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November 19, 2004.

Pinpoint Inc., Plaintiff,
v., Inc. et al., Defendants.

The opinion of the court was delivered by: RICHARD A. POSNER, Circuit Judge


Pinpoint Incorporated ("Pinpoint") sues, Inc.,, LLC, Borders Group, Inc., Borders, Inc., BeMusic, Inc. (incorrectly identified as CDnow, Inc.),, Inc., Target Corporation, Toys "R" Us, Inc.,, 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.


  I. Standard of Review

  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 Cir. 1989).

  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 motions together.

  A. Pinpoint's Motion

  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.

  B. Amazon's Motion

  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 ...

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