United States District Court, D. Minnesota
J. Gilbertson, David J. Wallace-Jackson, and Sybil Dunlop,
Greene Espel PLLP, for Plaintiff and Counter-defendant.
M. Lancaster, Ben D. Kappelman, and Kenneth E. Levitt, Dorsey
& Whitney LLP and J. Thomas Vitt, Jones Day, for
Defendants and Counter-claimants.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
Court now rules upon Defendant U.S. Bank's Motion in
Limine to Preclude Calling Defendants' Legal Assistant
Providing Bank Litigation Support as a Witness or Eliciting
Similar Evidence [Doc. No. 231] and Motion in Limine to
Exclude Argument that Defendants' Infringement was
Willful [Doc. No. 235]. For the reasons stated below, the
Court grants the latter motion and denies the former as moot.
September 25, 2013, Plaintiff filed a Complaint against
Defendants, alleging infringement of its United States Patent
No. 8, 311, 945 (“'945 patent”). (Compl.
[Doc. No. 1].) The deadline to submit motions to amend the
pleadings was initially set for September 1, 2014, but it was
moved to April 1, 2016 after the case was stayed for a time.
(See Pretrial Scheduling Order [Doc. No. 28]; Order
dated Sept. 18, 2014 [Doc. No. 50]; Am. Pretrial Scheduling
Order [Doc. No. 69].) On November 11, 2016, more than seven
months after the deadline for such motions had expired,
Plaintiff moved for leave to amend its Complaint.
(Solutran's Mot. for Leave to Amend its Compl. [Doc. No.
133].) Plaintiff sought leave to amend its Complaint
“to assert a claim of willful infringement” based
on discovery indicating that Defendant U.S. Bank had been
aware of Plaintiff's patent before Plaintiff filed suit.
(Solutran's Mem. in Supp. of its Mot. for Leave to Amend
its Compl. [Doc. No. 135], at 1.) Plaintiff's Proposed
Amended Complaint would have included new allegations that
“Defendants' infringement has been and continues to
be willful and showing a reckless disregard for
Solutran's intellectual-property rights within the
meaning of 35 U.S.C. § 284.” (Aff. of Eric
Ernstene [Doc. No. 136], Ex. B [Doc. No. 136-1] (Redline
Proposed Am. Compl. ¶ 13).)
hearing, Magistrate Judge Thorson denied Plaintiff's
Motion. (See Nov. 29, 2016 Minute Entry [Doc. No.
144]; Text Only Entry [Doc. No. 145].) Plaintiff objected,
and the Court affirmed the Magistrate Judge's decision.
(Order dated Jan. 10, 2017 [Doc. No. 162].) The Court found
that Plaintiff had not shown good cause to amend under
Federal Rule of Civil Procedure 16(b)(4). (Id. at
7-10.) Though Plaintiff argued that it did not receive
discovery supporting a claim of willful infringement until
after the deadline for motions to amend had passed, the Court
agreed with the Magistrate Judge that Plaintiff at that time
had access to adequate information to know that it could make
a claim of willful infringement, or, at least, that it should
“make some effort to compel production of relevant
discovery, or seek to extend the deadline to amend
pleadings.” (Id. at 9.) The parties proceeded
to summary judgment, and the Court issued an Order granting
summary judgment to Plaintiff on the issue of infringement.
(See Order dated Nov. 27, 2017 [Doc. No. 216].)
U.S. Bank has filed a Motion in Limine to Exclude Argument
that Defendants' Infringement was Willful [Doc. No. 235],
claiming that such argument violates the Court's prior
Order denying leave to amend, and that willfulness is
irrelevant in this case, where the Court has already ruled
that Defendants infringed upon Plaintiff's ‘945
patent. Plaintiff responds that it seeks only to offer
evidence of post-suit willfulness, which it argues was
adequately plead and not foreclosed by the prior order.
(Solutran's Resp. to Defs.' Mot. in Lim. to Exclude
Evid. and Arg. on Willfulness [Doc. No. 258]
(“Pl.'s Willfulness Resp.”), at 2-6.)
U.S. Bank has also filed a Motion in Limine to Preclude
Calling Defendants' Legal Assistant Providing Bank
Litigation Support as a Witness or Eliciting Similar Evidence
[Doc. No. 231]. Plaintiff states that it plans to call this
legal assistant, Ms. Dayna Munsch, to provide testimony
supporting its post-suit willfulness argument. (Tr. of Final
Pretrial Conference [Doc. No. 284] (“Tr.”), at
109.) Plaintiff asserts that U.S. Bank's
document-retention policy is so lax as to be willfully
destructive, and that Ms. Munsch will testify that it
resulted in the destruction of discoverable emails.
(Solutran's Resp. to Defs.' Mot. in Lim. to Preclude
Calling Defs.' Legal Assistant as a Witness or Eliciting
Similar Evid. [Doc. No. 259] (“Pl.'s Witness
Resp.”, at 2-4).) Plaintiff concedes that, if it is not
permitted to argue willfulness to the jury, then it will not
seek to call Ms. Munsch and Defendants' Motion to exclude
her testimony will be moot. (Tr., at 109.)
finding of infringement, the law permits the holder of the
patent to seek enhanced damages for egregious infringement
behavior. 35 U.S.C. § 284; see Halo Elecs., Inc. v.
Pulse Elecs., Inc., 136 S.Ct. 1923, 1932 (2016). The
district court has discretion to decide whether willful
infringement justifies enhanced damages. Halo, 136
S.Ct. at 1932. The Federal Circuit has held that the Supreme
Court's decision in Halo did not change
“the established law that the factual components of the
willfulness question should be resolved by the jury.”
WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1341 (Fed.
claims that it should be permitted to argue post-suit
willfulness because it was adequately plead in Complaint. The
Complaint seeks “all damages that are available
pursuant to 35 U.S.C. § 284, ” which Plaintiff
argues includes enhanced damages for willful conduct after
the filing of the suit. (Compl. ¶ 17.d.) The Complaint
was filed, of course, at the beginning of the suit, and thus
does not include any allegations of willfulness after the
initiation of the suit. But when Plaintiff moved to amend the
complaint, it sought to add the allegation that
Defendants' infringement was and continues to be
willful. (See Aff. of Eric Ernstene, Ex. B (Redline
Proposed Am. Compl.).) Further, Defendants point out that
Plaintiff was aware of U.S. Bank's document-retention
policy, which it relied upon to assert post-suit willfulness,
before it filed the Motion for Leave to Amend. (Tr., at 98.)
The post-suit willfulness argument that Plaintiff makes in
opposition to Defendants' Motion in Limine was available
when it sought leave to amend its Complaint, but Plaintiff
did not make it then. Plaintiff's Motion for Leave to
Amend its Complaint was denied, and Plaintiff cannot now seek
to change that result. Plaintiff has made no other motion to
amend its Complaint to add allegations of post-suit
willfulness. For this reason, Defendant U.S. Bank's
Motion to exclude evidence of willfulness will be granted.
even if the post-suit willfulness claim were properly plead,
the Court finds that the factual evidence of discovery
misconduct that Plaintiff seeks to admit is inadmissible for
several reasons. First, the evidence does not seem to support
the conclusion that Plaintiff argues that it should be
admitted to prove. Plaintiff argues that U.S. Bank's
document-retention policy, which instructs employees to
forward emails relevant to a litigation hold into a separate
mailbox, permitted the destruction of discoverable documents
related to the infringement of Plaintiff's patent.
(Pl.'s Witness Resp., at 2-5.) Because attempting to
cover up infringement is one factor that can be considered to
evaluate a claim of willfulness, Plaintiff asserts that Ms.
Munsch's testimony supports its argument of post-suit
willfulness. (Id. at 5 (citing Fed. Circuit Bar
Ass'n, Model Patent Jury Instructions, No. 3.10
(2016)).) But Plaintiff admits that this was U.S. Bank's
“standard document-retention policy, ” and it
provides no evidence to show that the document-retention
policy was ...