The opinion of the court was delivered by: Oliver W. Wanger United States District Judge
ORDER RE PLAINTIFF DUHN OIL TOOL‟S MOTIONS IN LIMINE (DOCKET NOS. 518-525,546- 547).
Pending before this Court are Plaintiff/Counterclaim Defendant Duhn Oil Tool, Inc.‟s ("Duhn") Motions in Limine Nos. 1 through 10 (Docs. 518-525, 546-547). The Court has considered all the parties‟ respective moving and opposition papers and related documents and oral arguments, and finds as follows:
1. Duhn‟s Motion in Limine No. 1, Preclude Cameron from Offering Evidence, Argument or Instructions Regarding a Purported Non-Infringement Opinion (Doc. 518).
Duhn‟s Motion in Limine No. 1 is DENIED without prejudice.
2. Duhn‟s Motion in Limine No. 2, Preclude Cameron from Offering Evidence, Argument or Instructions Regarding its Allegation that John A. Rogers is a Co-Inventor of Patent No. 6,920,925 (Doc. 519).
Duhn‟s Motion in Limine No. 2 is DENIED without prejudice.
3. Duhn‟s Motion in Limine No. 3, Preclude Cameron‟s Expert Alan Ratliff from Offering the Royalty Rate Opinion Set Forth in his Report (Doc. 547-Filed Under Seal)
Duhn seeks to exclude opinions offered by Defendant Cameron International Corp.‟s ("Cameron") damages expert, Mr. Alan Ratliff. The Court ordered that Duhn may take another deposition of Mr. Ratliff regarding his opinion regarding adjustment of the royalty rate of 1%. That deposition has been concluded. The Court has reserved ruling on this motion. Mr. Ratliff may testify to disclosed opinions.
4. Duhn‟s Motion in Limine No. 4, Preclude Cameron from Offering Evidence or Argument Regarding Inequitable Conduct based on Duhn‟s Alleged Failure to Apprise the Patent Office of the Instant Action During Prosecution of the "407 Patent (Doc. 520)
Duhn seeks to preclude reference to any alleged failure to apprise the Patent Office of the instant action during prosecution of the "407 Patent. The Court has previously ruled on and rejected Cameron‟s "reverse infectious estoppel" inequitable conduct argument. Cameron now seeks to introduce evidence regarding the prosecution of the "407 Patent as subsequent conduct relevant under Fed. R. Evid. 404(b).
Duhn‟s Motion in Limine No. 4 is DENIED, on the condition that the foundation must be laid for the evidence. Cameron must show that: disclosure of the instant litigation was deferred or withheld from the Patent Office at all relevant times; the information regarding the instant litigation was material at all relevant times; the information would have made a difference to the prosecution of the application that matured into the "407 Patent; and that the "407 Patent is a continuation of the "925 Patent. These showings must be made before the opening statement or evidence entered regarding this effect of the prosecution of the "407 Patent.
5. Duhn‟s Motion in Limine No. 5, Preclude Cameron from Offering Evidence or Argument Regarding Duhn‟s Corporate Identification Disclosure Statement (Doc. 521)
Duhn seeks to preclude Cameron from offering evidence or argument regarding Plaintiff‟s Supplemental Corporate Identification Disclosure Statement ("Corporate Disclosure Statement") (Doc. 251). Cameron contends that the Corporate Disclosure Statement provides evidence of knowledge of entities related to Duhn. The Court rules that the Corporate Disclosure Statement may only be admissible to establish a disputed fact if there is a dispute regarding corporate knowledge of the entities or their affiliation or if it bears on payment of the small entity fees.
Duhn‟s Motion in Limine No. 5 is DENIED. However, the Corporate Disclosure Statement will not be automatically allowed into evidence; the offering party must provide a further showing of relevance because the Corporate Disclosure ...