PAUL S. GREWAL, District Judge.
Before the court are the parties' motions in limine prior to trial in this inventorship dispute. This order will memorialize the court's rulings issued from the bench last week.
Fed. R. Evid. 401 provides that evidence is relevant if "it has any tendency to make a fact more or less probable," or if it is of any consequence in resolving the action. Fed. R. Evid. 403 gives the court discretion to exclude relevant evidence "if its probative value is substantially outweighed by a danger" of "unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence."
A witness qualified as an expert by knowledge, skill, experience, training, or education" may testify about "scientific, technical, or other specialized knowledge" if it will assist a jury "to understand the evidence or to determine a fact in issue,"
No "clear line" exists "between scientific knowledge and technical or other specialized knowledge."
The factors are not exclusive and should be applied flexibly.
In light of the Rules "liberal thrust"
18 U.S.C. § 1512(a)(2)(A) provides that whoever "knowingly uses intimidation, threatens, or corruptly persuades another person, or attempts to do so, or engages in misleading conduct toward another person, with intent" to "influence, delay, or prevent the testimony of any person" in an official proceeding may be subject to criminal punishment. Witness tampering pursuant to Section 1512 requires a party to act with conscious awareness of wrongdoing.
The Fuisz Defendants contend Theranos failed to comply with the disclosure requirements of 35 U.S.C. § 282 and therefore should be prevented from relying on any prior art references at trial. Theranos counters that it fully complied with Section 282 — indeed months before the statutory deadline. 35 U.S.C. § 282(c) constitutes "a statutory provision that precludes" a party "from relying on prior art without disclosing that prior art to its adversary more than thirty days before trial."
The Patent Local Rules of the Northern District of California require a party opposing a claim of patent infringement to serve invalidity contentions no later than 45 days after being served infringement contentions, which in turn must be served no later than 14 days after the initial case management conference.
At bottom, the Fuisz Defendants' have been on notice of the prior art Theranos might rely on trial since October 25, 2012.
The Fuisz Defendants' second motion in limine targets five categories of evidence that they argue should be excluded from the trial.
The Fuisz Defendants believe that they have been walled-off from obtaining information about Theranos' business information, e.g. business circulars, total investment in the company, etc. Because the dispute in this case centers around the parties inventive activities in 2005, it would be prejudicial for Theranos to marshal evidence of subsequent investment following the inventive period. That evidence would be of limited probative value. The Fuisz Defendants sought information about Theranos' business, but were stymied.
Theranos counters that it needs an opportunity to provide context to the jury about who it is. To this end, Theranos intends to elicit background testimony. Because Theranos did not wall off discovery, this should be permissible. Theranos concedes that it did limit the wholesale shipment of the company's documents to the Fuisz Defendants, including research data and prototypes. But the Fuisz Defendants nevertheless had an opportunity to discover the minimal level of detail that Theranos would like to go into at trial.
Because it is important for the jury to have some basic understanding of who each party is, the parties may describe who they are today. The parties may also speak about who they were back in 2005. The court will not, however, permit the introduction of evidence regarding specific Theranos customers, because that information was not provided during discovery and does not appear to be relevant to the case.
Because the Fuisz Defendants faced impediments as to who invested in Theranos and how much money they invested, any evidence regarding investor names or investor dollars is excluded with one caveat: the parties may elicit information about any witnesses' financial stake in Theranos.
The court will not permit the introduction of evidence into the trial that will require the either of the Fuisz Defendants to step out during trial. With respect to disputed testimony from Mr. Kemp, the court will permit Mr. Kemp to speak to his development of protoypes. Defendants may then hear the testimony and cross-examine Kemp on his testimony. Testimony about prototypes may not extend into a discussion of subsequent commercial products.
Evidence pertaining to prior testimony from the Terex litigation is excluded on the basis of Rule 403. This evidence creates a significant, unwarranted risk of unfair prejudice and confusion of the issues — particularly in light of the minimal probative relevance of this evidence.
Because the parties agree that the Biovail litigation is not relevant to this case, the parties are precluded from referencing that litigation in this case.
Because the Theranos' prosecution power of attorney is relevant and any prejudice may be mitigated through a limiting instruction that either side may propose,
The Fuisz Defendants move to preclude Theranos' experts Robert Leonard, William Clarke and Channing Robertson from testifying in this case.
The Fuisz Defendants challenge whether Leonard should be permitted to offer his testimony comparing the Fuisz emails to the Theranos provisionals to support Theranos' plagiarism claim that the Fuisz Defendants ripped of Theranos drawing on confidential information in the hands of Theranos' patent prosecution counsel McDermott Will & Emery. This question sits on a shifting precipice of unsettled law. Courts are split: (1) at least one court has permitted Leonard to to offer his opinion as to whether content was copied,
In this case, the expert may offer provide expert testimony on linguistic similarities between the disputed documents, but the ultimate question of whether or not plagiarism occurred is a credibility call, ripe for jury adjudication. Leonard thus may not offer testimony on the ultimate question of whether plagiarism occurred, but Leonard may offer expert testimony on linguistic and semantic similarities of the disputed language subject to cross-examination.
The Fuisz Defendants also challenge Theranos' reliance on the Google patent database to extrapolate a percentage of how many patents contain certain language. The court will permit the reference to the Google patent database including percentages, but will allow the Fuisz Defendants' to draw out limitations of the database during cross-examination.
The Fuisz Defendants insist that Clarke should be precluded from testifying, because no single document — in this case Theranos' provisional applications — discloses all claim limitations within the `612 patent. The problem with the Fuisz Defendants' position is that they point to no case law justifying such a prophylactic remedy. Federal Circuit case law indeed appears clear on this point. In Price v. Symsek, the Circuit held "an inventor can conceivably prove prior conception by clear and convincing evidence although no one piece of evidence in and of itself establishes the prior conception."
In light of Price's open acceptance of circumstantial evidence and explicit acceptance of multiple references to corroborate claims of prior conception, the court finds exclusion of Clarke's testimony unwarranted. Because Clarke's experience in the field of fluid analysis devices and related methods cannot reasonably be contested
Like Clarke above, Robertson, too, may testify on the issues of inventorship. As spelled out above, Robertson need not point to a single piece of documentary evidence to support expert opinion regarding inventorship.
The Fuisz Defendants urge the court that an adverse inference instruction is warranted because Theranos bullied Dr. Gibbons from sitting for a deposition in this case prior to his death. Without opining on the tact chosen by the Fuisz Defendants, the court focuses its attention on the absence of evidence supporting their claims. All that the Fuisz Defendants point to is excerpted e-mail correspondence with Dr. Gibbons widow, Rochelle Gibbons, that: Dr. Gibbons "was very depressed because he was being bullied by EH and Sunny (sp?). He was suffering from the pressure that they were placing on him not to testify. He told me that everyday."
The parties dispute whether certain portions of Kemp's deposition should retain its AEO designation. The court resolves each disputed portion of the transcript below.
The Fuisz Defendants seek dismissal of Theranos' Section 256 claim based on their concern that Theranos now seeks to only add Ms. Holmes, and not other Theranos inventors, to the `612 patent. At the hearing on these motions, Theranos' counsel explained that it still seeks the addition of both Holmes and Kemp to the `612 patent. In light of those representations, the Fuisz Defendants' motion to dismiss the Section 256 claim is DENIED.
Theranos takes issue with several aspects of Bergeron's expert report. Because those flaws run through Bergeron's report, Theranos urges Bergeron's entire report should be excluded. This motion is denied. Any errors in the report are fair game for cross-examination. Any misapplication of law can be drawn out through vigorous cross-examination and in closing argument. The court further will not permit an expert to stray from his report. Finally, the court will issue its final jury instructions and claim constructions to guide the jury's understanding and application of the law. Collectively, these measures will mitigate possible prejudice.
The court will permit the introduction of general testimony about work being done by the Fuisz Defendants prior to their constructive reduction to practice date in September 2005. The court will exclude evidence that suggests the Fuisz Defendants' conceived of the `612 patent before September 2005.
Theranos seeks an order excluding reference to its counsel's law firm and any reference to the personal impact this litigation has had on the Fuisz Defendants. The court will not permit any reference or attacks on litigation counsel or reference motives of any counsel or firm in this case. The parties may, however, reference what this case has meant to them and any effects of the litigation.
The court GRANTS Theranos' motion, but if any witness testifies and that witness has had a relationship with any principal in this case, the court will permit cross-examination that goes to possible bias.
The court GRANTS the motion, but if these issues become relevant at trial the court is open to revisiting its prior decision.
Because the court finds that evidence relating to the prior, parallel litigation would confuse the issues and not provide significant probative value, the court precludes any reference to the prior case involving John Fuisz and the McDermott Will & Emery firm.
The court GRANTS Theranos' motion to exclude evidence, argument, or reference relating to hearsay communication between the Fuisz Defendants and Rochelle Gibbons.
