as a matter of law. Id.
Amazon seeks to exclude William Ellis' testimony that: (1)
opines on conclusions of law; (2) asserts material from one
patent examination is considered in another patent's proceedings;
and (3) opines on earlier conception or reduction to practice.
Amazon argues Ellis is unskilled in the relevant art and
therefore unqualified to give expert testimony about prior art.
Further, Amazon asserts Ellis' testimony is cumulative of Pinpoint's technical expert, and that his testimony
regarding the PTO recites regulations and case law unhelpful to
the court. Amazon argues the court does not need a patent
lawyer's advice about patent law. In addition, Amazon contends
Ellis impermissibly offers legal opinions regarding the
obligation of good faith and candor to the PTO, the definition of
a person of ordinary skill in the art, and the elements and
burdens of Amazon's inequitable conduct defense. Finally, Amazon
argues Ellis should not be permitted to opine that prior art
cited in a continuation-in-part application has been considered
by the reviewing examiner, or regarding conception or diligence
in the absence of requisite third-party testimony.
Pinpoint correctly notes Amazon offers many of the same
arguments, and cites some of the same case law found in
Pinpoint's memorandum to exclude Nusbaum. Because many of the
arguments overlap, Pinpoint contends the parties appear to agree
on four issues: (1) testimony on the legal standards governing
inequitable conduct is improper legal opinion that does not
assist the trier of fact; (2) to the extent expert testimony
regarding prior art is cumulative to technical expert testimony
regarding the same prior art, prior art opinions should be
excluded; (3) to the extent an expert is not skilled in the
relevant art, his opinion testimony is unreliable; and (4) Ellis
will not testify regarding conception or diligence in reduction
to practice. However, Pinpoint argues Ellis should be permitted
to testify, especially to rebut Nusbaum about PTO practice and
procedure regarding the examination of familial applications ...