Nanometrics, Incorporated v. Optical Solutions, Inc.

Background

The court issued this order after an October 20, 2023 pretrial conference in which it made oral rulings on five motions in limine filed by Nanometrics. A motion in limine asks the court to decide before trial whether particular evidence or testimony may be presented. Optical opposed all five motions.

Motion 1: Bradley Piccirillo’s expert testimony

Nanometrics moved to exclude expert testimony from Bradley Piccirillo, Optical’s founder, president, and sole owner. The challenged opinions concerned Optical’s ability to manufacture lenses meeting Nanometrics’s specifications, the treatment of feasibility studies and prototype lenses in the semiconductor industry, and an asserted 80% profit margin.

The court found that Piccirillo’s report did not provide a methodology supporting the challenged opinions and did not provide a factual basis for his views about broader semiconductor-industry practices. The court therefore granted Motion 1 and barred Piccirillo from offering expert testimony on all five identified opinions. The ruling did not prevent Optical from offering him as a fact witness or as a lay witness giving an opinion allowed under Federal Rule of Evidence 701.

Motion 2: Richard Trissel’s expert testimony

Nanometrics moved to exclude expert testimony from Richard Trissel, who designed the 25-micron optical lens at issue. The court reserved its decision in part on whether Trissel’s design met Nanometrics’s design specifications, pending evidence about whether he could demonstrate a reliable application of his design methodology.

The court otherwise granted Motion 2. Trissel may not offer expert testimony about whether Optical’s manufactured lenses met the feasibility-study specifications based on Optical’s testing capabilities; whether Optical could have shipped prototype lenses sooner if Nanometrics had provided a properly functioning lateral-color test bench; whether the feasibility study was intended to generate final specifications; or whether the prototype lenses were intended only for internal use. The court found that the report lacked supporting data or methodology, or that the opinions were speculative.

Motion 3: Company size, finances, and ability to pay

Nanometrics sought to exclude evidence about its size, public-company status, market capitalization, corporate transactions, revenue, and either party’s financing of the litigation or ability to pay a damages award. The court granted Motion 3. Optical may present evidence about its own size and Nanometrics’s treatment of Optical, but may not present evidence inviting a comparison of the parties’ sizes. The court also stated that otherwise admissible testimony is not barred merely because it uses a different name for Nanometrics.

Motion 4: Alleged misuse of confidential or trade-secret information

Nanometrics sought to exclude evidence and argument that it breached a confidentiality agreement or improperly used or distributed proprietary or trade-secret information. The court granted Motion 4 in part and denied it in part.

Optical may not introduce that evidence in its case-in-chief to argue that Nanometrics misappropriated trade secrets or violated a nondisclosure agreement. But Optical may introduce evidence on those subjects to rebut evidence that Optical was at fault for failing to provide Nanometrics with design specifications. The court relied on the risk of unfair prejudice, jury confusion, and delay in limiting the evidence.

Motion 5: Piccirillo’s purchase of Opticraft

Nanometrics moved to exclude evidence about Piccirillo’s personal purchase of Opticraft, Inc., and any argument that Optical should be compensated for that purchase. The court granted Motion 5 because the purchase was personal rather than a purchase by Optical and was not relevant to the breach-of-contract claim being tried to the jury. The court also found that the risk of unfair prejudice and jury confusion outweighed any relevance.

The court stated that if any part of Optical’s promissory-estoppel claim remained because the requested relief lacked an adequate legal remedy, Optical could ask the court to introduce the purchase evidence. The order did not decide whether that claim would remain.

Disposition

This was a pretrial evidentiary order. It governed the presentation of evidence and did not resolve the parties’ underlying claims.