Sinco Technologies Pte Ltd. v. Sinco Electronics Co. Ltd.

Background

This was the court’s final pretrial order before a jury trial. Jury selection and trial were set for November 1, 2021. The trial was limited to no more than ten court days, and each side was limited to seventeen hours, including opening statements, closing arguments, direct and cross-examination, reading testimony into the record, and playing video testimony.

The court identified the witnesses each side might call. It also stated that it had already granted the defendants’ motion to exclude Miriam Paton’s testimony. The court planned to issue separate orders addressing bellwether exhibits, jury instructions, and the jury verdict form.

Motions in Limine

A motion in limine is a request to limit or exclude evidence at trial.

- SinCo’s Motion No. 1: Granted in part and denied in part. Neither damages expert could testify about whether trademark infringement occurred or about facts supporting or opposing infringement. Both experts could discuss the parties’ dispute and the assumptions underlying their opinions. Defendants’ damages expert, Hank Kahrs, could rely on Dr. Fleissig’s calculations, provided that he supervised, reviewed, and adopted that work, and could explain why he treated certain SinCo sales as outliers. - SinCo’s Motion No. 2: Denied as to testimony from Google and Apple employees who were disclosed late. The court found the testimony substantially useful and found that SinCo had not been surprised because the relevant information had been addressed in discovery and SinCo had been allowed to depose the witnesses. SinCo could designate one or two rebuttal witnesses. The court deferred ruling on documents produced after fact discovery because SinCo had not identified specific documents or explained the claimed prejudice. SinCo was directed to provide that information, and defendants were given an opportunity to respond. - SinCo’s Motion No. 3: Denied. The court allowed evidence concerning an alleged oral license involving the “SinCo” mark before the 2012 Supply Agreement and later Purchase Orders. Applying California law as the parties had assumed, the court found that the written documents were not clearly complete and exclusive statements of the parties’ agreement and that the alleged oral license was not clearly contradictory to them. The court also found that the Supply Agreement was, at most, ambiguous, which provided an additional basis for considering evidence outside the written agreement. - SinCo’s Motion No. 4: Denied. The court allowed evidence of Dr. Chee’s 2004 Singapore conviction for “cheating.” Applying Federal Rule of Evidence 609, the court found that the conviction’s value for evaluating truthfulness substantially outweighed its prejudicial effect despite its age. The court noted the conviction involved a planned scheme to defraud people, a resulting loss of $1,000,000, and testimony by Dr. Chee that was expected to be central to the case. SinCo could present evidence of his later rehabilitation. - SinCo’s Motion No. 5: Granted in part and denied in part. Statements that Bryan Lim made to Xu Shugong or Gao Bingyi were admissible as statements by a party opponent and as verbal acts. But what Xu Shugong or Gao Bingyi later told Mui Liang Tjoa about those statements was hearsay if offered to prove that Bryan Lim granted an oral license. The later statements could be used for a limited, nonhearsay purpose—to show that Tjoa, and therefore XingKe, could not have acted willfully in using the “SinCo” mark. SinCo could request a limiting instruction. - SinCo’s Motion No. 6: Denied. The court allowed the defense witnesses Jerry Yang Da Rui, Gouki Gao, and Deqiang Liu to testify through depositions taken in Macau instead of live testimony. SinCo could choose not to participate in those depositions and could use earlier depositions for trial. - Defendants’ Motion No. 1: Granted in part and denied in part. SinCo’s damages expert, Dr. Cox, could not testify about whether trademark infringement occurred, facts supporting infringement, the nature of industry relationships between suppliers and customers, or SinCo’s costs of mitigating harm. He could testify about his calculations of SinCo’s lost profits and the defendants’ profits potentially subject to disgorgement, but he had to identify his assumptions. He could not testify about an unjust-enrichment theory based on XingKe’s alleged increase in market value because the court found that the analysis did not reliably measure profits from alleged trademark infringement. - Defendants’ Motion No. 2: Granted in part and denied in part. SinCo could present evidence that XingKe filed applications for the “SinCo” mark, but could not present evidence of how United States or Chinese authorities decided those applications. Evidence about Miriam Paton’s testimony concerning a United States trademark application and an alleged forged signature was also excluded. SinCo could use Tjoa’s declaration supporting a United States trademark application to show inconsistent testimony and could present evidence about the Design Contract for credibility purposes. Guanglei Zhang could testify about facts within his personal knowledge but could not make legal arguments while testifying. - Defendants’ Motion No. 3: Denied as moot. SinCo agreed not to seek liability based on “SinCoo” and would not argue that the defendants were complicit in alleged infringement by that company. - Defendants’ Motion No. 4: Granted. The court excluded evidence concerning preliminary-injunction orders issued by the federal and state courts and Mr. Liew’s stipulated violation of a state-court preliminary injunction that resulted in a contempt finding. The court found the evidence inadmissible under Rules 403 and 408. SinCo could still present a statement that it had filed the state-court action, including a claim that XingKe was passing itself off as SinCo. - Defendants’ Motion No. 5: Deferred. The court directed the parties to try to agree on a statement for the jury concerning the state-court action. If they could not agree, each side had to submit its proposed statement and explain why the other side’s proposal was improper. - Defendants’ Motion No. 6: Granted. The court excluded evidence of alleged bad acts by Tjoa or KOTL, including matters concerning Tjoa’s removal, criticism or sanctions by the Shenzhen Stock Exchange, and the judicial freezing of KOTL shares. The court found the allegations had no direct relevance and were inadmissible under Rules 403 and 608(b).

Other Pretrial Rulings

The court rejected SinCo’s argument that the defendants should be barred from arguing that SinCo abandoned its United States trademark rights because SinCo lacked adequate control in China over XingKe. The court stated that SinCo’s actions or inactions in China, the United States, or Singapore could inform whether it abandoned the mark in the United States.

The court did not restrict how defendants pronounced “XingKe,” but allowed SinCo to point out differences in pronunciation by defense witnesses. The court also noted that SinCo withdrew its trade-dilution claim, defendants were not disputing ownership or validity of the “SinCo” mark, SinCo was not asserting indirect or induced infringement, and SinCo sought statutory damages against the individual defendants but not XingKe.

Disposition and Significance

This order resolved or deferred evidentiary and trial-management requests; it did not decide the ultimate trademark claims. Judge Edward M. Chen issued the order on October 8, 2021.