CellTrust Corporation v. ionLake, LLC

Background

CellTrust brought a patent-infringement case under 35 U.S.C. § 271 and related provisions, alleging that ionLake, LLC, Derrick Girard, and Wade Girard infringed multiple claims in two CellTrust patents. The defendants denied infringement and counterclaimed that the patents were invalid. The order addresses the parties’ motions in limine, which are requests to decide before trial whether particular evidence or arguments may be presented to the jury.

CellTrust’s Motions

Richard E. Oney

CellTrust asked the court to prevent the defendants from calling Richard E. Oney as a trial witness. CellTrust argued that Oney was beyond the reach of the court’s subpoena power and that case law prohibited the defendants from calling CellTrust’s counsel as a witness. The defendants argued that Oney’s participation in the case brought him within the court’s jurisdiction and suggested that the jury should be allowed to draw a negative inference if he did not appear.

The court limited its ruling to whether Oney should be removed from the defendants’ witness list. Because no subpoena had been issued and Oney had not been called to testify, the court declined to decide the other issues as premature. The court denied CellTrust’s motion as to striking Oney from the witness list and dismissed without prejudice all other requests for relief in that motion.

Dismissed Invalidity Theories and Exhibits

The court held that the parties were bound by its earlier summary-judgment order and could not present theories or claims that had already been dismissed. The defendants could, however, present evidence and arguments relevant to their invalidity defense based on obviousness, including evidence concerning the patents’ priority date, but only for that purpose.

The court also ruled on exhibits that CellTrust claimed were irrelevant or had not been properly disclosed during discovery. It granted CellTrust’s request to exclude proposed exhibits 92, 93, 116, 118, 119, 120, 125, 126, 127, and 128. It denied without prejudice the request to exclude proposed exhibits 62–73, 94, 96, 115, 124, 129, 170–174, and 231–237. The court stated that objections concerning foundation or relevance to those exhibits could be considered when the exhibits were offered at trial.

Thus, the order granted in part and denied in part CellTrust’s motion concerning dismissed invalidity theories and allegedly irrelevant or undisclosed evidence.

Defendants’ Motions

Undisclosed Infringement Theories

The defendants asked the court to bar CellTrust from presenting indirect-infringement theories that they claimed were not adequately pleaded. The court denied the motion because it was an improper attempt to obtain dismissal through a motion in limine. The court concluded that CellTrust’s complaint and infringement contentions contemplated an indirect-infringement theory and had given the defendants notice for discovery and dispositive-motion practice. The court declined to decide whether the pleadings would survive a motion to dismiss or summary judgment because that issue was not properly presented through a motion in limine.

Redacted Trial Exhibits

The defendants asked the court to require CellTrust to provide unredacted copies of certain exhibits or prevent CellTrust from offering redacted versions. The court concluded that the request effectively operated as a motion to compel discovery and would have been untimely because the deadline for discovery-related non-dispositive motions had passed. The court also concluded that, even assuming the request was a proper evidence motion, the defendants had not shown why the redactions were misleading or what additional material would be necessary.

The court denied the motion. Separately, to promote trial efficiency, it ordered CellTrust to prepare unredacted versions of the specified exhibits and retain them so they could be provided promptly if the court later ordered an in-camera review, meaning a review by the judge outside the jury’s presence, or production to the court and defendants.

Defendants’ Prior Lawsuits

The defendants sought to exclude evidence and arguments about two earlier legal disputes: one involving a loan to ionLake and Derrick Girard, and another involving a business dispute between Derrick Girard and Wade Girard concerning MyRepChat. CellTrust argued that the evidence was relevant to issues including the defendants’ knowledge, damages, patent validity, willful infringement, and the reasons the defendants created MyRepChat.

The court found the evidence only marginally relevant. It concluded that the evidence’s value was outweighed by the risks of confusing the issues, unfair prejudice, and wasting time. The court also concluded that the evidence was inadmissible character evidence and hearsay under the cited evidence rules. It granted the defendants’ motion to exclude evidence and argument concerning their prior lawsuits.

Non-Infringing Alternatives

The defendants asked the court to bar lay opinions and undisclosed expert testimony concerning non-infringing alternatives. They argued that expert testimony was required to show that no acceptable non-infringing alternatives existed and that CellTrust had not disclosed the required testimony.

The court stated that expert testimony is required to establish the absence of acceptable non-infringing alternatives, and that CellTrust bears that burden. But the court also relied on its earlier ruling that the defendants must first identify acceptable non-infringing alternatives; after that, the burden shifts to CellTrust to show that the alternatives are unacceptable or infringing. The court concluded that the defendants’ request was too broad and that the potential weakness in CellTrust’s evidence did not justify excluding all testimony on the subject. It denied the motion.

Defendants’ State of Mind

The defendants asked the court to exclude speculative evidence and testimony about their intent or state of mind, including proposed testimony concerning Derrick Girard’s knowledge of CellTrust’s products and patents. CellTrust argued that evidence of the defendants’ state of mind was relevant to willful infringement and induced infringement and that its expert, Martin Colburn, was qualified to provide helpful testimony based on specialized knowledge.

The court concluded that Colburn was qualified, had relied on sufficient facts and data, and had used reliable principles and methods. It also concluded that evidence of the defendants’ state of mind could help the jury determine whether they knew about CellTrust’s patents and intended to infringe them. The court therefore denied the motion to exclude state-of-mind evidence and testimony.

Disposition

The court ordered the following:

- CellTrust’s motion concerning Richard E. Oney was denied in part and dismissed without prejudice in part: the request to remove Oney from the witness list was denied, and the other requests were dismissed without prejudice. - CellTrust’s motion concerning dismissed invalidity theories and allegedly irrelevant or undisclosed evidence was granted in part and denied in part. The court barred use of theories dismissed by earlier orders, allowed evidence relevant to obviousness, granted exclusion of specified exhibits, and denied without prejudice exclusion of other specified exhibits. - The defendants’ motion concerning undisclosed infringement theories was denied. - The defendants’ motion concerning unredacted trial exhibits was denied, although CellTrust was ordered to prepare and retain unredacted versions of specified exhibits. - The defendants’ motion concerning evidence of their prior lawsuits was granted. - The defendants’ motions concerning non-infringing alternatives and state-of-mind evidence were each denied.

The opinion is a pretrial evidentiary order; it does not decide whether the patents were infringed or invalid.