Carl Zeiss X-Ray Microscopy, Inc. v. Sigray, Inc.

Background

Before the scheduled pretrial conference, the court issued an order addressing some of the parties’ motions in limine. A motion in limine is a request to limit or exclude evidence or arguments at trial. The order stated that the parties should be prepared to discuss five remaining motions at the pretrial conference: Sigray’s Motions Nos. 1 and 4, and Zeiss’s Motions Nos. 1, 2, and 5.

Sigray’s Motions

Motion No. 2: Former employees. Sigray asked the court to bar evidence or argument about three former Xradia/Zeiss employees whom Sigray hired. The court denied the motion. It found that the employees’ past employment was relevant to Sigray’s access to Zeiss’s confidential information, Zeiss’s unfair-competition claims, and Sigray’s knowledge of Zeiss’s patents. The court said Sigray could object at trial if it continued to believe particular evidence was irrelevant to the merits.

Motion No. 3: Financial remedies. Sigray asked the court to bar evidence or argument about financial remedies other than lost profits, arguing that Zeiss had not disclosed calculations for reasonable-royalty or unjust-enrichment damages. The court granted in part and denied in part the motion. Zeiss could not pursue unjust-enrichment damages at trial because it did not oppose that part of the motion. But Zeiss could present evidence concerning a reasonable royalty, which the court described as a possible damages measure even if the jury rejected Zeiss’s lost-profits evidence. The parties were ordered to meet and confer about the type and presentation of that evidence.

Zeiss’s Motions

Motion No. 3: Non-infringing alternatives. Zeiss asked the court to bar lay testimony, including testimony from Sigray president Sylvia Lewis, about non-infringing alternatives, and to bar Sigray damages expert David Hanson from testifying about the “No Sample Y Motion Redesign,” an alleged non-infringing alternative to Sigray’s Eclipse product. The court denied the motion.

The court ruled that Lewis could testify about the redesign’s structure, operation, and implementation because Sigray’s Apex device already used it. However, Lewis could not give her own opinion that the redesign did not infringe the patents at issue. The court also allowed Hanson to testify that the redesign was a non-infringing alternative. It found his disclosure timely because Eclipse became part of the case only a few months before his disclosure, and it found that he had a sufficient basis for his opinion. Zeiss could challenge the opinion’s weight and basis through cross-examination.

Motion No. 4: Patent post-grant proceedings. Zeiss asked the court to exclude evidence, testimony, and argument about post-grant proceedings involving the asserted patents, including inter partes review and ex parte reexamination. The court denied the motion. It found that proceedings initiated by Sigray were relevant to whether Sigray had a good-faith belief that the patents were invalid and therefore relevant to whether Sigray specifically intended to infringe them. Because explaining those proceedings could confuse the jury, the parties were ordered to meet and confer to limit the evidence to what was necessary to evaluate willfulness.

Motion No. 6: Zeiss’s reasons for filing the lawsuit. Zeiss asked the court to exclude testimony or argument that Zeiss used the lawsuit to gain a competitive advantage in sales efforts against Sigray. The court granted the motion. Neither party could argue about Zeiss’s reason for filing the lawsuit because the court found that issue irrelevant to the claims and defenses and likely to prejudice the jury.

Disposition

The order therefore denied Sigray’s Motion No. 2; granted in part and denied in part Sigray’s Motion No. 3; denied Zeiss’s Motions Nos. 3 and 4; and granted Zeiss’s Motion No. 6. It left the five other listed motions for discussion at the pretrial conference. Judge Edward J. Davila signed the order on July 6, 2025.