Nortek Air Solutions, LLC v. Energy Labs, Corp.

          ORDER REGARDING MOTIONS IN LIMINE [RE: ECF 226, 227, 228, 229, 230, 231, 232, 233, 235]

         Plaintiff Nortek Air Solutions, LLC (“Nortek”) brings this patent infringement lawsuit against Defendants Energy Labs Inc., DMG Corporation, and DMG North, Inc. (collectively, “Energy Lab”) alleging infringement of seven of Nortek’s patents directed at air handling systems that meet the heating, ventilation, and air conditioning (“HVAC”) requirements of commercial, industrial, and institutional buildings: U.S. Patent Nos. 7, 922, 442 (the “’442 patent”); 8, 414, 251 (the “’251 patent”); 8, 398, 365 (the “’365 patent”); 8, 562, 283 (the “’283 patent”); 8, 694, 175 (the “’175 patent”); 8, 727, 700 (the “’700 patent”); and 8, 734, 086 (the “’086 patent”) (collectively, “Asserted Patents”). Compl., ECF 1. This Order addresses the parties’ motions in limine. For the reasons explained below and on the record at the July 6, 2016 pretrial conference, the motions are decided as follows:

Nortek’s Motion in Limine No. 1: DENIED.

Nortek’s Motion in Limine No. 2: DENIED.

Nortek’s Motion in Limine No. 3: DENIED.

Nortek’s Motion in Limine No. 4: DENIED.

Nortek’s Motion in Limine No. 5: GRANTED IN PART AND DEFERRED IN PART.

Energy Labs’ Motion in Limine No. 1: DENIED IN PART AND DEFERRED IN PART.

Energy Labs’ Motion in Limine No. 2: GRANTED.

Energy Labs’ Motion in Limine No. 3: DENIED.

Energy Labs’ Motion in Limine No. 4: DENIED.

         I. NORTEK’S MOTIONS IN LIMINE

         A. Nortek’s Motion in Limine No. 1 to Exclude Evidence or Argument Related to Alleged Prior Art Systems. DENIED.

         Nortek moves to exclude Energy Labs’ (1) invalidity theories based on prior art systems or products from CleanPak; (2) anticipation and single-reference obviousness theories based on Pace and Energy Labs; and (3) single-reference obviousness theories. MIL No. 1 at 1, ECF 230. According to Nortek, Energy Labs did not properly disclose a CleanPak System as required by Fed.R.Civ.P. 26(a)(2)(B)(i). Id. at 2-3. Nortek also claims Energy Labs has not identified a single Pace or a single Energy Labs system for its anticipation and single-reference obviousness theories. Id. at 3-4. Finally, Nortek argues that Energy Labs did not properly disclose its single-reference obviousness theories as required by Fed.R.Civ.P. 26. Id. at 4-5.

         Energy Labs responds that it sufficiently disclosed its invalidity positions in its invalidity contentions and expert’s invalidity reports. Opp. No. 1 at 1, ECF 241. Energy Labs also argues that its disclosures are sufficient because after Nortek received its invalidity contentions on December 18, 2015, and expert reports on January 15, 2016, Nortek stipulated on February 29, 2016 that its complaints regarding the sufficiency of the invalidity contentions had been resolved. Id.

         The Court agrees with Energy Labs and finds that Nortek’s stipulation as to the adequacy of Energy Labs’ invalidity contentions resolved this issue.^[1] To be clear, there can be times where a party’s invalidity contentions are sufficient under the Patent Local Rules, but that party’s expert’s report does not contain adequate Rule 26(a) disclosure. However, in this motion, what Nortek disguises as a Rule 26(a) objection is really an objection to the adequacy of the invalidity contentions. If Nortek believed the invalidity contentions were insufficient, it could have brought an appropriate motion to compel. It did not, and instead, agreed the invalidity contentions were sufficient. Stipulation, ECF 165. As a result, the Court will not re-visit this issue and DENIES Nortek’s motion in limine no. 1.

         B. Nortek’s Motion in Limine No. 2 to Exclude Evidence or Argument Related to Obviousness. DENIED.

         Nortek seeks to exclude all of Energy Labs’ obviousness theories because they were not properly disclosed as required by Fed.R.Civ.P. 26. MIL No. 2 at 1, ECF 231. Nortek argues that Energy Labs concealed the combinations of references they actually intend to use at trial by reciting every possible combination of prior art in its invalidity reports. Id.

         In response, Energy Labs argues that its experts disclosed discrete obviousness combinations and provided detail for each specific combination. Opp. No. 2. at 1, ECF 242. Energy Labs also argues that this motion is an untimely attempt to preclude its obviousness defenses. Id. at 1-2. According to Energy Lab, Nortek previously moved to compel more specific invalidity contentions but dropped that motion after it received Energy Labs’ supplemental invalidity report. Id. Energy Labs argues that Nortek, until this motion, never raised any issues with Energy ...