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Illinois Tool Works, Inc. Dba Wynn's, A Delaware Corp v. Moc Products Company

August 17, 2012


The opinion of the court was delivered by: Honorable Janis L. SammartinoUnited States District Judge


Presently before the Court are nine motions in limine: five filed by Plaintiff Illinois Tool Works, Inc. d/b/a Wynn's ("Plaintiff" or "ITW") and four filed by Defendant MOC Products Company, Inc. ("Defendant" or "MOC"). A hearing on the motions was held on August 9, 2012. Having considered the parties' arguments and the law the Court rules as follows.

1. Plaintiff's MiL No. 1: Motion to Preclude MOC from Referencing Certain Alleged Acceptable Non-Infringing Substitutes to the Patented Inventions (ECF No. 253)

The Court GRANTS IN PART AND DENIES IN PART ITW's motion to preclude reference to certain alleged acceptable noninfringing substitutes. MOC does not oppose the motion to the extent it seeks to preclude expert testimony from David Weiner, (Opp'n to Pl.'s MiL No. 1, at 8, ECF No. 261), and the motion is therefore GRANTED on this basis. As to the assertion of various acceptable noninfringing substitutes that MOC purportedly failed to list in its interrogatory responses, however, the Court DENIES the motion. Upon consideration, the Court agrees that, taken together, MOC's interrogatories adequately disclose other acceptable noninfringing substitutes not listed in interrogatory 11, or those devices are at least so sufficiently disclosed that the harsh Rule 37(c) sanction of exclusion is not warranted. To the extent that MOC seeks to introduce other products that are not arguably referenced in the other interrogatory responses, the Court DENIES the motion WITHOUT PREJUDICE to any objections raised at the time of trial.

2. Plaintiff's MiL No. 2: Motion to Preclude MOC from Referencing Alleged Motive of ITW in Bringing Lawsuit (ECF No. 254)

ITW seeks to preclude MOC from "offering argument or posing questions regarding [ITW's] alleged motive in bringing the instant lawsuit." (Pl.'s MiL No. 2, at 3, ECF No. 254) In various other Court filings, MOC has insinuated that ITW brought this action in retaliation for MOC's earlier patent infringement lawsuit against ITW, EBS Automotive Services & MOC Products Co., Inc. v. Illinois Tool Works Inc., dba Wynn's, Case No. 09-CV-996 JLS (MDD) [hereinafter "EBS"]. ITW contends that evidence of this alleged motive in bringing suit is irrelevant, misleading, and prejudicial. (Id.)

MOC opposes, arguing that ITW's motive in bringing this lawsuit is relevant to MOC's defense of laches based on ITW's allegedly unreasonable and unjustified delay in asserting its patent rights against MOC. (Opp'n to Pl.'s MiL No. 2, at 2, ECF No. 262) According to MOC, "[i]n evaluating whether the delay was reasonable the jury should be permitted to consider the reason ITW remained silent for eight years and the reason it finally changed its position and asserted infringement." (Id.)

The Courtagreesthat evidence of ITW's motive in bringing this suit carries with it a significant amount of prejudice, and moreover will unnecessarily complicate matters by bringing in evidence of the EBS case that is otherwise not pertinent to this action. However, if the evidence is relevant, it will be admissible so long as "its probative value is [not] substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury, or by considerations of undue delay, waste of time, or needless presentation of cumulative evidence. Fed. R. Evid. 403.

Laches is a defense to patent infringement where the defendant proves by a preponderance of the evidence that (1) "the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant"; and (2) "the delay operated to the prejudice or injury of the defendant."

A.C. Auckerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1032 (Fed. Cir. 1992) (en banc). Here, the parties are in agreement that a presumption of laches arose because ITW delayed more than six years in filing suit. Id. at 1035--36. In that case, ITW bears the burden to "rebut the presumption of laches 'by offering evidence to show an excuse for the delay or that the delay was reasonable' or by offering evidence 'sufficient to place the matters of [evidentiary] prejudice and economic prejudice genuinely in issue.'" Serdarevic v. Advanced med. Optics, Inc., 532 F.3d 1352, 1358 (Fed. Cir. 2008) (quoting Auckerman, 960 F.2d at 1038). But ITW does not plan to attempt to rebut the presumption of laches. Instead, ITW will seek to "preclude application of the laches defense with proof that [MOC] was itself guilty of misdeeds toward the patentee." Auckerman, 960 F.2d at 1038.

Given ITW's position, prior to oral argument the Court was inclined to grant the motion in limine, because the Court failed to see how ITW's motive in bringing suit would be relevant to the action. Even assuming ITW's delay was unreasonable and inexcusable, ITW asserts that the laches defense should not apply because of MOC's conduct in intentionally copying ITW's patented product and method. Under ITW's theory of the case, evidence pertaining to ITW's delay (and the reason for that delay) would seem unnecessary,*fn1 and any probative value of evidence of ITW's motive would therefore be outweighed by its prejudicial impact.

This subject was discussed at length during the hearing, and it is at the heart of much of the parties' disputes pertaining to the jury instructions. Indeed, the Court Ordered supplemental briefing on the laches issue in order to work toward a resolution of the disputed jury instructions and toward a course of action for determining the equitable issues in this case. Because the Court's decision on these issues may bear on the admissibility of this evidence, the Court RESERVES RULING on this motion in limine until a later date.

3. Plaintiff's MiL No. 3: Motion to Preclude MOC from Referencing ITW's Size or MOC's Status as a Family Business (ECF No. 255)

ITW next seeks to preclude MOC from referencing ITW's size or, relatedly, MOC's status as a family-run business because such references are irrelevant, prejudicial, and misleading. (Pl.'s MiL No. 3, ECF No. 255)

MOC asserts that ITW's size and market dominance are relevant to its defense of laches because "MOC will need to introduce evidence that ITW likely had actual knowledge, or at the very least, had constructive knowledge of MOC's accused device. Relevant to that will be ITW's duty and ability to investigate potential infringement." (Id. at 4) And, evidence of ITW's size and market dominance would tend to suggest that it had the ability to monitor the market for infringement. (See id. at 5) As above, the Court RESERVES RULING on this motion in limine until after the Court makes a determination as to the jury instructions and equitable defenses.

Because ITW seeks to preclude the defense of laches by proving that MOC was guilty of misdeeds, evidence of MOC's size and status as a family-owned business*fn2 would be relevant to ITW's charge that MOC knowingly copied ITW's patented product and method. This is because "MOC's size and status as a family-run business . . . is relevant to whether MOC had the capacity to know it was infringing." (Id. at 7) Moreover, as MOC points out, this evidence is also more generally relevant to rebut ITW's assertion that MOC willfully infringed the patent (in order to prove treble damages) and that MOC was willfully blind to infringement by others (in order to prove inducement of infringement). Thus, the Court DENIES ITW's motion to preclude evidence of MOC's size and status because that evidence is relevant to several of the issues to be tried.

4. Plaintiff's MiL No. 4: Motion to Preclude MOC from Offering into Evidence Certain Exhibits Not Produced in Discovery (ECF No. 256)

ITW seeks to preclude MOC from introducing the following exhibits into evidence: (1) Ex. 564: U.S. Patent No. 5,383,481 (Waelput); (2) Ex. 565: U.S. Patent No. 5,257,604 (Vataru);

(3) Ex. 567: U.S. Patent No. 5,425,333 (Baylor); (4) Ex. 569: U.S. Patent No. 5,150,742 (Motohashi); (5) Ex. 605: Wynn's Combustion Chamber Cleaning Tool, 31912; (6) Ex. 606: Wynn's Air Induction Tool, 32000/33000; and (7) Ex. 616: Sales of MOC Product #72172. (Pl.'s MiL No. 4, at 4, ECF No. 256) As to the first four exhibits (the various other patents), MOC states that these exhibits "are unrelated to the remaining suit, and, thus, MOC agrees not to use them at trial." (Opp'n to Pl.'s MiL No. 4, at 2, ECF No. 264) Thus, the Court GRANTS ITW's motion as to these four exhibits. The motion is DENIED as to the remaining exhibits, for the reasons discussed at the August 9, 2012, hearing.

5. Plaintiff's MiL No. 5: Motion to Preclude MOC from Offering into Evidence Deposition Testimony of Richard Scott from Another Lawsuit (ECF No. 257)

ITW's final motion in limine seeks to preclude MOC from introducing the deposition testimony of Richard Scott, which was taken in the EBS case. (Pl.'s MiL No. 5, at 3, ECF No. 257) MOC asserts that Mr. Scott's deposition testimony is admissible under Federal Rule of Civil Procedure 32(a)(8) and Federal Rule of Evidence 804(b)(1). (Opp'n to Pl.'s MiL No. 5, ECF No. 265)

Rule 32(a)(8) permits the use of a deposition taken in an earlier action "in a later action involving the same subject matter between the same parties, or their representatives or successors in interest, to the same extent as if taken in the later action." Here, ITW asserts that Rule 32(a)(8) does not apply because this case and the EBS case did not involve the same subject matter: "The instant action currently involves automotive engine intake cleaning methods . . . . In contrast, [the EBS case] involved brake flush machines and methods of using those machines." (Pl.'s MiL No. 5, at 3, ECF No. 257) MOC characterizes the two suits more broadly, however, stating that both involve "automotive service equipment." (Opp'n to Pl.'s MiL No. 5, at 2, ECF No. 265) Moreover, specific to the testimony MOC seeks to introduce, MOC asserts that "ITW's monitoring of MOC's product lines was an issue in both the EBS action and in this action." (Id. at 3 (citing Hub v. Sun Valley Co., 682 F.2d 776, 778 (9th Cir. 1982)))

The same subject matter and same parties requirements of Rule 32 "have been construed liberally in light of the twin goals of fairness and efficiency." Hub v. Sun Valley Co., 682 F.2d 776, 778 (9th Cir. 1982). Relevant here, the same subject matter requirement has generally been interpreted to require only "substantial identity of issues, rather than precisely the same subject matter . . . ." 8A Charles Alan Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice and Procedure ยง 2150 (3d ed. 2010) (citing Batelli v. Kagan & Gaines Co., 236 F.2d 167, 169 (9th Cir. 1956)). Further, "[t]he accepted inquiry focuses on whether the prior cross-examination would satisfy a ...

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