United States District Court, D. Delaware
LEONARD P. STARK, UNITED STATES DISTRICT JUDGE
Wilmington this 9th day of August,
2017, having reviewed the proposed pretrial order
(C.A. No. 13-239 D.I. 218) ("PTO") submitted by
Plaintiff Princeton Digital Image Corporation
("PDIC") and Intervenor Adobe Systems Inc.
("Adobe"), including briefing on various motions
in limine ("MIL"), IT IS HEREBY ORDERED
Adobe's MIL # 1, to preclude Thomas Meagher from
testifying about his belief that images appearing on the
websites of Adobe's customers were dynamically generated
"on the fly, " is DENIED. Meagher's beliefs are
relevant to the question of whether PDIC breached the
covenant-not-to sue in good faith, as his testimony may be
probative of whether PDIC brought suit against non-Adobe
systems only and, therefore, did not breach the contract in
bad faith. Further, PDIC does not appear to be trying to use
Meagher to prove that Defendants' websites actually work
in a particular way. Instead, PDIC seeks to have Meagher
testify about his personal knowledge of why PDIC believed it
had a viable infringement claim based on non-Adobe systems,
matters which are relevant and do not warrant exclusion under
the balance required by FRE 403.
Adobe's MIL #2, to preclude lay witness opinion testimony
by Meagher about infringement and invalidity, is DENIED IN
PART. Meagher's assessment of the '056 patent and
PDIC's infringement theory is not offered as substantive
proof that the patent is valid and infringed by
Defendants' websites; the testimony will be offered as
evidence relating to whether PDIC breached the
covenant-not-to sue and did so in bad faith. Meagher's
testimony will be based on his personal, particularized
knowledge of the events relevant to this contract dispute.
However, the motion is GRANTED to the extent that PDIC may
not elicit testimony from Meagher that the '056 patent is
a standard essential patent to the JPEG standard, as this
portion of the motion appears to be unopposed.
Adobe's MIL #3, to preclude evidence and argument about
Meagher's personal circumstances, is GRANTED. The Court
agrees with Adobe that details about Meagher's personal
life are not relevant to the issues in this case. Further,
the Rule 403 balance strongly favors exclusion of this
evidence. Should PDIC believe that something occurs at trial
to make such information relevant and to materially alter the
Rule 403 balance, PDIC must give notice to Adobe and request
leave of the Court before attempting to present this
information to the jury.
PDIC's MIL #1, to preclude Adobe from calling certain
witnesses on its "may call" witness list (PTO Ex.
8), is DENIED. Adobe's initial and supplemental
disclosures indicated that Adobe might call Adobe's
licensed customers as witnesses (PTO Ex. 15E-1 at 5-6), and
Adobe seeks to elicit testimony from such witnesses about a
narrow topic on which Defendants' position is known to
PDIC. Under the circumstances, including the lack of surprise
or unfair prejudice to PDIC, the Pennypack factors
do not favor exclusion. However, Adobe shall, no later than
August 16, identify the corporate representatives it may
call, including name, address, title/role, and subject matter
of the testimony.
PDIC's MIL #2, to preclude Adobe from introducing at
trial certain exhibits, is DENIED. The Court agrees with
Adobe that the declarations may be offered to show the effect
on the recipient. Regardless of whether the statements
contained within the declarations are true, PDIC decided to
dismiss the patent infringement claims after receiving the
declarations, making them relevant for a non-hearsay purpose.
With respect to the other communications and court filings,
any filing or statement made by PDIC is admissible as a
statement of a party opponent (although redactions will
likely be necessary if such materials are going to be
presented before the jury). Disputed evidence that is not of
a type addressed in this paragraph will be addressed on a
document-by-document basis during trial, to the extent there
remain objections to their use at trial.
PDIC's MIL #3, to preclude Adobe from offering exhibits
that relate to settlements between PDIC and Defendants, is
DENIED. Adobe does not seek to use the evidence "to
prove or disprove the validity or amount" of PDIC's
patent infringement claims against Defendants, i.e. the
claims that were settled. Fed.R.Evid. 408. Rather, Adobe will
use the evidence to support its claim that PDIC breached the
covenant-not-to sue by bringing and maintaining the suits
against Defendants and did so in bad faith - purposes for
which the evidence is admissible. See Broadcort Cap.
Corp. v. Summa Med. Corp., 972 F.2d 1183, 1194 (10th
Cir. 1992); Resolution Tr. Corp. v. Blasdell, 154
F.R.D. 675, 687 (D. Ariz. 1993).
parties shall be prepared to address any other matters
contained in the PTO at the pretrial conference tomorrow.
A11 references to the docket index
("D.I.") are to C.A. No. 13-239, unless otherwise