Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Hologic, Inc. v. Minerva Surgical, Inc.

United States District Court, D. Delaware

July 6, 2018

HOLOGIC, INC., and CYTYC SURGICAL PRODUCTS, LLC, Plaintiffs,
v.
MINERVA SURGICAL, INC., Defendant.

          MEMORANDUM AND ORDER

          Joseph F. Bataillon Senior United States District Judge

         This matter is before the court on the parties' motions in limine (D.I. 383, D.I. 384, D.I. 385, D.I. 386, D.I. 387, D.I. 388, D.I. 392, D.I. 393, D.I. 394, D.I. 395, D.I. 396, and D.I. 397).

         Although the motion in limine is an important tool available to the trial judge to ensure the expeditious and evenhanded management of the trial proceedings, performing a gatekeeping function and sharpening the focus for later trial proceedings, some evidentiary submissions cannot be evaluated accurately or sufficiently by the trial judge in such a procedural environment. Jonasson v. Lutheran Child and Family Servs., 115 F.3d 436, 440 (7th Cir. 1997). A motion in limine is appropriate for “evidentiary submissions that clearly ought not be presented to the jury because they clearly would be inadmissible for any purpose.” Id. In other instances, it is necessary to defer ruling until during trial, when the trial judge can better estimate the impact of the evidence on the jury. Id. The Eighth Circuit has noted that “[e]videntiary rulings made by a trial court during motions in limine are preliminary and may change depending on what actually happens at trial.” Walzer v. St. Joseph State Hosp., 231 F.3d 1108, 1113 (8th Cir. 2000). Evidentiary rulings, especially ones that encompass broad classes of evidence, should generally be deferred until trial to allow for the resolution of questions of foundation, relevancy, and potential prejudice in proper context. See Leonard v. Stemtech Health Scis., Inc., 981 F.Supp.2d 273, 276 (D. Del. 2013).

         To the extent that a party challenges the probative value of the evidence, an attack upon the probative sufficiency of evidence relates not to admissibility but to the weight of the evidence and is a matter for the trier of fact to resolve. United States v. Beasley, 102 F.3d 1440, 1451 (8th Cir. 1996).

         The court is unable to evaluate the relevance of much of the challenged evidence in the context of a pretrial motion. The parties' concerns may warrant a cautionary or limiting instruction, but the court cannot determine the scope of such an instruction at this time. The court will admit the challenged evidence only on a showing that it is relevant to the remaining issues in the case, and only to the extent that the relevance of the evidence outweighs its potential to cause prejudice or confusion under Fed.R.Evid. 403.

         With those principles in mind, the court finds as follows.

         I. Minerva's Motions

         A. Minerva's Motion in Limine No. 1: to Exclude Improper Willfulness Evidence (D.I. 383)

         Minerva moves to exclude the following improper evidence relating to Hologic's claim of willful infringement: (1) FDA equivalence documents and testimony; (2) unfounded third-party statements; and (3) any reference to lack of opinion of counsel.

         Minerva argues Hologic should be precluded from using any documents or testimony relating to any communications between the FDA and Minerva comparing Minerva's Endometrial Ablation System (“EAS”) to Hologic's NovaSure in order to get FDA approval. In particular, it seeks exclusion of PTX-0041 (D.I. 293-2, Ex. 65), an email between the FDA and Minerva in July of 2010 wherein Minerva's employee stated: “The Minerva device is almost dead identical to NovaSure except using plasma energy (RF).” It argues the statement was made in the context of getting FDA approval for a clinical study and had nothing to do with the manufacturing or design of Minerva's infringing product. It contends the probative value of the evidence outweighs the potential for prejudice.

         The court cannot determine the admissibility of any ostensible evidence on “FDA equivalence” in a pretrial motion. To the extent it relates to infringement or invalidity issues it has been rendered moot. It may be relevant to willfulness, depending on the circumstances. Minerva's motion seems to go to the weight rather than the admissibility of the evidence.

         Minerva next contends Hologic should be precluded from using any third-party statements where no live witness or deposition testimony can provide proper foundation. Particularly, it challenges the admissibility of PTX-0058 (D.I. 293-4 at Ex. 83), a third party (Dr. Ted L. Anderson) email communication dated January 27, 2011 to Minerva's employee (Michael Regan). Dr. Anderson was never deposed and is not on the witness list and the recipient of the email stated at his deposition that he did not recognize it. Minerva contends Hologic has no way of laying a proper foundation to introduce the email.

         The court finds a blanket prohibition is not warranted. The court is unable to rule on the admissibility of the challenged evidence in a pretrial motion. The proponent of the evidence will have to establish foundation and overcome any hearsay objections. Evidence will be admitted only on a proper showing of foundation and only if the probative value of the evidence outweighs its potential for prejudice or confusion.

         Minerva also seeks preclusion of “any reference to lack of opinion of counsel” under 35 U.S.C. § 298. That statute provides:

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.

35 U.S.C. § 298. The protection granted by 35 U.S.C. § 298 dissolves in the event defendants “open the door” by attempting to refute a claim of willful infringement by implying that they relied on the advice of counsel.

         Again, the court is unable to evaluate the issue in this context. The issue depends on the evidence at trial. Minerva produced an opinion of counsel and has its opinion counsel, Mr. Burt Magen, on its witness list. Accordingly, the court finds Minerva's motion should be ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.