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Ecolab USA Inc. v. Diversey, Inc.

United States District Court, D. Minnesota

May 15, 2015

Ecolab USA Inc. and Kleancheck Systems, LLC, Plaintiffs,
v.
Diversey, Inc., Defendant.

Anthony R. Zeuli, Rachel K. Zimmerman, Eric R. Chad, Annaliese S. Mayer, and Paige S. Stradley, Merchant & Gould P.C., 3200 IDS Center, 80 South Eighth Street, Minneapolis, Minnesota 55402, for Plaintiffs.

Allen A. Arntsen, Naikang Tsao, and Stephan J. Nickels, Foley & Lardner LLP, 150 East Gilman Street, Suite 5000, Madison, Wisconsin 53703, for Defendant.

Kimberly K. Dodd and R. Jan Pirozzolo-Mellowes and, Foley & Lardner LLP, 777 East Wisconsin Avenue, Milwaukee, Wisconsin 53202, for Defendant.

Andrew M. Gross, Foley & Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, Illinois 60654, for Defendant.

George W. Soule, Soule & Stull LLC, Eight West 43rd Street, Suite 200, Minneapolis, Minnesota 55409, for Defendant.

MEMORANDUM OPINION AND ORDER

SUSAN RICHARD NELSON, District Judge.

I. INTRODUCTION

Before the Court are eight Motions in Limine filed by Plaintiffs Ecolab USA Inc. and Kleancheck Systems, LLC [Doc. Nos. 248, 255, 263, 268, 279, 289, 297, 303], and six Motions in Limine filed by Defendant Diversey, Inc. [Doc. Nos. 249, 274, 288, 310, 313, 321]. The Court held a pre-trial conference in this matter on May 12, 2015. For the reasons set forth below, the Court grants in part, denies in part, denies as moot in part, and defers ruling on in part, the pending Motions.

II. DISCUSSION

A. Legal Standards

"A district court enjoys wide discretion in ruling on the admissibility of proffered evidence....'" Farrington v. Smith, 707 F.3d 963, 969 (8th Cir. 2013) (quoting Quigley v. Winter, 598 F.3d 938, 946 (8th Cir. 2010)). In this case, the parties have moved to exclude several pieces of evidence as irrelevant and prejudicial. Under Federal Rule of Evidence 401, "[e]vidence is relevant if: (a) it has any tendency to make a fact more or less probable than it would be without the evidence; and (b) the fact is of consequence in determining the action." Fed.R.Evid. 401. To determine whether evidence is relevant, the Court looks first to what must be proven at trial and then asks whether the evidence in question tends to support or refute one of those issues. See United States v. McCorkle, 688 F.3d 518, 521 (8th Cir. 2012). Under Rule 402, evidence that is not relevant is not admissible. Fed.R.Evid. 402. And, Rule 403 provides that "[t]he court may exclude relevant evidence if its probative value is substantially outweighed by a danger of one or more of the following: unfair prejudice, confusing the issues, misleading the jury, undue delay, wasting time, or needlessly presenting cumulative evidence." Fed.R.Evid. 403.

B. Plaintiffs' Motions in Limine

1. Motion to preclude Defendant from introducing evidence, testimony, or argument relating to the ex parte reexamination of U.S. Patent No. 7, 785, 109

In their first Motion in Limine, Plaintiffs seek to preclude evidence, testimony, or argument regarding the ex parte reexamination of U.S. Patent No. 7, 785, 109 [Doc. No. 248]. Defendant does not oppose this Motion. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to the Ex Parte Reexam. of U.S. Patent No. 7, 785, 109 [Doc. No. 332] at 1.) Accordingly, this Motion is denied as moot.

2. Motions to preclude Defendant from introducing evidence testimony, or argument comparing the accused product to preferred embodiments or commercial embodiments, relating to the prosecution histories of the Patents-in-Suit, and relating to prior art that was not disclosed as a basis for Defendant's invalidity contentions

In their second Motion in Limine, Plaintiffs seek to preclude Defendant from introducing evidence, testimony, or argument comparing the accused product to the preferred or commercial embodiments of the Patents-in-Suit as irrelevant because the accused product instead should be compared to the relevant patent claims as construed by the Court. (Pls.' Mem. of Law in Supp. of Their Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Comparing the Accused Product to Preferred Embodiments or Commercial Embodiments [Doc. No. 258] at 1.) In their third Motion in Limine, Plaintiffs seek to preclude Defendant from introducing evidence, testimony, or argument relating to the prosecution histories of the Patents-in-Suit on the basis that such evidence is not relevant to the issues remaining in this case and would confuse the jury. (Pls.' Mem. of Law in Supp. of Their Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to the Prosecution Histories of the Patents-in-Suit [Doc. No. 265] at 1.) And, in their fourth Motion in Limine, Plaintiffs seek to preclude Defendant from introducing evidence, testimony, or argument relating to prior art that was not disclosed as a basis for Defendant's invalidity contentions on the grounds that such evidence is irrelevant and prejudicial. (Pls.' Mem. of Law in Supp. of Their Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to Prior Art That Was Not Disclosed as a Basis for Def.'s Invalidity Contentions [Doc. No. 270] at 1, 4.)

In response to these Motions, Defendant argues that the challenged evidence is relevant to the issue of Defendant's good-faith belief of non-infringement, which is a defense to claims of indirect infringement and willfulness. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Comparing the Accused Product to Preferred Embodiments or Commercial Embodiments [Doc. No. 333] at 1; Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to the Prosecution Histories of the Patents-in-Suit [Doc. No. 336] at 2; Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to Prior Art That Was Not Disclosed as a Basis for Def.'s Invalidity Contentions [Doc. No. 337] at 1.) In particular, Defendant asserts that it intends to introduce testimony that Defendant relied on opinions of legal counsel regarding both Patents-in-Suit, in which counsel discussed the specifications (including the embodiments) and prosecution histories of the Patents and the prior art and opined that the VeriClean System does not infringe the Patents. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Comparing the Accused Product to Preferred Embodiments or Commercial Embodiments [Doc. No. 333] at 3; Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to the Prosecution Histories of the Patents-in-Suit [Doc. No. 336] at 3; Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to Prior Art That Was Not Disclosed as a Basis for Def.'s Invalidity Contentions [Doc. No. 337] at 2-3.) Defendant also intends to introduce the actual written opinions. In addition, Defendant argues that the prosecution histories of the Patents-in-Suit are relevant to invalidity and secondary considerations of nonobviousness. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to the Prosecution Histories of the Patents-in-Suit [Doc. No. 336] at 3-8.)

The Court will report to the parties its decision on these Motions prior to trial on May 18, and will subsequently issue a written order.

3. Motion to preclude Defendant from introducing evidence, testimony, or argument relating to noninfringing substitutes only available outside the United States

In their fifth Motion in Limine, Plaintiffs seek to preclude evidence, testimony, or argument regarding noninfringing alternatives available only outside of the United States [Doc. No. 279]. Defendant does not oppose this Motion. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to Noninfringing Substitutes Available Only Outside the U.S. [Doc. No. 338] at 1.) Accordingly, this Motion is denied as moot.

4. Motion to preclude Defendant from introducing evidence, testimony, or argument relating to Defendant's own patents or patent applications

In their sixth Motion in Limine, Plaintiffs seek to preclude evidence, testimony, or argument regarding Defendant's own patents or patent applications [Doc. No. 289]. Defendant does not oppose this Motion. (Def.'s Resp. to Pls.' Mot. to Preclude Def. From Introducing Evid., Testimony, or Argument Relating to Def.'s Own Patents or ...


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