BillFloat Inc. v. Collins Cash Inc.

Nature of the Order

This is a final pretrial conference order governing the planned jury trial and resolving motions in limine, which are requests to decide before trial what evidence or arguments may be presented to the jury. The order does not decide the parties’ underlying trademark dispute.

Trial Schedule and Procedures

The court set a hearing for November 9, 2022, to discuss completed jury questionnaires and whether potential jurors should be excused before live questioning. Jury selection was set for November 14, 2022, and the jury trial was set for November 14, 15, 16, 18, and possibly 21. The court intended to seat eight jurors.

The order required trial participants to comply with specified vaccination or rapid-testing requirements and generally to wear masks, with exceptions for the testifying witness and questioner. The plaintiff received nine hours to present its case and the defendants received seven hours, including opening statements, examination of witnesses, and closing arguments, but excluding jury questioning. The order also established deadlines for advance notice of witnesses and exhibits and for written objections.

Plaintiff’s Motions in Limine

1. Motion No. 1, Docket No. 86: BillFloat sought to bar testimony and attorney argument that it could have conducted a market survey but did not, including an argument that the jury should draw a negative inference from the absence of a survey. The court allowed attorney argument about the absence of a survey but did not allow evidence on that topic, particularly where the proposed questioning of BillFloat’s rebuttal expert would exceed the proper scope of direct examination.

2. Motion No. 2, Docket No. 87: BillFloat sought to bar evidence and argument that the Patent and Trademark Office’s publication of the defendants’ mark showed there was no likelihood of confusion. The court would not allow the Patent and Trademark Office’s administrative action to prove the merits of the defendants’ position on likelihood of confusion. The court stated, however, that the 2020 publication decision was relevant to the defendants’ state of mind on willfulness. The court proposed either a limiting jury instruction restricting the evidence to willfulness or a stipulation that there was no willful infringement after the defendants received the publication notice, and directed the parties to meet and confer.

3. Motion No. 3, Docket No. 88: BillFloat sought to exclude evidence and argument concerning the defendants’ laches defense, an equitable defense based on delay. The court denied the motion and decided to allow the jury to issue an advisory opinion on laches because of overlapping issues and testimony.

Defendants’ Motions in Limine

1. Motion No. 1, Docket No. 80: The parties agreed at the hearing that this motion was moot.

2. Motion No. 2, Docket No. 81: The defendants sought to exclude all evidence or testimony from BillFloat that contradicted testimony from BillFloat’s deposition under Federal Rule of Civil Procedure 30(b)(6). The court denied the motion. The defendants could cross-examine and seek to impeach a witness with inconsistent evidence, but inconsistency was not a basis for completely excluding the evidence.

3. Motion No. 3, Docket No. 82: The defendants sought to exclude evidence about prior surveys or testimony by their expert, Mark Keegan, that had been excluded in other cases. The court granted the motion. BillFloat could cross-examine Keegan about the merits of his survey and could present rebuttal testimony, including on grounds considered by other courts, but could not introduce evidence about how other judges had ruled in those cases. The court found that doing so could create an improper trial within the trial and cause the jury to give undue weight to other judges’ rulings.

Stipulation and Other Pretrial Matters

The court granted the parties’ stipulated motion, under which neither side, including counsel and witnesses, would refer to the court’s summary-judgment and Daubert orders or their substance. The stipulation also provided that Keegan would not testify that there was no likelihood of confusion.

The parties submitted objections to proposed exhibits, and the court stated that its rulings appeared in an attached chart. The parties did not expect to present discovery responses or deposition testimony to the jury. The court modified the proposed jury instructions and tentatively approved the proposed verdict form with a footnote removed.

Disposition

The order set trial procedures; found the defendants’ Motion in Limine No. 1 moot by agreement; denied BillFloat’s Motion in Limine No. 3; denied the defendants’ Motion in Limine No. 2; granted the defendants’ Motion in Limine No. 3; and granted the stipulated motion. It also issued the stated evidentiary limitations on BillFloat’s first motion and the Patent and Trademark Office evidence addressed in BillFloat’s second motion.