United States District Court, D. Delaware
MEMORANDUM OPINION AND ORDER
WILLIAM C. BRYSON, UNITED STATES CIRCUIT JUDGE.
November 17, 2017, the Court held a telephonic pretrial
conference to discuss the proposed joint pretrial order, the
parties' motions in limine, a dispute regarding the
election of prior art, and the Court's proposed trial
procedures for the bellwether trial scheduled to begin on
December 11, 2017. This order summarizes the Court's
rulings made during that conference, and addresses the issues
the Court took under submission.
Regarding the parties' disputes concerning the number of
prior art references that D&M is permitted to raise at
trial, see Dkt. Nos. 437, 439, the Court ruled that
the UPnP protocol and the “D&M System” may
each be considered a single reference for purposes of the
Court's limitation of three prior art references per
patent. The Court made no ruling as to whether either system
may be considered a single reference for purposes of
invalidity under 35 U.S.C. §§ 102 or 103.
Sonos will not be permitted to present a doctrine of
equivalents theory of infringement at trial, as it did not
include such allegations in its final infringement
contentions, except in the form of a boilerplate reservation
of right to assert the doctrine of equivalents at some later
point. See Sycamore IP Holdings LLC v. AT&T
Corp., No. 2:16-cv-588, 2017 WL 4517953, at *3 (E.D.
Tex. Oct. 10, 2017) (boilerplate allegations of infringement
under the doctrine of equivalents are insufficient);
Comcast Cable Commc'ns, LLC v. OpenTV, Inc., No.
C 16-6180, 2017 WL 2630088, at *5 (N.D. Cal. June 19, 2017)
(same); Baltimore Aircoil Co. v. SPX Cooling Techs.
Inc., No. CCB-13-2053, 2016 WL 4426681, at *15 (D. Md.
Aug. 22, 2016) (“[P]lace-holder boilerplate language
will not suffice” to preserve a doctrine of equivalents
theory of infringement.); Best Med. Int'l, Inc. v.
Accuray, Inc., No. 2:10-cv-1043, 2013 WL 3305478, at
*2-3 (W.D. Pa. July 1, 2013) (contentions regarding the
doctrine of equivalents cannot be “reserved”
until the close of discovery).
The Court granted in part and denied in part Sonos's
motions in limine.
First, Sonos argued that D&M should not be allowed to
refer to its own patents and its countersuit against Sonos.
The Court ruled that D&M will not be permitted to refer
to its countersuit against Sonos or to any of its own patents
that were not elected as prior art references unless Sonos
first opens the door to any such evidence, such as by stating
that D&M lacks its own technology and therefore must rely
on stealing technology from Sonos. The countersuit by D&M
is irrelevant to the issue of infringement of Sonos's
patents, and the non-elected patents are irrelevant to the
issue of infringement and are potentially confusing to the
jury. The fact that D&M has patents in the same
technological field is not a defense to infringement, but
could mislead the jury into believing that D&M's
patents give it the right to practice technology that is
covered by those patents even though it is also covered by
Second, Sonos argued that D&M should not be allowed to
introduced arguments, testimony, or evidence relating to a
prior lawsuit in which Sonos was a party, Black Hills
Media, LLC v. Sonos, Inc., No. 2:14-cv-486
(C.D. Cal.). The Court ruled that evidence relating to that
proceeding may be used only for impeachment of Sonos's
witnesses who testified in that proceeding, under Fed.R.Evid.
613, or as substantive evidence of a testifying witness's
prior sworn testimony under Fed.R.Evid. 801(d)(1).
Third, Sonos argued that D&M should be precluded from
introducing several categories of “evidence or
suggestions of impropriety” by Sonos. Sonos first
argued that D&M should not be allowed to introduce
evidence of alleged improper conduct by Sonos before the
Patent and Trademark Office, and that D&M should not be
allowed to present evidence that Sonos had drafted its patent
claims to cover D&M's existing products. D&M
indicated that it did not intend to present evidence as to
the first issue, so it was unnecessary for the Court to enter
an order regarding that issue. As to the introduction of
evidence that in some cases Sonos's patents covered
D&M's existing products, the Court directed that
D&M may not impute bad intent to Sonos based on those
next argued that D&M should not be allowed to present
evidence that Sonos had engaged in “competitive
activities” such as reverse engineering
competitors' products. The Court ruled that evidence of
“competitive activities” would be permitted only
to the extent that Sonos opens the door by offering evidence
that D&M had engaged in such activities.
in response to Sonos's argument that evidence of any
settlement negotiations or agreements between the parties be
excluded under Fed.R.Evid. 408, the Court ruled that D&M
could present such evidence only to the extent it became
necessary to cure potentially misleading or prejudicial
material introduced by Sonos.
With respect to D&M's motions in limine, the Court
denied one of the motions and took the other two under
submission, stating that it would issue an order promptly.
This is that order.
During the hearing on the motions in limine, the Court denied
D&M's third motion in limine, in which D&M sought
to exclude evidence or argument relating to damages for
infringement of U.S. Patent No. 8, 588, 149 during the period
prior to the date of the reexamination certificate for that
patent. D&M argued that damages for that period are not
available based on its defense of absolute intervening rights
under 35 U.S.C. § 252. The applicability of the defense
of intervening rights was previously addressed in response to
Sonos's motion for summary judgment on that issue. Dkt.
No. 428, at 3-10. D&M did not file a cross-motion for
summary judgment on that issue at that time.
the hearing, the Court ruled that D&M's motion was
not properly cast as a motion in limine, but instead was
seeking a dispositive ruling on a substantive issue in the
case. The Court will not address D&M's argument as a
motion in limine, but will rule on the issue when the matter
is ripe for decision.
D&M next seeks to limit Sonos's presentation of
evidence regarding similarities between the non-patented
features of the parties' products and similarities in
other materials, such as marketing, branding, logos, and
websites. To the extent Sonos seeks to introduce evidence
that D&M copied Sonos's products because Sonos's
products are commercial embodiments of the patents-in-suit,
such evidence is admissible. Evidence of an alleged
infringer's copying or reverse engineering a
competitor's patented product is generally admissible on
the ground that it is relevant to issues of inducement of
infringement, willful infringement, or secondary
considerations of obviousness. See, e.g., Power
Integrations, Inc. v. Fairchild Semiconductor Int'l,
Inc., 843 F.3d 1315, 1333 (Fed. Cir. 2016) (reverse
engineering of patentee's product and corporate culture
of copying is relevant evidence of inducement); K-TEC,
Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1378 (Fed. Cir.
2012) (copying of patentee's product, including identical
product numbers, is probative of willfulness); Wyers v.
Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010)
(evidence of direct copying to replicate a specific product
is probative as to the secondary consideration of
obviousness); Stryker Corp. v. Intermedics Orthopedics,
Inc., 96 F.3d 1409, 1414 (Fed. Cir. 1996) (one factor in
determining willfulness is “whether the infringer
deliberately copied the ideas or design of another”);
Digital Reg of Texas, LLC v. Adobe Sys., Inc., No.
12-cv-1971, 2014 WL 4090550, at *8 (N.D. Cal. Aug. 19, 2014)
(evidence supporting an inference of copying patented