The opinion of the court was delivered by: Honorable B. Lynn Winmill Chief U. S. District Judge
MEMORANDUM DECISION AND ORDER
The Court has before it 11 motions in limine. The motions are fully briefed and at issue. For the reasons explained below, the Court will deny all 11 motions.
(1) Motion to Preclude Plaintiff From Confusing Jury About Pre-Complaint Conduct (Dkt. No. 198);
(2) Motion to Preclude Plaintiff From Telling Jury About Purported Notice of Alleged Infringement (Dkt. No. 199);
(3) Motion to Preclude Plaintiff From Confusing Jury About Post-Complaint Conduct (Dkt. No. 200)
Escort has filed three motions seeking to exclude evidence of willfulness. The first
and second motions seek to exclude evidence of willfulness prior to this suit being filed on the ground that Fleming gave no pre-trial notice to Escort that it was allegedly infringing. The third motion seeks to exclude evidence of willfulness pertaining to events after this suit was filed because Fleming failed to seek injunctive relief at the time Fleming filed this action.
With regard to the first two motions, Escort concedes that the lack of pre-trial notice is not determinative because the focus of the willfulness inquiry is on Escort's objective knowledge, whether formal notice was given or not. See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors, 617 F.3d 1296 (Fed. Cir. 2010).*fn1 Escort argues, however, that Fleming's only contention regarding Escort's prior knowledge was that "Escort copied clams from [Fleming's] ['798] patent into their own patent applications." See Fleming's Second Amended Infringement Contentions (Dkt. No. 236-Exhibit B) at pp. 4-5. The '798 patent was the original patent filed by Fleming; the two patents at issue here are reissue patents, reissued from the '798 patent after Fleming surrendered the '798 patent to the Patent and Trademark Office.
Escort argues that evidence it copied the '798 patent is irrelevant on the willfulness issue because the only two patents at issue here are the '038 and '635 patents. But Escort cites no authority to back that argument. Copying the "ideas or design of another" is one important factor in determining willfulness. See Spectralytics, Inc. v. Cordis Corp, 649 F.3d 1336, 1348 (Fed.Cir. 2011). It appears that certain claims of the '798 patent were carried forward into the '038 patent. If Escort copied claims from the '798 patent that were later carried forward into the '038 patent would such evidence be relevant to whether Escort willfully infringed the '038 patent, at least after February of 2008, when Escort admits it became aware of the '038 patent? See Exhibit 28 (Defendants' Second Supp. Response to Fleming Interrogatory) (Dkt. No. 151-12) at no. 8 (wherein Escort admits that it became aware of the '038 patent in February of 2008).
It might be -- the very question seems to answer itself. But the Court is reluctant to rule either way when neither party has cited any authority to answer the question. Accordingly, the Court will reject Escort's argument that the copying is irrelevant, without prejudice to Escort's right to raise this issue again with the proper citation of authority.
Escort urges the Court to rule that Fleming cannot introduce any evidence on the willfulness issue (beyond the copying of the '798 patent) that relates to Escort's knowledge prior to the lawsuit being filed because Fleming failed to include any such contention in its Infringement Contentions. The Court disagrees. In its Infringement Contentions, Fleming asserted that Escort's infringement of the '038 and '653 patents was wilful, and that Escort was "aware of the '038 and '653 patents on the dates those patents were issued, [Escort] understood that those claims covered their products, and [Escort] acknowledged the validity and enforceability of those claims." See Second Amended Infringement Contentions (Dkt. No. 236-2) at p. 4. The '038 patent was issued on March 28, 2006, about 3 years before this suit was filed. By alleging in his Infringement Contentions that Escort became aware of the '038 patent on the date that patent was issued, Fleming was asserting that Escort knew of the '038 patent three years before this suit was filed. Indeed, Escort admitted that it learned of the '038 patent in February of 2008, more than a year before this suit was filed. See Exhibit 28 (Defendants' Second Supp. Response to Fleming Interrogatory) (Dkt. No. 151-12) at no. 8.
Thus, at least with regard to the '038 patent, Fleming has made sufficient allegations in its Infringement Contentions that Escort knew of the patent before suit was filed, understood that its products were covered by the patent's claims, and yet nevertheless continued to sell their products, all during a time prior to the filing of this lawsuit. Thus, Escort was put on proper notice that its knowledge prior to the suit being filed would be used by Fleming to support its claim of wilful infringement. Consequently, the Court rejects Escort's argument that Fleming cannot introduce any evidence beyond the copying of the '798 patent that relates to pre-lawsuit willfulness.
Escort also seeks to preclude Fleming from offering any evidence of Escort's willfulness after the lawsuit was filed on the ground that Fleming failed to seek an injunction when the lawsuit was filed. This motion goes to one part of Fleming's willfulness claim: "One of the centerpieces of Mr. Fleming's willful infringement charge is that defendants did nothing to change their commercial/infringing behavior after the Court entered summary judgment that they infringe claims 18, 45, 47, and 48 in the '038 patents." See Fleming Response Brief (Dkt. No. 228) at p. 10.
This sort of post-filing conduct can be the basis for a willfulness claim. See In re Seagate Technology, LLC., 497 F.3d 1360, 1374 (Fed.Cir. 2007). That case held that "when an accused infringer's post-filing conduct is reckless, a patentee can move for a preliminary injunction, which generally provides an adequate remedy for combating post-filing willful infringement." Id. A patentee who does not attempt to stop an accused infringer's activities in ...