The opinion of the court was delivered by: Jeanne E. Scott, U.S. District Judge
This matter comes before the Court on the Motions in Limine filed by the parties. Plaintiff GSI Group, Inc. (GSI), has alleged that Defendant Sukup Manufacturing Co. (Sukup) infringed on the following patents held by GSI: U.S. Patent 5,135,271 (271 Patent) covering a latching device with an improved pin design for grain bin doors; U.S. Patent 5,400,525 (525 Patent) covering a flame cone in a grain bin heater; and U.S. Patent No. 6,076,276 (276 Patent), U.S. Patent No. 6,073,367 (367 Patent), U.S. Patent No. 6,073,364 (364 Patent), and U.S. Patent No. 6,233,843 (843 Patent) (collectively the Tower Dryer Patents) covering various aspects of a sweep grain unloading device (Sweep Unloader) used in GSI's tower grain dryers. GSI also claims that Sukup's infringement was willful and requests enhanced damages.
Sukup's Second Counterclaim alleges tortious interference with business relationships, Sukup's Fourth and Fifth Counterclaims allege unfair competition in violation of the Lanham Act. 15 U.S.C. § 1051 et seq. Defendant Sukup Manufacturing Co.'s First Amended Answer, Affirmative Defenses and Counterclaims and Demand for Jury Trial in Response to Plaintiff's Third Amended Complaint (d/e 161). Sukup seeks punitive damages on these Counterclaims. This matter is set for trial on January 6, 2009.
The parties have filed numerous Motions in Limine. The Court has carefully considered the Motions and the Responses and rules on the Motions as follows.
I. GSI's MOTIONS IN LIMINE
1. GSI's Motion in Limine to Preclude Sukup from Referring to GSI or the Inventors of the Patents-In-Suit Negatively Because They Sought Legal Protection for Their Inventions or Referring Negatively to GSI's Corporate Ownership in any Manner (d/e 687)
The Motion is ALLOWED in part. GSI asks the Court to bar evidence of the wealth of the owners of GSI. The Court allows this portion of the Motion. The wealth of GSI's stockholders is not relevant. Sukup states that it wants to present evidence of this wealth to establish its claim for punitive damages. The wealth and value of GSI may be relevant to a punitive damages claim, but not the wealth of GSI's stockholders. This portion of the Motion is allowed.
The remainder of the Motion is denied. The Motion asks to bar evidence of the identity and location of the owners of GSI. Sukup correctly notes that the identities of GSI's owners is relevant to determining bias during jury selection. Based on the summary judgment motions, Sukup intends to present evidence that GSI's CEO Richard Christman participated in composing the press release that is part of the basis of the Sukup's Fourth Counterclaim. See Defendant Sukup Manufacturing Company's Amended Response in Opposition to GSI's Partial Motion for Summary Judgment on Sukup's Second Counterclaim for Tortious Interference (d/e 428) (d/e 555), at 37-38. Christman's background and relationship to GSI and its owners would be relevant and admissible. At this time, therefore, the Court will not bar evidence of the identity and location of the owners of GSI.
The Motion asks the Court to preclude Sukup from using negative references. This request is denied as vague. Sukup's counsel is obligated to limit its statements and arguments to matters that can be supported by the evidence and fair inference therefrom, and further limited by their general ethical duties and their obligations as officers of the Court. GSI's counsel, of course, may object if they believe that Sukup's counsel is going beyond these limits.
The only specific "negative" term to which GSI objects is a reference to a patent holder as having a "monopoly" as a result of the patent. The Court does not believe that the term is pejorative and will not bar the term. The case cited by GSI to support this proposition related to an improper jury instruction, not argument. Jamesbury Corp. v. Litton Indus. Products, Inc., 756 F.2d 1556, 1558-59 (Fed.Cir. 1985) overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020 (Fed.Cir. 1992). Defendant Sukup notes that GSI's expert Mark Hoffman uses the term "monopoly" to refer to GSI's rights under its patents. The Motion, therefore, will not bar the use of the term "monopoly" to describe the interest of a patent holder in its patent.
2. GSI's Motion In Limine to Preclude Sukup from Denigrating the Patent Office or its Examiners (d/e 689)
The Motion is DENIED. The Motion is again vague. Sukup's counsel is obligated to limit its statements and arguments to matters that can be supported by the evidence and fair inference therefrom, and further limited in the terms that they may use by their general ethical duties and their obligations as officers of the court. GSI's counsel, of course, may object if they believe Sukup's counsel is going beyond these limits. The Motion, however, is denied.
3 & 4. GSI's Motion in Limine to Prohibit Sukup from Presenting or Arguing any Evidence or Testimony at Trial Concerning Alleged Inequitable Conduct as to GSI's Tower Dryer Patents (d/e 691) and GSI's Motion in Limine to Prohibit Sukup from Presenting or Arguing any Evidence or Testimony at Trial Concerning Alleged Inequitable Conduct as to GSI's Bin Patent (d/e 693)
The Motions are ALLOWED in part. The Court already entered partial summary judgment on Sukup's inequitable conduct defense. Opinion entered September 11, 2008 (d/e 667) (Opinion 667), at 47. Sukup is, thus, barred from making any arguments or statements to the jury that GSI, or its predecessor, engaged in inequitable conduct in securing these patents, or that GSI or its predecessors intended to mislead the Patent and Trademark Office (PTO), or otherwise acted fraudulently, during the patent application.
GSI, however, has put Sukup's intent to infringe at issue by asserting a claim for enhanced damages due to willfulness. Sukup's alleged willfulness may depend on its belief regarding the validity of GSI's patents. Thus, evidence regarding the patent application process may be relevant to Sukup's belief on the validity of the patent. Evidence that certain prior art was not presented to the PTO may be relevant to show Sukup's belief regarding the validity of GSI's patents. When used for that purpose, such evidence may be relevant.
Sukup, however, may not present to the jury any argument or evidence that Sukup believed that GSI's patents were invalid because GSI or its predecessors engaged in fraudulent or inequitable conduct in the patent application process without first making a proffer outside the presence of the jury. The Court will then be in a better position to weigh the probative value of the particular evidence against the potential prejudice that could be caused by the interjection of such terms into the trial.
5. GSI's Motion in Limine to Exclude All Argument, Evidence and Testimony Inconsistent with the Court's Claim Construction Opinion and Order (d/e 99) (d/e 695) (Motion 695)
The Motion is DENIED because GSI does not identify the evidence it wants to bar in advance of trial. Claim construction is a matter of law. The Court construed the claims after the Markman hearing. Opinion entered September 27, 2006 (d/e 99) (Opinion 99). The Court further construed certain claims in its summary judgment opinions. Opinion 667, at 35-36; Opinion entered October 8, 2008 (d/e 682) (Opinion 682), at 13-17. The Court's construction of these claims is the law of the case. The parties may not present evidence of, or argue for, a construction of a claim that is inconsistent with the Court's construction. Some matters, however, may be subject to some differences of opinion by the experts. For example, the parties' experts disagree on what the term "off the pins" means with reference to the Court's construction of various claims in the grain bin door patent. See Opinion 667, at 49. In such cases, the parties may object at trial and the Court will determine whether the evidence is admissible as a fair difference of opinion in the application of the Court's construction of the claim, or inadmissible as an improper introduction of an improper construction of the claim. A flat bar in limine, however, is improper.
6. GSI's Motion in Limine to Exclude GSI's Income Tax Returns (d/e 696)
The Motion is ALLOWED in part. GSI's income tax returns may be relevant to Sukup's request for punitive damages, but the evidence is otherwise irrelevant and inadmissible. Sukup, therefore, may not present GSI's tax returns during the liability phase of the trial. During the damages phase, Sukup may not admit GSI's tax returns until the Court finds that Sukup has presented evidence sufficient to support a claim for punitive damages. When Sukup believes that it has made a sufficient showing, it may ask the Court outside the presence of the jury for a determination of whether it has made a sufficient showing to allow the admission of GSI's tax returns.
7. GSI's Motion in Limine to Exclude GSI Attorney William Cunningham as a Trial Witness (d/e 698)
The Motion is ALLOWED in part. Sukup may not call attorney Cunningham as a witness or seek to admit part of his deposition testimony without first making a showing outside the presence of the jury that, under the circumstances, attorney Cunningham should be required to testify. The Court will need to evaluate the specific evidence Sukup seeks to admit through attorney Cunningham, any alternatives for admitting this evidence, and the potential prejudice to GSI from requiring attorney Cunningham to take the stand.
8. Plaintiff's Motion in Limine to Exclude any Evidence and Testimony Related to Prior Settlement Negotiations and Offers to Compromise (d/e 703)
The Motion is ALLOWED in part. Communications regarding settlement negotiations are not admissible and are barred except for settlement communications related to the Tower Dryer Patents from January 2005, to the end of September 2005. These settlement communications are relevant to Sukup's Second and Fourth Counterclaims. See Opinion October 15, 2008 (d/e 743) (Opinion 743), at 9-16.
GSI and Sukup are directed to confer and agree on any appropriate redactions to eliminate reference to settlement discussions, related to other patents, from evidence that either intends to present concerning settlement negotiations of the Tower Dryer Patents between January 2005, and the end of September 2005.
9. GSI's Motion in Limine to Exclude all Evidence of All Tower Dryers other than "Zimmerman" Brand with Regard to Sukup's Fifth Counterclaim (d/e 711) (Motion 711)
The Motion is ALLOWED. Sukup alleged in its Fifth Counterclaim that GSI began distributing brochures that falsely represented the blower, heater, and drying capacities of its tower dryer products as shown in Exhibit 11 of its Third Amended Complaint. Defendant Sukup Manufacturing Company's First Amended Answer, Affirmative Defenses and Counterclaims and Demand for Jury Trial in Response to Plaintiff's Third Amended Complaint (d/e 161) (Sukup Answer), Fifth Counterclaim, ¶ 43. Exhibit 11 is a Zimmerman brand tower dryer brochure distributed by GSI.
GSI argues that Sukup's Fifth Counterclaim should be limited to Zimmerman brochures and asks the Court to exclude evidence of other tower dryers that GSI markets under other brand names. The Court agrees. The Fifth Counterclaim alleges unfair competition in violation of the Lanham Act. 15 U.S.C. § 1125. The Court agrees with the persuasive authority presented that this claim requires proof that GSI committed deceptive acts, and as such, Sukup should allege that deception with particularity. Fed. R. Civ. P. 9(b); see Rosenberg v. Cottrell, Inc., 2007 WL 2028789, at *1 (S.D.Ill., 2007). Sukup only alleged with particularity the claimed misrepresentations in the Zimmerman brochure. Evidence of advertising of other products, thus, is not relevant and could be confusing to the jury.
Sukup argues that it should be allowed to proceed on additional deceptive misrepresentations that it learned in discovery. Sukup may proceed on additional misrepresentations learned in discovery if Sukup provided sufficient notice of these additional misrepresentations to GSI to allow GSI to prepare for those claims at trial. See Opinion entered October 28, 2008 (d/e 745) (Opinion 745), at 17-19. In this case, Sukup argues that it gave adequate notice in its answers to interrogatories and in the supplemental reports of its expert witness Wayne Newkirk, Ph.D. The Court disagrees. Sukup's supplemental answer to an interrogatory says, "GSI also sold ffi and GSI tower dryers with smaller burners and blowers, while claiming identical drying flow rates which were inflated." Defendant Sukup Manufacturing Co.'s Response in Opposition to GSI's Motion in Limine and Memorandum in Support to Exclude All Evidence of Tower Dryers Other than "Zimmerman" (d/e 711 and 712) (d/e 788) (Sukup Opposition 788), Exhibit C, Defendant Sukup Manufacturing Co.'s Supplemental Answers to GSI's Interrogatory Nos. 8, 10, 11, 13, 14, 15, 16, 17, 26, and 27 (Sukup Supplemental Answers to Interrogatories), at 20.
This disclosure is not sufficient because Sukup did not identify the specific additional representations that were claimed to be false or deceptive. The purpose of Rule 9 is to provide notice of the specific allegations of false statements. See Opinion 745, at 18, and cases cited therein. Sukup's supplemental answer quoted above lacked such specificity and so did not give sufficient notice.
Sukup also claims that Appendix II of Newkirk's Amended Report gave notice to GSI of the claimed misrepresentations. Sukup Opposition 788, Exhibit B, EFC's Amended Rebuttal to a Report of Mark Hoffman issued 10/1/07 Entitled Unfair Competition: Lanham Act 15 U.S.C. § 1117, by Wayne Newkirk, Ph.D,, dated April 24, 2008 (April 24 Report). The Court again disagrees. Newkirk did not identify any misrepresentations in the April 24 Report, or in Appendix II to that Report. Newkirk's Appendix II only lists sales data, not misrepresentations. Further, Newkirk states in the body of the April 24 Report that Sukup's damages claim in the Fifth Counterclaim is limited to GSI's profits on the sale of Zimmerman dryers: "The measure of Sukup's damages as referenced at p. 2 of this report is GSI's profits on the sale of Zimmerman dryers subject to the principles of equity." April 24 Report, at 16. Thus, Newkirk's April 24 Report notified GSI that the Fifth Counterclaim was limited to Zimmerman dryers.
Given the inadequacy of the disclosures in Sukup's Supplemental Answers to Interrogatories, and Newkirk's statement in the April 24 Report, Sukup did not give adequate notice of an expansion of the scope of the Fifth Counterclaim. The Fifth Counterclaim is limited to a claim based on GSI's advertising of the Zimmerman tower grain dryers. Evidence about other GSI grain dryers is barred.
10. GSI's Motion in Limine to Exclude Questions, Instructions, Objections and Refusal to Answer Re Deposition of William Cunningham (d/e 716)
The Motion is DENIED as moot since attorney Cunningham currently will not be called to testify. Should the Court determine that attorney Cunningham be required to testify, GSI may renew this Motion and have the issue resolved outside the ...