Syntel Sterling Best Shores Mauritius Limited v. The Trizetto Group, Inc.

Background

This order resolves Syntel Sterling Best Shores Mauritius Limited and Syntel, Inc.’s motions in limine—requests to limit evidence or arguments at trial. Syntel sought to prevent TriZetto Group, Inc. and Cognizant Technology Solutions Corp. from presenting specified evidence at an upcoming damages trial. The first jury had found Syntel liable to TriZetto on all counts, rejected Syntel’s claims, and awarded compensatory and punitive damages. The compensatory damages were later vacated after a change in the law. The upcoming trial concerns damages, not a retrial of the first jury’s liability findings.

Rulings on Evidence About the First Trial and Liability

The court denied as moot Syntel’s motion to exclude earlier or later versions of trade-secret documents because TriZetto represented that it would not introduce them. The court otherwise denied that motion regarding documents showing Syntel’s use of the same trade secrets with the same customers from the first trial when the evidence also linked that use to specific harm.

The court denied Syntel’s motion to prevent the damages jury from determining the “nature of use,” both because the objection was untimely and on the merits. TriZetto may present evidence about the extent of Syntel’s use and the harm flowing from that use, consistent with the first jury’s liability findings. The court also denied Syntel’s motion concerning work for Blue Shield of California and Capital District Physicians’ Health Plan. Evidence about damages from that work may be presented because the first jury considered and rejected Syntel’s argument that the work was authorized.

The court denied in part and granted in part Syntel’s Motion in Limine No. 13. TriZetto may state only that the first jury found that Syntel misappropriated “one or more” trade secrets; it may not suggest that the first jury found all 104 alleged trade secrets to be trade secrets and misappropriated. The court denied the request to bar evidence that Syntel was not authorized to use TriZetto’s trade secrets and copyrighted material in work for the two customers.

The court granted in part Motion in Limine No. 14. TriZetto may not introduce evidence about Syntel’s downloading or copying of misappropriated trade secrets, except when that evidence concerns the extent of use. The court found the other evidence irrelevant or unduly prejudicial to the amount of compensatory damages.

Expert Damages Opinions

The court denied Syntel’s Motion in Limine No. 1 challenging TriZetto expert Thomas W. Britven’s price-erosion opinion. The court found that Britven used a reasonable methodology involving projected prices, actual revenue, the most affected clients, and the proportion of services related to the Facets product. Challenges to Britven’s factual assumptions, price elasticity analysis, and causation analysis went to the weight of his testimony rather than its admissibility.

The court also denied Motion in Limine No. 15 challenging Britven’s lost-sales opinion. Syntel’s criticisms of that methodology likewise concerned the weight, rather than the admissibility, of the testimony.

Other Damages Evidence

The court denied Motion in Limine No. 5 concerning reasonable-royalty damages for TriZetto’s New York trade-secret-misappropriation claim. The jury will be instructed that it may award those damages only if lost profits are too speculative and only in an amount that reasonably relates to TriZetto’s actual losses.

The court denied Motion in Limine No. 6 concerning reasonable-royalty damages for copyright infringement. The jury may consider those damages only if TriZetto fails to prove lost sales caused by the infringement but proves the loss of a reasonable royalty for Syntel’s infringing use.

The court denied Motion in Limine No. 10 concerning evidence under the Defend Trade Secrets Act. TriZetto seeks only reasonable-royalty damages under that statute, which the court held remain at issue.

The court granted in part and denied in part Motion in Limine No. 9. TriZetto may not use Syntel’s avoided development costs or TriZetto’s development costs in the cost approach to create a royalty data-point range. TriZetto may use its development costs as one factor in a hypothetical royalty negotiation and to apportion royalties among three categories of trade secrets.

Limits on Time Periods and Trial Presentation

Motion in Limine No. 8 was denied in part as moot, granted in part, and denied in part. It was denied as moot regarding certain pre-January 1, 2012, New York misappropriation damages because TriZetto represented that it would not seek them. It was granted as to copyright damages incurred before October 30, 2013, because those damages concerned earlier software versions for which infringement had not been established at the first trial. It was denied as to damages after October 18, 2020, for the New York claim and after October 27, 2020, for the copyright claim, but only when those damages arose from misconduct occurring on or before those dates. TriZetto may therefore seek post-verdict damages for the continuation of the pre-verdict misconduct.

Motion in Limine No. 2 was denied in part as moot, denied in part, and granted in part. It was denied as moot regarding evidence solely related to punitive damages because TriZetto said it would not introduce that evidence. Other punitive-damages-related evidence may be used to the extent it is relevant to the occurrence and amount of compensatory damages. Evidence about Syntel’s motives, willfulness, intent, state of mind, or later efforts to prevent harm was excluded when offered to determine compensatory damages.

Motion in Limine No. 3 was denied to the extent expert background testimony was relevant to compensatory damages and granted as to irrelevant testimony. TriZetto’s experts may not describe Syntel’s strategies, motives, or intentions to misappropriate trade secrets or target TriZetto’s customers, and may not characterize Syntel’s actions as “deceptive,” “illegitimate,” or “inappropriate.”

The court denied Motion in Limine No. 7 as moot because TriZetto represented that it would not present SyntBots-related evidence unless Syntel opened the door. The court denied Motion in Limine No. 16 as moot based on TriZetto’s representation that it would present only the same trade secrets found to have been misappropriated at the underlying trial.

Excluded Evidence

The court granted Motion in Limine No. 11 under Federal Rule of Evidence 403. Neither party may refer to the prior compensatory or punitive damages awards, state that the first jury considered or decided damages, discuss appellate proceedings concerning damages, or refer to avoided-cost damages. References to testimony from the prior trial must be called “prior sworn testimony.”

The court granted Motion in Limine No. 12. TriZetto may not introduce or reference hearsay statements by unidentified customers suggesting that Syntel made derogatory statements about TriZetto to other unidentified customers.

The court granted Motion in Limine No. 17 under Rule 403. Neither party may refer to prior discovery rulings, discovery violations, sanctions, or conduct underlying those rulings. The court found that this evidence had little probative value and posed risks of jury confusion and unfair prejudice.

Disposition

The court issued the detailed rulings above and directed the Clerk of Court to close the motions listed in the order, including Dkt. Nos. 1208, 1237, 1243, 1249, 1255, 1261, 1267, 1273, 1278, 1284, 1292, 1297, 1303, 1308, 1314, 1320, 1324, and 1327.