United States District Court, N.D. California, San Jose Division
ORDER REGARDING MOTIONS IN LIMINE [RE: ECF 226, 227,
228, 229, 230, 231, 232, 233, 235]
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.
NORTEK’S MOTIONS IN LIMINE
Nortek’s Motion in Limine No. 1 to Exclude
Evidence or Argument Related to Alleged
Prior Art Systems. DENIED.
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.
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
Court agrees with Energy Labs and finds that Nortek’s
stipulation as to the adequacy of Energy Labs’
invalidity contentions resolved this issue. 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.
Nortek’s Motion in Limine No. 2 to Exclude
Evidence or Argument Related to Obviousness.
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.
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 ...